CopyrightX - NLSIU (2023) - Annotated

CopyrightX - NLSIU (2023)
Syllabus of the CopyrightX:NLSIU course
[author name]
2
Export Customization Tips

We designed this opencasebook.org export using MS Word Styles to simplify
customization. The "Styles Pane" in Word's "Home" tab shows a list of styles in the
document, and the active style of your current element or selection.
For example, you can quickly change the case text font for the whole document by
modifying the "Case Body" style. The style modification screen also shows which
style your style is "Based On." If you modify the style listed there, all styles based
on it will also change. Some older documents might use different styles than newer
ones— click into an element and check the Styles Pane to confirm its style.
Check out Microsoft's extensive styles documentation for the finer points and
caveats.
Remember: style modifications can yield sweeping results that aren't always
apparent on the page you're viewing. Make a backup copy of your document before
experimenting.
3
Table of Contents
1 Week 1 []
1.1 Originality.........................................................................................[ ]
1.1.1 History of US Copyright Law..........................................................................[ ]
1.1.2 17 U.S.C 102....................................................................................................[ ]
1.1.3 Bleistein v. Donaldson Lithographing Co.,.......................................................[ ]
1.1.4 Feist Publications, Inc. v. Rural Telephone Service Co....................................[ ]
1.1.5 Mannion v. Coors Brewing Co.........................................................................[ ]
1.1.6 Sec. 13 (1) Copyright Act 1957........................................................................[ ]
1.1.7 Burlington Home Shopping Pvt. Ltd v. Rajnish Chibber..................................[ ]
1.1.8 Eastern Book Company & Others v. D.B. Modak & Another..........................[ ]
1.1.9 CCH Canadian Ltd. v. Law Society of Upper Canada......................................[ ]
1.1.10 William W. Fisher, Recalibrating Originality...................................................[ ]
1.2 The Idea/Expression Distinction..........................................................[ ]

1.2.1 17 U.S.C 102....................................................................................................[ ]
1.2.2 Baker v. Selden...............................................................................................[ ]
1.2.3 NICHOLS v. UNIVERSAL.............................................................................[ ]
1.2.4 Alexander v. Haley...........................................................................................[ ]
1.2.5 R.G. Anand v. Delux Films..............................................................................[ ]
2 Week 2 []
2.1 Labor v. Personhood...........................................................................[ ]
2.1.1 Summary of Theoretical Approaches...............................................................[ ]
2.1.2 John Locke, The Second Treatise of Government (1689), Chapter 5...............[ ]
2.1.3 Robert Nozick, Anarchy, State, and Utopia (1974), pp. 174-182.....................[ ]
2.1.4 Turner Entertainment Co. v. Huston, Court of Appeal of Versailles,
France, December 19, 1994..............................................................................[ ]
2.2 Nonfiction..........................................................................................[ ]
2.2.1 A. A. Hoehling v. Universal City Studios, Inc..................................................[ ]
2.2.2 American Historical Association, Statement on Standards of
Professional Conduct, #4: Plagiarism (2005)...................................................[ ]
2.2.3 Malcolm Gladwell, "Something Borrowed," The New Yorker, Nov.
22, 2004...........................................................................................................[ ]
4
3 Week 3 []
3.1 Subject Matter....................................................................................[ ]
3.1.1 Shine v. Childs.................................................................................................[ ]
3.1.2 DC Comics v. Towle Court of Appeals...........................................................[ ]
3.1.3 Star Athletica v. Varsity Brands (2017)............................................................[ ]
3.1.4 The Music Modernization Act | U.S. Copyright Office....................................[ ]
3.1.5 A $550 Million Springsteen Deal? It’s Glory Days for Catalog Sales.
- The New York Times.....................................................................................[ ]
3.1.6 Google v. Oracle (SCOTUS 2021), paragraphs 1-49, 107-125.........................[ ]
3.1.7 Lotus Development Corporation v. Borland International, Inc., 49
F.3d 807 (1st Cir. 1995)...................................................................................[ ]
3.2 Indian materials..................................................................................[ ]

3.2.1 Sec. 13 Copyright Act 1957.............................................................................[ ]
3.2.2 Sec. 16 Copyright Act 1957.............................................................................[ ]
3.2.3 Agarwala Publishing House, Khurja v. Board of High School and
Intermediate Education U. P. Allahabad...........................................................[ ]
3.2.4 Ananda Expanded Italics., In re........................................................................[ ]
3.2.5 Fortune Films International v. Dev Anand and another....................................[ ]
3.2.6 Gramophone Company of India Ltd. v. Super Cassette Industries Ltd.............[ ]
4 Week 4 []
4.1 Welfare Theory..................................................................................[ ]
4.1.1 Raustiala and Sprigman, 'When are IP Rights Necessary? Evidence
from Innovation in IP's Negative Space' (Edward Elgar Publishing,
2016)................................................................................................................[ ]
4.1.2 Jolls, Sunstein, and Thaler, A Behavioral Approach to Law and
Economics, pp. 1471-1489...............................................................................[ ]
5 Week 5 []
5.1 Multiple Authors................................................................................[ ]
5.1.1 17 USC 201......................................................................................................[ ]
5.1.2 Aalmuhammed v. Lee......................................................................................[ ]
5.1.3 Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic.....................[ ]
5.1.4 Najma Heptulla v. Orient Longman Ltd. and others.........................................[ ]
5.2 Works for Hire...................................................................................[ ]

5.2.1 Community For Creative Non-Violence et el. v. Reid......................................[ ]
5.2.2 Avtec Systems, Inc. v. Peiffer,.........................................................................[ ]
5
5.2.3 V.T. Thomas v. Malayala Manorama Co. Ltd..................................................[ ]

5.2.4 Indian Performing Rights Society v. Eastern India Motion Pictures
Association.......................................................................................................[ ]
5.2.5 IPRS v. Entertainment Network (India) Ltd (Delhi HC, 2021).........................[ ]
6 Week 6 []
6.1 Copyright and Parentalism..................................................................[ ]
6.1.1 Stewart v. Abend..............................................................................................[ ]
6.1.2 New York Times Co. v. Tasini.........................................................................[ ]
6.2 The Boundary between Copyright and the Public Domain.....................[ ]

6.2.1 Eldred v. Ashcroft............................................................................................[ ]
6.2.2 Golan v. Holder................................................................................................[ ]

6.3.1 Gramophone Company of India Ltd. v. Shanti Films Corporation...................[ ]
6.3.2 Pee Pee Publishers v. Dr. Neena Khanna.........................................................[ ]
6.3.3 Deshmukh & Co. v. Avinash Vishnu Khandekar.............................................[ ]
7 Week 7 []
7.1 “Probative Similarity” and “Substantial Similarity”...............................[ ]
7.1.1 Three Boys Music Corp. v. Michael Bolton.....................................................[ ]
7.1.2 Steinberg v. Columbia Pictures Industries, Inc.................................................[ ]
7.1.3 Rentmeester v. Nike, Inc. (9th Cir. 2018).........................................................[ ]
7.1.4 Mannion v. Coors Brewing Co.........................................................................[ ]
7.2 Derivative Works...............................................................................[ ]

7.2.1 Castle Rock Entertainment, Inc. v. Carol Pub. Group, Inc................................[ ]
7.2.2 Lee v. A.R.T. Company...................................................................................[ ]
7.2.3 Micro Star v. FormGen Inc..............................................................................[ ]

7.3.1 R.G. Anand v. Delux Films..............................................................................[ ]
7.3.2 Star India v. Leo Burnett..................................................................................[ ]
7.3.3 Zee Telefilms v. Sundial Telecommunications.................................................[ ]
8 Week 8 []
8.1 Distribution and First Sale...................................................................[ ]
6
8.1.1 Hotaling v. Church of Jesus Christ of Latter-Day Saints..................................[ ]

8.1.2 Kirtsaeng v. John Wiley & Sons, Inc................................................................[ ]
8.1.3 Eurokids International Pvt. Ltd. vs India Book Distributors.............................[ ]
8.1.4 Penguin Books v. India Book Distribution.......................................................[ ]
8.1.5 Warner Bros. v. Santosh V.G...........................................................................[ ]
8.1.6 John Wiley & Sons Inc. & others. v. Prabhat Chander Kumar Jain &
others................................................................................................................[ ]
8.2 Performances and Displays.................................................................[ ]

8.2.1 American Broadcasting Companies, Inc. v. Aereo, Inc....................................[ ]
8.2.2 Perfect 10 v. Amazon.com...............................................................................[ ]
8.2.3 Music Broadcast v. Indian Performing Right Society.......................................[ ]
8.2.4 Video Master v. Nishi Productions...................................................................[ ]
9 Week 9 []
9.1 Fair Use (Part 1).................................................................................[ ]
9.1.1 17 U.S.C. 107...................................................................................................[ ]
9.1.2 Campbell v. Acuff-Rose Music, Inc.................................................................[ ]
9.1.3 Castle Rock Entertainment, Inc. v. Carol Pub. Group, Inc................................[ ]
9.1.4 Sony Computer Entertainment, Inc. v. Connectix Corp....................................[ ]
9.2 Fair Use (Part 2).................................................................................[ ]

9.2.1 Cariou v. Prince................................................................................................[ ]
9.2.2 AUTHORS GUILD v. GOOGLE INC.............................................................[ ]
9.2.3 Google v. Oracle (SCOTUS 2021), paragraphs 50-106, 126-163.....................[ ]
9.2.4 Warhol Foundation v. Goldsmith (2d Cir. 2021)..............................................[ ]
9.3 Hybrid model of exceptions to copyright infringement..........................[ ]

9.3.1 (India TV) Independent News Services Pvt. Ltd v. Yashraj Films Pvt.
Ltd....................................................................................................................[ ]
9.3.2 Civic Chandran v. Ammini Amma...................................................................[ ]
9.3.3 Scaria, 'Delhi University Photocopy Shop Judgement: A Landmark In
The Access To Knowledge Movement In India'...............................................[ ]
9.3.4 Reddy, 'To Photocopy or Not: Delhi High Courts Grants Universities
Carte Blanche to Photocopy for Educational Use'............................................[ ]
9.3.5 The Chancellor, Masters & Scholars of University of Oxford &
others v. Rameshwari Photocopy Services & others - Single Bench
Judgement - September 2016...........................................................................[ ]
9.3.6 The Chancellor, Masters & Scholars of University of Oxford &
others v. Rameshwari Photocopy Services & others - Division Bench
Judgement - December 2016............................................................................[ ]
7
10 Week 10 []
10.1 Cultural Theory - Moral Rights............................................................[ ]
10.1.1 Sophie Grais, “The Story of 5Pointz” (2021)...................................................[ ]
10.1.2 Castillo v. G&M Realty (2d Cir. 2020)............................................................[ ]
10.1.3 Mannu Bhandari v. Kala Vikas Pictures Pvt. Ltd.............................................[ ]
10.1.4 Amarnath Sehgal v. Union of India..................................................................[ ]
10.2 Traditional Knowledge.......................................................................[ ]

10.2.1 William Fisher, 'The Puzzle of Traditional Knowledge'...................................[ ]
10.2.2 Munzer and Raustiala, "The Uneasy Case for Traditional
Knowledge" (2009)..........................................................................................[ ]
10.2.3 Gopalakrishnan, "Protection of Traditional Knowledge - The Need
for a Sui Generis Law in India" (2002).............................................................[ ]
11 Week 11 []
11.1 Secondary Liability.............................................................................[ ]
11.1.1 Metro-Goldwyn-Mayer, Inc. v. Grokster..........................................................[ ]
11.1.2 Viacom Intern., Inc. v. YouTube, Inc...............................................................[ ]
11.1.4 Myspace Inc. v. Super Cassettes - Delhi High Court - Division Bench
Judgement - December 2016............................................................................[ ]
11.2 Technological Protection Measures......................................................[ ]

11.2.1 Universal City Studios, Inc. v. Corley..............................................................[ ]
11.2.2 37 C.F.R 201.40 (2021)....................................................................................[ ]
11.2.3 Scaria, "Does India Need Digital Rights Management Provisions or
Better Digital Business Management Strategies?" (2012)................................[ ]
12 Week 12 []
12.1 Damages............................................................................................[ ]
12.1.1 17 U.S.C. 501-506............................................................................................[ ]
12.1.2 Frank Music Corp. v. Metro-Goldwyn-Mayer Inc............................................[ ]
12.1.3 Fantasy, Inc. v. Fogerty....................................................................................[ ]
12.2 Injunctions and Crimes.......................................................................[ ]

12.2.1 17 U.S.C. 501-506............................................................................................[ ]
12.2.2 Salinger v. Colting...........................................................................................[ ]
12.2.3 United States v. Moran.....................................................................................[ ]
8

12.3.1 Knit Pro International vs The State of NCT of Delhi (Supreme Court,
2022)................................................................................................................[ ]
12.3.2 Pillalamarri Lakshmikantham v. Ramakrishna Pictures...................................[ ]
12.3.3 Sheo Ratan Upadhya v. Gopal Chandra Nepali................................................[ ]
12.3.4 Indian Performing Right Society v. Badal Dhar Chowdhry..............................[ ]
12.3.5 Gramophone Company of India Ltd. v. Birendra Bahadur Pande.....................[ ]
12.3.6 UTV v 1337x.to (Delhi HC, 2019)...................................................................[ ]

1

1

Week 1

ChapterNumber:
2

1.1

Originality

1.1.1
History of US Copyright Law

https://ipxcourses.org/wp-content/uploads/2023/01/History-of-US-
Copyright-Law1.pdf

1.1.2
17 U.S.C 102

Lesson Specific Section - (a)
§ 102. Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original works of
authorship fixed in any tangible medium of expression, now known or later
developed, from which they can be perceived, reproduced, or otherwise com -
municated, either directly or with the aid of a machine or device. Works of
authorship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.

3
(b) In no case does copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, il lustrated, or
embodied in such work.
(Pub. L. 94–553, title I, § 101, Oct. 19, 1976, 90 Stat. 2544; Pub. L. 101–650, title
VII, § 703, Dec. 1, 1990, 104 Stat. 5133.)

1.1.3
Bleistein v. Donaldson Lithographing Co.,

188 U.S. 239

[ … ]60
GEORGE BLEISTE [ … ].,

v.
DONALDSON LITHOGRAPHING
COMPANY.
No. 117.
Argued January 13, 14, 1903.
Decided February 2,[ … ]
[…]
[248] Mr. Justice Holmes delivered the opinion of the court:
This case comes here from the United States circuit court of appeals for the sixth
circuit by writ of e[ … ] 550). It is an action brought by the plaintiffs in error to
recover the penalties prescribed for infringements of copyri[ … ] 194). The alleged
infringements consisted in the copying in reduced form of three chromolithographs
prepared by employees of the plaintiffs for advertisements of a circus owned by one
Wallace. Each of the three contained a portrait of Wallace in the corner, and
lettering bearing some slight relation to the scheme of decoration, indicating the
subject of the design and the fact that the reality was to be seen at the circus. One of
the designs was of an ordinary ballet, one of a number of men and women,
described as the Stirk family, performing on bicycles, and one of groups of men and
women whitened to represent statues. The circuit court directed a verdict for the
defendant on the ground that the chromolithographs were not within the protection
of the copyright law, and this ruling was sustained by the circuit court of app [ … ].
993.
There was evidence warranting the inference that the designs belonged to the
plaintiffs, they having been produced by persons employed and paid by the
plaintiffs in their establishment to make those very th[ … ]. 734.
ChapterNumber:
4
Finally, there was evidence that the pietures were copyrighted before
publica[ … ]signs.
We shall do no more than mention the suggestion that painting and engraving,
unless for a mechanical end, are not among the useful arts, the progress of which
Congress is empowered by the Constitution to promote. The Constitution does not
limit the useful to that which satisfies immediate bodily needs. Burrow-Giles
Lithographing Co. v. Sarony, 111 U. S. 53, 28 L. ed. 349, 4 Sup. Ct. Rep. 279. It is
obvious also that the plaintiff's case is not affected by the fact, if it be one, that the
pictures represent actual groups,—visible things. They seem from the testimony to
have been composed from hints or description, not from sight of a performance. But
even if they had been drawn from the life, that fact would not deprive them of
protection. The opposite proposition would mean that a portrait by Velasquez or
Whistler was common property because others might try their hand on the same
face. Others are free to copy the original. They are not free to copy the [ … ]Morris
copy is the personal reaction of an individual upon nature. Personality always
contains something unique. It expresses its singularity even in handwriting, and a
very modest grade of art has in it something irreducible, which is one man's alone.
That something he may copyright unless there is a restriction in the words of the
act.
If there is a restriction it is not to be found in the limited pretensions of these

particular works. The least pretentious picture has more originality in it than
directories and the like, which may be copyrig[ … ], 765. The amount of training
required for humbler efforts than those before us is well indicated by Ruskin. 'If
any young person, after being taught what is, in polite circles, called 'drawing,' will
try to copy the commonest piece of real work,—suppose a lithograph on the title
page of a new opera air, or a woodcut in the cheapest illustrated newspaper of the
day,—they will find themselves entirely bea[ … ]ed. 3. There is no reason to doubt
that these prints in their ensemble and in all their details, in their design and
particular combinations of figures, lines, and colors, are the original work of the
plaintiffs' designer. If it be necessary, there is express testimony to that effect. It
would be pressing the defendant's right to the verge, if not beyond, to leave the
question of originality to the jury upon the evidence in thi[ … ]d. 374.
We assume that the construction of Rev. Stat. § 4952 (U. S. Comp. Stat. 1901, p.
3406), allowing a copyright to the 'author, designer, or proprietor . . . of any
engraving, cut, print . . . [or] chromo' is affected by the act of 1874 (18 Stat. at L.
78, 79, chap. 301, § 3, U. S. Comp. Stat. 1901, p. 3412). That section provides that,
'in the construction of this act, the words 'engraving,' 'cut,' and 'print' shall be
applied only to pictorial illustrations or works connected with the fine arts.' We see
no reason for taking the words 'connected with the fine arts' as qualifying anything
except the word 'works,' but it would not change our decision if we should assume
further that they also qualified 'pictorial illustrations,' as the defendant contends.
[251] These chromolithographs are 'pictorial illustrations.' The word 'illustrations'

does not mean that they must illustrate the text of a book, and that the etchings of
Rembrandt or Muller's engraving of the Madonna di San Sisto could not be
protected today if any man were able to produce them. Again, the act, however
construed, does not mean that ordinary posters are not good enough to be
considered within its scope. The antithesis to 'illustrations or works connected with
the fine arts' is not works of little merit or of humble degree, or illustrations
addressed to the less educated classes; it is 'prints or labels designed to be used for
any other articles of manufacture.' Certainly works are not the less connected with
5
the fine arts because their pictorial quality attracts the crowd, and therefore gives
them a real use, if use means to increase trade and to help to make money. A picture
is none the less a picture, and none the less a subject of copyright, that it is used for
an advertisement. And if pictures may be used to advertise soap, or the theatre, or
monthly magazines, as they are, they may be used to advertise a circus. Of course,
the ballet is as legitimate a subject for illustration as any other. A rule cannot be
laid down that would excommunicate the paintings of Degas.
Finally, the special adaptation of these pictures to the advertisement of the Wallace
shows does not prevent a copyright. That may be a circumstance for the jury to
consider in determining the extent of Mr. Wallace's rights, but it is not a bar.
Moreover, on the evidence, such prints are used by less pretentious exhibitions
when those for whom they were prepared have given them up.
It would be a dangerous undertaking for persons trained only to the law to

constitute themselves final judges of the worth of pictorial illustrations, outside of
the narrowest and most obvious limits. At the one extreme, some works of genius
would be sure to miss appreciation. Their very novelty would make them repulsive
until the public had learned the new language in which their author spoke. It may be
more than doubted, for instance, whether the etchings of Goya or the paintings of
Manet would have been sure of protection when seen for the first time. At the other
end, copyright would be denied to [252] pictures which appealed to a public less
educated than the judge. Yet if they command the interest of any public, they have a
commercial value,—it would be bold to say that they have not an aesthetic and
educational value,—and the taste of any public is not to be treated with contempt. It
is an ultimate fact for the moment, whatever may be our hopes for a change. That
these pictures had their worth and their success is sufficiently shown by the desire
to reproduce them without regard to the plaintiffs' ri[ … ], 765. We are of opinion
that there was evidence that the plaintiffs have rights entitled to the protection of
the law.
The judgment of the Circuit Court of Appeals is reversed; the judgment of the
Circuit Court is also reversed and the cause remanded to that court with directions
to set aside the verdict and grant a new trial.
Mr. Justice Harlan, dissenting:
Judges Lurton, Day, and Severens, of the circuit court of appeals, concurred in
affirming the judgment of the district court. Their views were thus expressed in an
opinion delivered by Judge Lurton: 'What we hold is this: That if a chromo,
lithograph, or other print, engraving, or picture has no other use than that of a mere
advertisement, and no value aside from this function, it would not be promotive of
the useful arts, within the meaning of the constitutional provision, to protect the
'author' in the exclusive use thereof, and the copyright statute should not be
construed as including such a publication, if any other construction is admissible. If
a mere label simply designating or describing an article to which it is attached, and
which has no value separated from the article, does not come within the
constitutional clause upon the subject of copyright, it must follow that a pictorial
illustration designed and useful only as an advertisement, and having no intrinsic
value other than its function as an advertisement, must be equally without the
obvious meaning of the Constitution. [253] It must have some connection with the
fine arts to give it intrinsic value, and that it shall have is the meaning which we
attach to the act of June 18, 1874 (18 Stat. at L. 78, chap. 301, U. S. Comp. Stat.
1901, p. 3411), amending the provisions of the copyright law. We are unable to
ChapterNumber:
6
discover anything useful or meritorious in the design copyrighted by the plaintiffs

in error other than as an advertisement of acts to be done or exhibited to the public
in Wallace's show. No evidence, aside from the deductions which are to be drawn
from the prints themselves, was offered to show that these designs had any original
artistic qualities. The jury could not reasonably have found merit or value aside
from the purely business object of advertising a show, and the instruction to find for
the defendant was not error. Many other points have been urged as justifying the
result reached in the court below. We find it unnecessary to express any opinion
upon them, in view of the conclusion already announced. The judgment must be
affir[ … ], 996.
I entirely concur in these views, and therefore dissent from the opinion and
judgment of this court. The clause of the Constitution giving Congress power to
promote the progress of science and useful arts, by securing for limited terms to
authors and inventors the exclusive right to their respective works and discoveries,
does not, as I think, embrace a mere advertisement of a circus.
Mr. Justice McKenna authorizes me to say that he also dissents.

1.1.4
Feist Publications, Inc. v. Rural Telephone Service

Co.

Supreme Court of the United States

499 U.S. 340, 113 L. Ed. 2d 358, 111 S. Ct. 1282,
1991 U.S. LEXIS 1856, SCDB 1990-054
No. 89-1909
1991-03-27
499 U.S. 340 (1991)
Feist Publications, Inc.

v.
Rural Telephone Service Co., Inc.
[…]
[…]
JUSTICE O'CONNOR delivered the opinion of the Court.
This case requires us to clarify the extent of copyright protection available to

telephone directory white pages.
7
I
Rural Telephone Service Company, Inc., is a certified public utility that provides
telephone service to several communities in northwest Kansas. It is subject to a
state regulation that requires all telephone companies operating in Kansas to issue
annually an updated telephone directory. Accordingly, as a condition of its
monopoly franchise, Rural publishes a typical telephone directory, consisting of
white pages and yellow pages. The white pages list in alphabetical order the names
of Rural's subscribers, together with their towns and telephone numbers. The yellow
pages list Rural's business subscribers alphabetically by category and feature
classified advertisements of various sizes. Rural distributes its directory free of
charge to its subscribers, but earns revenue by selling yellow pages advertisements.
Feist Publications, Inc., is a publishing company that specializes in area-wide

telephone directories. Unlike a typical directory, which covers only a particular
calling area, Feist's area-wide directories cover a much larger geographical range,
reducing the need to call directory assistance or consult multiple directories. The
Feist directory that is the subject of this litigation covers 11 different telephone
service areas in 15 counties and contains 46,878 white pages listings—compared to
Rural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed
free of charge and includes both white pages and yellow pages. Feist and Rural
compete vigorously for yellow pages advertising.
As the sole provider of telephone service in its service area, Rural obtains
subscriber information quite easily. Persons desiring telephone service must apply
to Rural and provide their names and addresses; Rural then assigns them a
telephone number. Feist is not a telephone company, let alone one with monopoly
status, and therefore lacks independent access to any subscriber information. To
obtain white pages listings for its area-wide directory, Feist approached each of the
11 telephone companies operating in northwest Kansas and offered to pay for the
right to use its white pages listings.
Of the 11 telephone companies, only Rural refused to license its listings to Feist.
Rural's refusal created a problem for Feist, as omitting these listings would have
left a gaping hole in its area-wide directory, rendering it less attractive to potential
yellow pages advertisers. In a decision subsequent to that which we review here, the
District Court determined that this was precisely the reason Rural refused to license
its listings. The refusal was motivated by an unlawful purpose "to extend its
monopoly in telephone service to a monopoly in yellow pages advertising." [ … ]
Unable to license Rural's white pages listings, Feist used them without Rural's
consent. Feist began by removing several thousand listings that fell outside the
geographic range of its area-wide directory, then hired personnel to investigate the
4,935 that remained. These employees verified the data reported by Rural and
sought to obtain additional information. As a result, a typical Feist listing includes
the individual's street address; most of Rural's listings do not. Notwithstanding
these additions, however, 1,309 of the 46,878 listings in Feist's 1983 directory were
identical to listings in Rural's 1982-1983 white pages. App. 54 (¶ 15-16), 57. Four
of these were fictitious listings that Rural had inserted into its directory to detect
copying.
Rural sued for copyright infringement in the District Court for the District of
Kansas taking the position that Feist, in compiling its own directory, could not use
the information contained in Rural's white pages. Rural asserted that Feist's
ChapterNumber:
8
employees were obliged to travel door-to-door or conduct a telephone survey to

discover the same information for themselves. Feist responded that such efforts
were economically impractical and, in any event, unnecessary because the
information copied was beyond the scope of copyright protection. The District
Court granted summary judgment to Rural, explaining that "[c]ourts have
consistently held that telephone directories are copyrightable" and citing a string of
lower court decisions. 663 F. Supp. 214, 218 (1987). In an unpublished opinion, the
Court of Appeals for the Tenth Circuit affirmed "for substantially the reasons given
by the district court." App. to Pet. for Cert. 4a, judgt. order reported at 916 F. 2d
718 (1990). We granted certiorari, 498 U. S. 808 (1990), to determine whether the
copyright in Rural's directory protects the names, towns, and telephone numbers
copied by Feist.
II
A
This case concerns the interaction of two well-established propositions. The first is
that facts are not copyrightable; the other, that compilations of facts generally are.
Each of these propositions possesses an impeccable pedigree. That there can be no
valid copyright in facts is universally understood. The most fundamental axiom of
copyright law is that "[n]o author may copyright his ideas or the facts he narrates."
Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 556 (1985).
Rural wisely concedes this point, noting in its brief that "[f]acts and discoveries, of
course, are not themselves subject to copyright protection." Brief for Respondent
24. At the same time, however, it is beyond dispute that compilations of facts are
within the subject matter of copyright. Compilations were expressly mentioned in
the Copyright Act of 1909, and again in the Copyright Act of 1976.
There is an undeniable tension between these two propositions. Many compilations

consist of nothing but raw data— i. e., wholly factual information not accompanied
by any original written expression. On what basis may one claim a copyright in
such a work? Common sense tells us that 100 uncopyrightable facts do not
magically change their status when gathered together in one place. Yet copyright
law seems to contemplate that compilations that consist exclusively of facts are
potentially within its scope.
The key to resolving the tension lies in understanding why facts are not
copyrightable. The sine qua non of copyright is originality. To qualify for copyright
protection, a work must be original to the author. See Harper & Row, supra, at 547-
549. Original, as the term is used in copyright, means only that the work was
independently created by the author (as opposed to copied from other works), and
that it possesses at least some minimal degree of creativity. 1 M. Nimmer & D.
Nimmer, Copyright §§ 2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the
requisite level of creativity is extremely low; even a slight amount will suffice. The
vast majority of works make the grade quite easily, as they possess some creative
spark, "no matter how crude, humble or obvious" it might be. Id., § 1.08[C][1].
Originality does not signify novelty; a work may be original even though it closely
resembles other works so long as the similarity is fortuitous, not the result of
copying. To illustrate, assume that two poets, each ignorant of the other, compose
9
identical poems. Neither work is novel, yet both are original and, hence,
copyrightable. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F. 2d 49, 54 (CA2
1936).
Originality is a constitutional requirement. The source of Congress' power to enact

copyright laws is Article I, § 8, cl. 8, of the Constitution, which authorizes
Congress to "secur[e] for limited Times to Authors . . . the exclusive Right to their
respective Writings." In two decisions from the late 19th century—The Trade-Mark
Cases, 100 U. S. 82 (1879); and Burrow-Giles Lithographic Co. v. Sarony, 111 U.
S. 53 (1884)—this Court defined the crucial terms "authors" and "writings." In so
doing, the Court made it unmistakably clear that these terms presuppose a degree of
originality.
In The Trade-Mark Cases, the Court addressed the constitutional scope of

"writings." For a particular work to be classified "under the head of writings of
authors," the Court determined, "originality is required." 100 U. S., at 94. The
Court explained that originality requires independent creation plus a modicum of
creativity: "[W]hile the word writings may be liberally construed, as it has been, to
include original designs for engraving, prints, &c., it is only such as are original,
and are founded in the creative powers of the mind. The writings which are to be
protected are the fruits of intellectual labor, embodied in the form of books, prints,
engravings, and the like." Ibid. (emphasis in original).
In Burrow-Giles, the Court distilled the same requirement from the Constitution's
use of the word "authors." The Court defined "author," in a constitutional sense, to
mean "he to whom anything owes its origin; originator; maker." 111 U. S., at 58
(internal quotation marks omitted). As in The Trade-Mark Cases, the Court
emphasized the creative component of originality. It described copyright as being
limited to "original intellectual conceptions of the author," 111 U. S., at 58, and
stressed the importance of requiring an author who accuses another of infringement
to prove "the existence of those facts of originality, of intellectual production, of
thought, and conception." Id., at 59-60.
The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles

remains the touchstone of copyright protection today. See Goldstein v. California,
412 U. S. 546, 561-562 (1973). It is the very "premise of copyright law." Miller v.
Universal City Studios, Inc., 650 F. 2d 1365, 1368 (CA5 1981). Leading scholars
agree on this point. [ … ]
It is this bedrock principle of copyright that mandates the law's seemingly disparate
treatment of facts and factual compilations. "No one may claim originality as to
facts." Id., § 2.11[A], p. 2-157. This is because facts do not owe their origin to an
act of authorship. 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. To borrow from Burrow-Giles, one who discovers
a fact is not its "maker" or "originator." 111 U. S., at 58. "The discoverer merely
finds and records." Nimmer § 2.03[E]. Census takers, for example, do not "create"
the population figures that emerge from their efforts; in a sense, they copy these
figures from the world around them. Denicola, Copyright in Collections of Facts: A
Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516,
525 (1981) (hereinafter Denicola). Census data therefore do not trigger copyright
because these data are not "original" in the constitutional sense. Nimmer § 2.03[E].
The same is true of all facts—scientific, historical, biographical, and news of the
ChapterNumber:
10
day. "[T]hey may not be copyrighted and are part of the public domain available to
every person." Miller, supra, at 1369.
Factual compilations, on the other hand, may possess the requisite originality. The
compilation author typically chooses which facts to include, in what order to place
them, and how to arrange the collected data so that they may be used effectively by
readers. These choices as to selection and arrangement, so long as they are made
independently by the compiler and entail a minimal degree of creativity, are
sufficiently original that Congress may protect such compilations through the
copyright laws. Nimmer §§ 2.11[D], 3.03; Denicola 523, n. 38. Thus, even a
directory that contains absolutely no protectible written expression, only facts,
meets the constitutional minimum for copyright protection if it features an original
selection or arrangement. [ … ]
This protection is subject to an important limitation. The mere fact that a work is
copyrighted does not mean that every element of the work may be protected.
Originality remains the sine qua non of copyright; accordingly, copyright protection
may extend only to those components of a work that are original to the author.
[ … ]Thus, if the compilation author clothes facts with an original collocation of
words, he or she may be able to claim a copyright in this written expression. Others
may copy the underlying facts from the publication, but not the precise words used
to present them. In Harper & Row, for example, we explained that President Ford
could not prevent others from copying bare historical facts from his autobiography,
see 471 U. S., at 556-557, but that he could prevent others from copying his
"subjective descriptions and portraits of public figures." Id., at 563. Where the
compilation author adds no written expression but rather lets the facts speak for
themselves, the expressive element is more elusive. The only conceivable
expression is the manner in which the compiler has selected and arranged the facts.
Thus, if the selection and arrangement are original, these elements of the work are
eligible for copyright protection. [ … ]No matter how original the format, however,
the facts themselves do not become original through association. See Patterson &
Joyce 776.
This inevitably means that the copyright in a factual compilation is thin.

Notwithstanding a valid copyright, a subsequent compiler remains free to use the
facts contained in another's publication to aid in preparing a competing work, so
long as the competing work does not feature the same selection and arrangement.
As one commentator explains it: "[N]o matter how much original authorship the
work displays, the facts and ideas it exposes are free for the taking . . . . [T]he very
same facts and ideas may be divorced from the context imposed by the author, and
restated or reshuffled by second comers, even if the author was the first to discover
the facts or to propose the ideas." Ginsburg 1868.
It may seem unfair that much of the fruit of the compiler's labor may be used by
others without compensation. As Justice Brennan has correctly observed, however,
this is not "some unforeseen byproduct of a statutory scheme." Harper & Row, 471
U. S., at 589 (dissenting opinion). It is, rather, "the essence of copyright," ibid., and
a constitutional requirement. The primary objective of copyright is not to reward
the labor of authors, but "[t]o promote the Progress of Science and useful Arts."
Art. I, § 8, cl. 8. Accord, Twentieth Century Music Corp. v. Aiken, 422 U. S. 151,
156 (1975). To this end, copyright assures authors the right to their original
expression, but encourages others to build freely upon the ideas and information
conveyed by a work. Harper & Row, supra, at 556-557. This principle, known as
the idea/expression or fact/expression dichotomy, applies to all works of
11
authorship. As applied to a factual compilation, assuming the absence of original

written expression, only the compiler's selection and arrangement may be protected;
the raw facts may be copied at will. This result is neither unfair nor unfortunate. It
is the means by which copyright advances the progress of science and art.
This Court has long recognized that the fact/expression dichotomy limits severely
the scope of protection in fact-based works. More than a century ago, the Court
observed: "The very object of publishing a book on science or the useful arts is to
communicate to the world the useful knowledge which it contains. But this object
would be frustrated if the knowledge could not be used without incurring the guilt
of piracy of the book." Baker v. Selden, 101 U. S. 99, 103 (1880). We reiterated this
point in Harper & Row:
"[N]o author may copyright facts or ideas. The copyright is limited to

those aspects of the work—termed èxpression'—that display the stamp of
the author's originality.
"[C]opyright does not prevent subsequent users from copying from a prior
author's work those constituent elements that are not original—for
example . . . facts, or materials in the public domain—as long as such use
does not unfairly appropriate the author's original contributions." 471 U.
S., at 547-548 (citation omitted).
This, then, resolves the doctrinal tension: Copyright treats facts and factual
compilations in a wholly consistent manner. Facts, whether alone or as part of a
compilation, are not original and therefore may not be copyrighted. A factual
compilation is eligible for copyright if it features an original selection or
arrangement of facts, but the copyright is limited to the particular selection or
arrangement. In no event may copyright extend to the facts themselves.
B
As we have explained, originality is a constitutionally mandated prerequisite for
copyright protection. The Court's decisions announcing this rule predate the
Copyright Act of 1909, but ambiguous language in the 1909 Act caused some lower
courts temporarily to lose sight of this requirement.
The 1909 Act embodied the originality requirement, but not as clearly as it might
have. See Nimmer § 2.01. The subject matter of copyright was set out in §§ 3 and 4
of the Act. Section 4 stated that copyright was available to "all the writings of an
author." 35 Stat. 1076. By using the words "writings" and "author"—the same
words used in Article I, § 8, of the Constitution and defined by the Court in The
Trade-Mark Cases and Burrow-Giles—the statute necessarily incorporated the
originality requirement articulated in the Court's decisions. It did so implicitly,
however, thereby leaving room for error.
Section 3 was similarly ambiguous. It stated that the copyright in a work protected
only "the copyrightable component parts of the work." It thus stated an important
copyright principle, but failed to identify the specific characteristic—originality—
that determined which component parts of a work were copyrightable and which
were not.
ChapterNumber:
12
Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect
statutory language. They understood from this Court's decisions that there could be
no copyright without originality. [ … ]
But some courts misunderstood the statute. See, e. g., Leon v. Pacific Telephone &
Telegraph Co., 91 F. 2d 484 (CA9 1937); Jeweler's Circular Publishing Co. v.
Keystone Publishing Co., 281 F. 83 (CA2 1922). These courts ignored §§ 3 and 4,
focusing their attention instead on § 5 of the Act. Section 5, however, was purely
technical in nature: It provided that a person seeking to register a work should
indicate on the application the type of work, and it listed 14 categories under which
the work might fall. One of these categories was "[b]ooks, including composite and
cyclopædic works, directories, gazetteers, and other compilations." § 5(a). Section 5
did not purport to say that all compilations were automatically copyrightable.
Indeed, it expressly disclaimed any such function, pointing out that "the subject-
matter of copyright [i]s defined in section four." Nevertheless, the fact that factual
compilations were mentioned specifically in § 5 led some courts to infer
erroneously that directories and the like were copyrightable per se, "without any
further or precise showing of original—personal—authorship." Ginsburg 1895.
Making matters worse, these courts developed a new theory to justify the protection
of factual compilations. Known alternatively as "sweat of the brow" or "industrious
collection," the underlying notion was that copyright was a reward for the hard
work that went into compiling facts. The classic formulation of the doctrine
appeared in Jeweler's Circular Publishing Co., 281 F., at 88:
"The right to copyright a book upon which one has expended labor in its
preparation does not depend upon whether the materials which he has
collected consist or not of matters which are publici juris, or whether such
materials show literary skill or originality, either in thought or in
language, or anything more than industrious collection. The man who goes
through the streets of a town and puts down the names of each of the
inhabitants, with their occupations and their street number, acquires
material of which he is the author" (emphasis added).
The "sweat of the brow" doctrine had numerous flaws, the most glaring being that it
extended copyright protection in a compilation beyond selection and arrangement—
the compiler's original contributions—to the facts themselves. Under the doctrine,
the only defense to infringement was independent creation. A subsequent compiler
was "not entitled to take one word of information previously published," but rather
had to "independently wor[k] out the matter for himself, so as to arrive at the same
result from the same common sources of information." Id., at 88-89 (internal
quotation marks omitted). "Sweat of the brow" courts thereby eschewed the most
fundamental axiom of copyright law—that no one may copyright facts or ideas. [ …
]
Decisions of this Court applying the 1909 Act make clear that the statute did not
permit the "sweat of the brow" approach. The best example is International News
Service v. Associated Press, 248 U. S. 215 (1918). In that decision, the Court stated
unambiguously that the 1909 Act conferred copyright protection only on those
elements of a work that were original to the author. International News Service had
conceded taking news reported by Associated Press and publishing it in its own
newspapers. Recognizing that § 5 of the Act specifically mentioned "`periodicals,
including newspapers,'" § 5(b), the Court acknowledged that news articles were
13
copyrightable. Id., at 234. It flatly rejected, however, the notion that the copyright
in an article extended to the factual information it contained: "[T]he news element
— the information respecting current events contained in the literary production—is
not the creation of the writer, but is a report of matters that ordinarily are publici
juris; it is the history of the day." Ibid. [2]
Without a doubt, the "sweat of the brow" doctrine flouted basic copyright
principles. Throughout history, copyright law has "recognize[d] a greater need to
disseminate factual works than works of fiction or fantasy." [ … ] But "sweat of the
brow" courts took a contrary view; they handed out proprietary interests in facts
and declared that authors are absolutely precluded from saving time and effort by
relying upon the facts contained in prior works. In truth, "[i]t is just such wasted
effort that the proscription against the copyright of ideas and facts . . . [is] designed
to prevent." Rosemont Enterprises, Inc. v. Random House, Inc., 366 F. 2d 303, 310
(CA2 1966), cert. denied, 385 U. S. 1009 (1967). "Protection for the fruits of such
research . . . may in certain circumstances be available under a theory of unfair
competition. But to accord copyright protection on this basis alone distorts basic
copyright principles in that it creates a monopoly in public domain materials
without the necessary justification of protecting and encouraging the creation of
`writings' by àuthors.'" Nimmer § 3.04, p. 3-23 (footnote omitted).
C
"Sweat of the brow" decisions did not escape the attention of the Copyright Office.
When Congress decided to over-haul the copyright statute and asked the Copyright
Office to study existing problems, see Mills Music, Inc. v. Snyder, 469 U. S. 153,
159 (1985), the Copyright Office promptly recommended that Congress clear up the
confusion in the lower courts as to the basic standards of copyrightability. The
Register of Copyrights explained in his first report to Congress that "originality"
was a "basic requisit[e]" of copyright under the 1909 Act, but that "the absence of
any reference to [originality] in the statute seems to have led to misconceptions as
to what is copyrightable matter." [ … ] The Register suggested making the
originality requirement explicit. Ibid.
Congress took the Register's advice. In enacting the Copyright Act of 1976,
Congress dropped the reference to "all the writings of an author" and replaced it
with the phrase "original works of authorship." 17 U. S. C. § 102(a). In making
explicit the originality requirement, Congress announced that it was merely
clarifying existing law: "The two fundamental criteria of copyright protection [are]
originality and fixation in tangible form . . . . The phrase òriginal works of
authorship,' which is purposely left undefined, is intended to incorporate without
change the standard of originality established by the courts under the present
[1909] copyright statute." H. R. Rep. No. 94-1476, p. 51 (1976) (emphasis added)
(hereinafter H. R. Rep.); S. Rep. No. 94-473, p. 50 (1975) (emphasis added)
(hereinafter S. Rep.). This sentiment was echoed by the Copyright Office: "Our
intention here is to maintain the established standards of originality. . . ." [ … ]
To ensure that the mistakes of the "sweat of the brow" courts would not be
repeated, Congress took additional measures. For example, § 3 of the 1909 Act had
stated that copyright protected only the "copyrightable component parts" of a work,
but had not identified originality as the basis for distinguishing those component
parts that were copyrightable from those that were not. The 1976 Act deleted this
ChapterNumber:
14
section and replaced it with § 102(b), which identifies specifically those elements
of a work for which copyright is not available: "In no case does copyright
protection for an original work of authorship extend to any idea, procedure,
process, system, method of operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated, or embodied in such work."
Section 102(b) is universally understood to prohibit any copyright in facts. Harper
& Row, supra, at 547, 556. Accord, Nimmer § 2.03[E] (equating facts with
"discoveries"). As with § 102(a), Congress emphasized that § 102(b) did not change
the law, but merely clarified it: "Section 102(b) in no way enlarges or contracts the
scope of copyright protection under the present law. Its purpose is to restate . . . that
the basic dichotomy between expression and idea remains unchanged." H. R. Rep.,
at 57; S. Rep., at 54.
Congress took another step to minimize confusion by deleting the specific mention
of "directories . . . and other compilations" in § 5 of the 1909 Act. As mentioned,
this section had led some courts to conclude that directories were copyrightable per
se and that every element of a directory was protected. In its place, Congress
enacted two new provisions. First, to make clear that compilations were not
copyrightable per se, Congress provided a definition of the term "compilation."
Second, to make clear that the copyright in a compilation did not extend to the facts
themselves, Congress enacted § 103.
The definition of "compilation" is found in § 101 of the 1976 Act. It defines a

"compilation" in the copyright sense as "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" (emphasis added).
The purpose of the statutory definition is to emphasize that collections of facts are
not copyrightable per se. It conveys this message through its tripartite structure, as
emphasized above by the italics. The statute identifies three distinct elements and
requires each to be met for a work to qualify as a copyrightable compilation: (1) the
collection and assembly of pre-existing material, facts, or data; (2) the selection,
coordination, or arrangement of those materials; and (3) the creation, by virtue of
the particular selection, coordination, or arrangement, of an "original" work of
authorship. "[T]his tripartite conjunctive structure is self-evident, and should be
assumed to àccurately express the legislative purpose.'" Patry 51, quoting.
At first glance, the first requirement does not seem to tell us much. It merely
describes what one normally thinks of as a compilation—a collection of pre-
existing material, facts, or data. What makes it significant is that it is not the sole
requirement. It is not enough for copyright purposes that an author collects and
assembles facts. To satisfy the statutory definition, the work must get over two
additional hurdles. In this way, the plain language indicates that not every
collection of facts receives copyright protection. Otherwise, there would be a period
after "data."
The third requirement is also illuminating. It emphasizes that a compilation, like

any other work, is copyrightable only if it satisfies the originality requirement ("an
original work of authorship"). Although § 102 states plainly that the originality
requirement applies to all works, the point was emphasized with regard to
compilations to ensure that courts would not repeat the mistake of the "sweat of the
brow" courts by concluding that fact-based works are treated differently and
measured by some other standard. As Congress explained it, the goal was to "make
15
plain that the criteria of copyrightable subject matter stated in section 102 apply
with full force to works . . . containing preexisting material." H. R. Rep., at 57; S.
Rep., at 55.
The key to the statutory definition is the second requirement. It instructs courts that,
in determining whether a fact-based work is an original work of authorship, they
should focus on the manner in which the collected facts have been selected,
coordinated, and arranged. This is a straightforward application of the originality
requirement. Facts are never original, so the compilation author can claim
originality, if at all, only in the way the facts are presented. To that end, the statute
dictates that the principal focus should be on whether the selection, coordination,
and arrangement are sufficiently original to merit protection.
Not every selection, coordination, or arrangement will pass muster. This is plain
from the statute. It states that, to merit protection, the facts must be selected,
coordinated, or arranged "in such a way" as to render the work as a whole original.
This implies that some "ways" will trigger copyright, but that others will not. See
Patry 57, and n. 76. Otherwise, the phrase "in such a way" is meaningless and
Congress should have defined "compilation" simply as "a work formed by the
collection and assembly of preexisting materials or data that are selected,
coordinated, or arranged." That Congress did not do so is dispositive. In accordance
with "the established principle that a court should give effect, if possible, to every
clause and word of a statute," Moskal v. United States, 498 U. S. 103, 109-110
(1990) (internal quotation marks omitted), we conclude that the statute envisions
that there will be some fact-based works in which the selection, coordination, and
arrangement are not sufficiently original to trigger copyright protection.
As discussed earlier, however, the originality requirement is not particularly

stringent. A compiler may settle upon a selection or arrangement that others have
used; novelty is not required. Originality requires only that the author make the
selection or arrangement independently (i. e., without copying that selection or
arrangement from another work), and that it display some minimal level of
creativity. Presumably, the vast majority of compilations will pass this test, but not
all will. There remains a narrow category of works in which the creative spark is
utterly lacking or so trivial as to be virtually nonexistent. See generally Bleistein v.
Donaldson Lithographing Co., 188 U. S. 239, 251 (1903) (referring to "the
narrowest and most obvious limits"). Such works are incapable of sustaining a valid
copyright. Nimmer § 2.01[B].
Even if a work qualifies as a copyrightable compilation, it receives only limited

protection. This is the point of § 103 of the Act. Section 103 explains that "[t]he
subject matter of copyright . . . includes compilations," § 103(a), but that copyright
protects only the author's original contributions—not the facts or information
conveyed:
"The 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).
As § 103 makes clear, copyright is not a tool by which a compilation author may
keep others from using the facts or data he or she has collected. "The most
important point here is one that is commonly misunderstood today: copyright. . .
has no effect one way or the other on the copyright or public domain status of the
ChapterNumber:
16
preexisting material." H. R. Rep., at 57; S. Rep., at 55. 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. See, e.g., Jeweler's Circular Publishing Co., 281 F., at 88-
89. Rather, the facts contained in existing works may be freely copied because
copyright protects only the elements that owe their origin to the compiler—the
selection, coordination, and arrangement of facts.
In summary, the 1976 revisions to the Copyright Act leave no doubt that originality,
not "sweat of the brow," is the touchstone of copyright protection in directories and
other fact-based works. Nor is there any doubt that the same was true under the
1909 Act. The 1976 revisions were a direct response to the Copyright Office's
concern that many lower courts had misconstrued this basic principle, and Congress
emphasized repeatedly that the purpose of the revisions was to clarify, not change,
existing law. 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.
The 1976 revisions have proven largely successful in steering courts in the right
direction. A good example is Miller v. Universal City Studios, Inc., 650 F. 2d, at
1369-1370: "A copyright in a directory . . . is properly viewed as resting on the
originality of the selection and arrangement of the factual material, rather than on
the industriousness of the efforts to develop the information. Copyright protection
does not extend to the facts themselves, and the mere use of information contained
in a directory without a substantial copying of the format does not constitute
infringement" (citation omitted). Additionally, the Second Circuit, which almost 70
years ago issued the classic formulation of the "sweat of the brow" doctrine in
Jeweler's Circular Publishing Co., has now fully repudiated the reasoning of that
decision. [ … ] Even those scholars who believe that "industrious collection" should
be rewarded seem to recognize that this is beyond the scope of existing copyright
law. [ … ].
III
There is no doubt that Feist took from the white pages of Rural's directory a
substantial amount of factual information. At a minimum, Feist copied the names,
towns, and telephone numbers of 1,309 of Rural's subscribers. Not all copying,
however, is copyright infringement. To establish infringement, two elements must
be proven: (1) ownership of a valid copyright, and (2) copying of constituent
elements of the work that are original. See Harper & Row, 471 U. S., at 548. The
first element is not at issue here; Feist appears to concede that Rural's directory,
considered as a whole, is subject to a valid copyright because it contains some
foreword text, as well as original material in its yellow pages advertisements. See
Brief for Petitioner 18; Pet. for Cert. 9.
The question is whether Rural has proved the second element. In other words, did
Feist, by taking 1,309 names, towns, and telephone numbers from Rural's white
pages, copy anything that was "original" to Rural? Certainly, the raw data does not
satisfy the originality requirement. Rural may have been the first to discover and
report the names, towns, and telephone numbers of its subscribers, but this data
17
does not "ow[e] its origin'" to Rural. Burrow-Giles, 111 U. S., at 58. Rather, these
bits of information are uncopyrightable facts; they existed before Rural reported
them and would have continued to exist if Rural had never published a telephone
directory. The originality requirement "rule[s] out protecting . . . names, addresses,
and telephone numbers of which the plaintiff by no stretch of the imagination could
be called the author." Patterson & Joyce 776.
Rural essentially concedes the point by referring to the names, towns, and telephone
numbers as "preexisting material." Brief for Respondent 17. Section 103(b) states
explicitly that the copyright in a compilation does not extend to "the preexisting
material employed in the work."
The question that remains is whether Rural selected, coordinated, or arranged these
uncopyrightable facts in an original way. As mentioned, originality is not a
stringent standard; it does not require that facts be presented in an innovative or
surprising way. It is equally true, however, that the selection and arrangement of
facts cannot be so mechanical or routine as to require no creativity whatsoever. The
standard of originality is low, but it does exist.[ … ] As this Court has explained,
the Constitution mandates some minimal degree of creativity, see The Trade-Mark
Cases, 100 U. S., at 94; and an author who claims infringement must prove "the
existence of . . . intellectual production, of thought, and conception." Burrow-Giles,
supra, at 59-60.
The selection, coordination, and arrangement of Rural's white pages do not satisfy
the minimum constitutional standards for copyright protection. As mentioned at the
outset, Rural's white pages are entirely typical. Persons desiring' telephone service
in Rural's service area fill out an application and Rural issues them a telephone
number. In preparing its white pages, Rural simply takes the data provided by its
subscribers and lists it alphabetically by surname. The end product is a garden-
variety white pages directory, devoid of even the slightest trace of creativity.
Rural's selection of listings could not be more obvious: It publishes the most basic
information—name, town, and telephone number—about each person who applies
to it for telephone service. This is "selection" of a sort, but it lacks the modicum of
creativity necessary to transform mere selection into copyrightable expression.
Rural expended sufficient effort to make the white pages directory useful, but
insufficient creativity to make it original.
We note in passing that the selection featured in Rural's white pages may also fail
the originality requirement for another reason. Feist points out that Rural did not
truly "select" to publish the names and telephone numbers of its subscribers; rather,
it was required to do so by the Kansas Corporation Commission as part of its
monopoly franchise. See 737 F. Supp., at 612. Accordingly, one could plausibly
conclude that this selection was dictated by state law, not by Rural.
Nor can Rural claim originality in its coordination and arrangement of facts. The
white pages do nothing more than list Rural's subscribers in alphabetical order. This
arrangement may, technically speaking, owe its origin to Rural; no one disputes that
Rural undertook the task of alphabetizing the names itself. But there is nothing
remotely creative about arranging names alphabetically in a white pages directory.
It is an age-old practice, firmly rooted in tradition and so commonplace that it has
come to be expected as a matter of course. [ … ] It is not only unoriginal, it is
practically inevitable. This time-honored tradition does not possess the minimal
creative spark required by the Copyright Act and the Constitution.
ChapterNumber:
18
We conclude that the names, towns, and telephone numbers copied by Feist were
not original to Rural and therefore were not protected by the copyright in Rural's
combined white and yellow pages directory. As a constitutional matter, copyright
protects only those constituent elements of a work that possess more than a de
minimis quantum of creativity. Rural's white pages, limited to basic subscriber
information and arranged alphabetically, fall short of the mark. As a statutory
matter, 17 U. S. C. § 101 does not afford protection from copying to a collection of
facts that are selected, coordinated, and arranged in a way that utterly lacks
originality. Given that some works must fail, we cannot imagine a more likely
candidate. Indeed, were we to hold that Rural's white pages pass muster, it is hard
to believe that any collection of facts could fail.
Because Rural's white pages lack the requisite originality, Feist's use of the listings
cannot constitute infringement. This decision should not be construed as demeaning
Rural's efforts in compiling its directory, but rather as making clear that copyright
rewards originality, not effort. As this Court noted more than a century ago, "`great
praise may be due to the plaintiffs for their industry and enterprise in publishing
this paper, yet the law does not contemplate their being rewarded in this way.'"
Baker v. Selden, 101 U. S., at 105.
The judgment of the Court of Appeals is
Reversed.
JUSTICE BLACKMUN concurs in the judgment.
[1] Briefs of amici curiae urging reversal were filed for the Association of North
American Directory Publishers et al. by Theodore Case Whitehouse; for the
International Association of Cross Reference Directory Publishers by Richard D.
Grauer and Kathleen McCree Lewis; and for the Third-Class Mail Association by
Ian D. Volner.
Briefs of amici curiae urging affirmance were filed for Ameritech et al. by Michael
K. Kellogg, Charles Rothfeld, Douglas J. Kirk, Thomas P. Hester, and Harlan
Sherwat; for the Association of American Publishers, Inc., by Robert G. Sugarman
and R. Bruce Rich; for GTE Corp. by Kirk K. Van Tine, Richard M. Cahill, and
Edward R. Sublett; for the National Telephone Cooperative Association by L.
Marie Guillory and David Cosson; for the United States Telephone Association by
Richard J. Rappaport and Keith P. Schoeneberger; and for West Publishing Co. by
Vance K. Opperman and James E. Schatz.
Briefs of amici curiae were filed for Bellsouth Corp. by Anthony B. Askew, Robert
E. Richards, Walter H. Alford, and Vincent L. Sgrosso; for the Direct Marketing
Association, Inc., by Robert L. Sherman; for Haines and Co., Inc., by Jeremiah D.
McAuliffe, Bernard A. Barken, and Eugene Gressman; and for the Information
Industry Association et al. by Steven J. Metalitz and Angela Burnett.
[2] The Court ultimately rendered judgment for Associated Press on non-copyright
grounds that are not relevant here. See 248 U. S., at 235, 241-242.

19
1.1.5
Mannion v. Coors Brewing Co.

United States District Court for the Southern District

of New York
377 F. Supp. 2d 444
No. 04 Civ. 1187(LAK)
2005-07-21
377 F.Supp.2d 444
Jonathan MANNION, Plaintiff,
v.
COORS BREWING COMPANY and Carol H.
Williams Advertising, Defendants.
[…]
United States District Court, S.D. New York.
July 21, 2005.
[…]
KAPLAN, District Judge.
The parties dispute whether a photograph used in billboard advertisements for [447]
Coors Light beer infringes the plaintiff's copyright in a photograph of a basketball
star. The defendants almost certainly imitated the plaintiff's photograph. The major
question is whether and to what extent what was copied is protected. The case
requires the Court to consider the nature of copyright protection in photographs.
The matter is before the Court on cross motions for summary judgment.
Facts
Jonathan Mannion is a freelance photographer who specializes in portraits of
celebrity athletes and musicians in the rap and rhythm-and-blues worlds. [1] In 1999
he was hired by SLAM, a basketball magazine, to photograph basketball star Kevin
Garnett in connection with an article that the magazine planned to publish about
him. [2] The article, entitled "Above the Clouds," appeared as the cover story of the
December 1999 issue of the magazine. [3] It was accompanied by a number of
Mannion's photographs of Garnett, including the one at issue here (the "Garnett
Photograph"), which was printed on a two-page spread introducing the article. [4]
The Garnett Photograph, which is reproduced below, [5] is a three-quarter-length

portrait of Garnett against a backdrop of clouds with some blue sky shining
through. The view is up and across the right side of Garnett's torso, so that he
appears to be towering above earth. He wears a white T-shirt, white athletic pants, a
black close-fitting cap, and a large amount of platinum, gold, and diamond jewelry
ChapterNumber:
20
("bling bling" in the vernacular), including several necklaces, a Rolex watch and
bracelet on his left wrist, bracelets on his right wrist, rings on one finger of each
hand, and earrings. His head is cocked, his eyes are closed, and his heavily-veined
hands, nearly all of which are visible, rest over his lower abdomen, with the thumbs
hooked on the waistband of the trousers. The light is from the viewer's left, so that
Garnett's right shoulder is the brightest area of the photograph and his hands cast
slight shadows on his trousers. As reproduced in the magazine, the photograph cuts
off much of Garnett's left arm. [6]
In early 2001, defendant Carol H. Williams Advertising ("CHWA") began

developing ideas for outdoor billboards that would advertise Coors Light beer to
young black men in urban areas. [7] One of CHWA's "comp boards" — a "comp
board" is an image created by an advertising company to convey a proposed
design[8] — used a manipulated version of the Garnett Photograph and
superimposed on it the words "Iced Out" ("ice" being slang for diamonds [9] ) and a
picture of a can of Coors Light beer (the "Iced Out Comp Board"). [10] [448] CHWA
obtained authorization from Mannion's representative to use the Garnett Photograph
for this purpose. [11]
The Iced Out Comp Board, reproduced below, used a black-and-white, mirror
image of the Garnett Photograph, but with the head cropped out on top and part of
the fingers cropped out below. [12] CHWA forwarded its comp boards to, and
solicited bids for the photograph for the Coors advertising from, various
photographers including Mannion, who submitted a bid but did not receive the
assignment. [13]
Coors and CHWA selected for a Coors billboard a photograph (the "Coors
Billboard"), reproduced below, that resembles the Iced Out Comp Board. [14] The
Coors Billboard depicts, in black-and-white, the torso of a muscular black man,
albeit a model other than Garnett, [15] shot against a cloudy backdrop. The pose is
similar to that in the Garnett Photograph, and the view also is up and across the left
side of the torso. The model in the billboard photograph also wears a white T-shirt
and white athletic pants. The model's jewelry is prominently depicted; it includes a
necklace of platinum or gold and diamonds, a watch and two bracelets on the right
wrist, and more bracelets on the left wrist. The light comes from the viewer's right,
so that the left shoulder is the brightest part of the photograph, and the right arm
and hand cast slight shadows on the trousers. [16]
Mannion subsequently noticed the Coors Billboard at two locations in the Los
Angeles area. [17] He applied for registration of his copyright of the Garnett
Photograph in 2003 [18] and brought this action for infringement in February of 2004.
The registration was completed in May 2004. [19] The parties each move for
summary judgment.
Discussion
A. Summary Judgment Standard

Summary judgment is appropriate if there is no genuine issue of material fact and
the moving party is entitled to judgment as a matter of law. [20] The moving party has
the burden of demonstrating the absence of a genuine issue of material fact, [21] and
the Court must view the facts in the light most favorable to the nonmoving party. [22]
21
"Where cross-motions for summary judgment are filed, a court `must evaluate each
party's motion on its own merits, taking care in each instance to draw all reasonable
inferences against the party whose motion is under consideration.'" [23] [449]
B. The Elements of Copyright Infringement

"To prove infringement, a plaintiff with a valid copyright must demonstrate that:
(1) the defendant has actually copied the plaintiff's work; and (2) the copying is
illegal because a substantial similarity exists between the defendant's work and the
protectible elements of plaintiff's." [24] "Actual copying" — which is used as a term
of art to mean that "the defendant, in creating its work, used the plaintiff's material
as a model, template, or even inspiration" [25] — may be shown by direct evidence,
which rarely is available, or by proof of access and probative similarities (as
distinguished from "substantial similarity") between the two works. [26]
Mannion concededly owns a valid copyright in the Garnett photograph. [27] Access is
undisputed. There is ample evidence from which a trier of fact could find that
CHWA actually copied the Garnett Photograph for the Coors Billboard. Thus, the
major questions presented by these motions are whether a trier of fact could or must
find substantial similarity between protected elements of the Garnett Photograph
and the Coors Billboard. [28] If no reasonable trier could find such similarity, [450]
the defendants' motion must be granted and the plaintiff's denied. If any reasonable
trier would be obliged to find such similarity (along with actual copying), the
plaintiff's motion must be granted and the defendants' denied. If a reasonable trier
could, but would not be required to, find substantial similarity (and actual copying),
both motions must be denied.
C. Determining the Protectible Elements of

the Garnett Photograph
The first question must be: in what respects is the Garnett Photograph protectible?
1. Protectible Elements of Photographs

It is well-established that "[t]he sine qua non of copyright is originality" [29] and,
accordingly, that "copyright protection may extend only to those components of a
work that are original to the author." [30] "Original" in the copyright context "means
only that the work was independently created by the author (as opposed to copied
from other works), and that it possesses at least some minimal degree of
creativity." [31]
It sometimes is said that "copyright in the photograph conveys no rights over the
subject matter conveyed in the photograph." [32] But this is not always true. It of
course is correct that the photographer of a building or tree or other pre-existing
object has no right to prevent others from photographing the same thing. [33] That is
because originality depends upon independent creation, and the photographer did
not create that object. By contrast, if a photographer arranges or otherwise creates
ChapterNumber:
22
the subject that his camera captures, he may have the right to prevent others from
producing works that depict that subject. [34]
Almost any photograph "may claim the necessary originality to support a

copyright." [35] Indeed, ever since the Supreme Court considered an 1882 portrait by
the celebrity photographer Napoleon Sarony of the 27-year-old Oscar Wilde, [36]
courts have articulated lists of potential components of a photograph's originality.
[37]
[451] These lists, however, are somewhat unsatisfactory.
First, they do not deal with the issue, alluded to above, that the nature and extent of
a photograph's protection differs depending on what makes that photograph
original.
Second, courts have not always distinguished between decisions that a photographer
makes in creating a photograph and the originality of the final product. Several
cases, for example, have included in lists of the potential components of
photographic originality "selection of film and camera," [38] "lens and filter
selection," [39] and "the kind of camera, the kind of film, [and] the kind of lens." [40]
Having considered the matter fully, however, I think this is not sufficiently precise.
Decisions about film, camera, and lens, for example, often bear on whether an
image is original. But the fact that a photographer made such choices does not alone
make the image original. "Sweat of the brow" is not the touchstone of copyright. [41]
Protection derives from the features of the work itself, not the effort that goes into
it.
This point is illustrated by Bridgeman Art Library, Ltd. v. Corel Corp., [42] in which
this Court held that there was no copyright in photographic transparencies that
sought to reproduce precisely paintings in the public domain. To be sure, a great
deal of effort and expertise may have been poured into the production of the
plaintiff's images, including decisions about camera, lens, and film. But the works
were "slavish copies." They did not exhibit the originality necessary for copyright.
[43]
The Court therefore will examine more closely the nature of originality in a
photograph. In so doing, it draws on the helpful discussion in a leading treatise on
United Kingdom copyright law, [44] which is [452] similar to our own with respect to
the requirement of originality. [45]
A photograph may be original in three respects. [46] They are not mutually exclusive.
a. Rendition
First, "there may be originality which does not depend on creation of the scene or
object to be photographed ... and which resides [instead] in such specialties as angle
of shot, light and shade, exposure, effects achieved by means of filters, developing
techniques etc." [47] I will refer to this type of originality as originality in the
rendition because, to the extent a photograph is original in this way, copyright
protects not what is depicted, but rather how it is depicted. [48]
It was originality in the rendition that was at issue in SHL Imaging, Inc. v. Artisan
House, Inc. [49] That case concerned photographs of the defendants' mirrored picture
frames that the defendants commissioned from the plaintiff. The photographs were
to be used by the defendants' sales force for in-person pitches. When the defendants
23
reproduced the photographs in their catalogues and brochures, the court found
infringement: "Plaintiff cannot prevent others from photographing the same frames,
or using the same lighting techniques and blue sky reflection in the mirrors. What
makes plaintiff's photographs original is the totality of the precise lighting
selection, angle of the camera, lens and filter selection." [50] Again, what made the
photographs original was not the lens and filter selection themselves. It was the
effect produced by the lens and filters selected, among other things. In any case,
those effects were the basis of the originality of the works at issue in SHL Imaging.
By contrast, in Bridgeman Art Library, the goal was to reproduce exactly other
works. The photographs were entirely unoriginal in the rendition, an extremely
unusual circumstance. Unless a photograph replicates another work with total or
near-total fidelity, it will be at least somewhat original in the rendition.
b. Timing
A photograph may be original in a second respect. "[A] person may create a
worthwhile photograph by being at the right place at the right time." [51] I will [453]
refer to this type of originality as originality in timing.
One case that concerned originality in timing, among other things, was Pagano v.
Chas. Beseler Co., [52] which addressed the copyrightability of a photograph of a
scene in front of the New York Public Library at Fifth Avenue and Forty-Second
Street:
The question is not, as defendant suggests, whether the photograph of a

public building may properly be copyrighted. Any one may take a
photograph of a public building and of the surrounding scene. It
undoubtedly requires originality to determine just when to take the
photograph, so as to bring out the proper setting for both animate and
inanimate objects.... The photographer caught the men and women in not
merely lifelike, but artistic, positions, and this is especially true of the
traffic policeman.... There are other features, which need not be discussed
in detail, such as the motor cars waiting for the signal to proceed. [53]
A modern work strikingly original in timing might be Catch of the Day, by noted
wildlife photographer Thomas Mangelsen, which depicts a salmon that appears to
be jumping into the gaping mouth of a brown bear at Brooks Falls in Katmai
National Park, Alaska. [54] An older example is Alfred Eisenstaedt's photograph of a
sailor kissing a young woman on VJ Day in Times Square, [55] the memorability of
which is attributable in significant part to the timing of its creation.
Copyright based on originality in timing is limited by the principle that copyright in

a photograph ordinarily confers no rights over the subject matter. Thus, the
copyright in Catch of the Day does not protect against subsequent photographs of
bears feasting on salmon in the same location. Furthermore, if another photographer
were sufficiently skilled and fortunate to capture a salmon at the precise moment
that it appeared to enter a hungry bear's mouth — and others have tried, with
varying degrees of success [56] — that photographer, even if inspired by Mangelsen,
would not necessarily have infringed his work because Mangelsen's copyright does
not extend to the natural world he captured.
ChapterNumber:
24
In practice, originality in timing gives rise to the same type of protection as

originality in the rendition. In each case, the image that exhibits the originality, but
not the underlying subject, qualifies for copyright protection.
c. Creation of the Subject

The principle that copyright confers no right over the subject matter has an
important limitation. A photograph may be original to the extent that the
photographer created "the scene or subject to be photographed." [57] This type of
originality, which I will refer to as originality in the creation of the subject, played
an essential role in Rogers v. Koons [58] and Gross v. Seligman. [59]
[454] In Rogers, the court held that the copyright in the plaintiff's photograph
Puppies, which depicted a contrived scene of the photographer's acquaintance, Jim
Scanlon, and his wife on a park bench with eight puppies on their laps, protected
against the defendants' attempt to replicate precisely, albeit in a three dimensional
sculpture, the content of the photograph. [60] Although the Circuit noted that Puppies
was original because the artist "made creative judgments concerning technical
matters with his camera and the use of natural light" [61] — in other words, because it
was original in the rendition — its originality in the creation of the subject was
more salient. [62] The same is true of the works at issue in Gross v. Seligman, in
which the Circuit held that the copyright in a photograph named Grace of Youth
was infringed when the same artist created a photograph named Cherry Ripe [63]
using "the same model in the identical pose, with the single exception that the
young woman now wears a smile and holds a cherry stem between her teeth." [64]
******
To conclude, the nature and extent of protection conferred by the copyright in a

photograph will vary depending on the nature of its originality. Insofar as a
photograph is original in the rendition or timing, copyright protects the image but
does not prevent others from photographing the same object or scene. Thus, the
copyright at issue in SHL Imaging does not protect against subsequent photographs
of the picture frames because the originality of the plaintiffs' photographs was
almost purely in the rendition of those frames, not in their creation or the timing of
the scene captured. In Pagano, the timing of the capture of the scene in front of the
New York Public Library and its rendition were original, but the copyright in the
Pagano photograph does not protect against future attempts to capture a scene in
front of the same building, just as a copyright in Catch of the Day would not protect
against other photographers capturing images of salmon-eating bears.
By contrast, to the extent that a photograph is original in the creation of the subject,
copyright extends also to that subject. Thus, an artist who arranges and then
photographs a scene often will have the right to prevent others from duplicating that
scene in a photograph or other medium. [65]
2. Originality of the Garnett Photograph

There can be no serious dispute that the Garnett Photograph is an original [455]
work. The photograph does not result from slavishly copying another work and
25
therefore is original in the rendition. Mannion's relatively unusual angle and

distinctive lighting strengthen that aspect of the photograph's originality. His
composition — posing man against sky — evidences originality in the creation of
the subject. Furthermore, Mannion instructed Garnett to wear simple and plain
clothing and as much jewelry as possible, and "to look 'chilled out.'" [66] His
orchestration of the scene contributes additional originality in the creation of the
subject.
Of course, there are limits to the photograph's originality and therefore to the
protection conferred by the copyright in the Garnett Photograph. For example,
Kevin Garnett's face, torso, and hands are not original with Mannion, and Mannion
therefore may not prevent others from creating photographic portraits of Garnett.
Equally obviously, the existence of a cloudy sky is not original, and Mannion
therefore may not prevent others from using a cloudy sky as a backdrop.
The defendants, however, take this line of reasoning too far. They argue that it was
Garnett, not Mannion, who selected the specific clothing, jewelry, and pose. In
consequence, they maintain, the Garnett Photograph is not original to the extent of
Garnett's clothing, jewelry, and pose. [67] They appear to be referring to originality in
the creation of the subject.
There are two problems with the defendants' argument. The first is that Mannion
indisputably orchestrated the scene, even if he did not plan every detail before he
met Garnett, and then made the decision to capture it. The second difficulty is that
the originality of the photograph extends beyond the individual clothing, jewelry,
and pose viewed in isolation. It is the entire image — depicting man, sky, clothing,
and jewelry in a particular arrangement — that is at issue here, not its individual
components. The Second Circuit has rejected the proposition that:
in comparing designs for copyright infringement, we are required to

dissect them into their separate components, and compare only those
elements which are in themselves copyrightable.... [I]f we took this
argument to its logical conclusion, we might have to decide that `there can
be no originality in a painting because all colors of paint have been used
somewhere in the past. [68]
3. The Idea / Expression Difficulty

Notwithstanding the originality of the Garnett Photograph, the defendants argue
that the Coors Billboard does not infringe because the two, insofar as they are
similar, share only "the generalized idea and concept of a young African American
man wearing a white T-shirt and a large amount of jewelry." [69]
It is true that an axiom of copyright law is that copyright does not protect "ideas,"
only their expression. [70] Furthermore, when "a given idea is inseparably tied to a
particular expression" so that "there is a `merger' of idea and expression," [456]
courts may deny protection to the expression in order to avoid conferring a
monopoly on the idea to which it inseparably is tied. [71] But the defendants' reliance
on these principles is misplaced.
The "idea" (if one wants to call it that) postulated by the defendants does not even
come close to accounting for all the similarities between the two works, which
ChapterNumber:
26
extend at least to angle, pose, background, composition, and lighting. It is possible

to imagine any number of depictions of a black man wearing a white T-shirt and
"bling bling" that look nothing like either of the photographs at issue here.
This alone is sufficient to dispose of the defendants' contention that Mannion's

claims must be rejected because he seeks to protect an idea rather than its
expression. But the argument reveals an analytical difficulty in the case law about
which more ought to be said. One of the main cases upon which the defendants rely
is Kaplan v. Stock Market Photo Agency, Inc., [72] in which two remarkably similar
photographs of a businessman's shoes and lower legs, taken from the top of a tall
building looking down on a street below (the plaintiff's and defendants' photographs
are reproduced below), were held to be not substantially similar as a matter of law
because all of the similarities flowed only from an unprotected idea rather than
from the expression of that idea.
But what is the "idea" of Kaplan's photograph? Is it (1) a businessman

contemplating suicide by jumping from a building, (2) a businessman
contemplating suicide by jumping from a building, seen from the vantage point of
the businessman, with his shoes set against the street far below, or perhaps
something more general, such as (3) a sense of desperation produced by urban
professional life?
If the "idea" is (1) or, for that matter, (3), then the similarities between the two
photographs flow from something much more than that idea, for it have would been
possible to convey (1) (and (3)) in any number of ways that bear no obvious
similarities to Kaplan's photograph. (Examples are a businessman atop a building
seen from below, or the entire figure of the businessman, rather than just his shoes
or pants, seen from above.) If, on the other hand, the "idea" is (2), then the two
works could be said to owe much of their similarity to a shared idea. [73]
[457] To be sure, the difficulty of distinguishing between idea and expression long
has been recognized. Judge Learned Hand famously observed in 1930:
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 consist 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 ìdeas,' to which, apart from their expression, his property is never
extended. Nobody has ever been able to fix that boundary, and nobody
ever can. [74]
Three decades later, Judge Hand's views were essentially the same: "The test for
infringement of a copyright is of necessity vague.... Obviously, no principle can be
stated as to when an imitator has gone beyond copying the ìdea,' and has borrowed
its èxpression.' Decisions must therefore inevitably be ad hoc." [75] Since then, the
Second Circuit and other authorities repeatedly have echoed these sentiments. [76]
But there is a difference between the sort of difficulty Judge Hand identified in
Nichols and Peter Pan Fabrics and the one presented by the Kaplan rationale and
the defendants' argument about ideas in this case. The former difficulty is
essentially one of line-drawing, and, as Judge Hand taught, is common to most
cases in most areas of the law. [77] The latter difficulty, [458] however, is not simply
27
that it is not always clear where to draw the line; it is that the line itself is
meaningless because the conceptual categories it purports to delineate are ill-suited
to the subject matter.
The idea/expression distinction arose in the context of literary copyright. [78] For the
most part, the Supreme Court has not applied it outside that context. [79] The classic
Hand formulations reviewed above also were articulated in the context of literary
works. And it makes sense to speak of the idea conveyed by a literary work and to
distinguish it from its expression. To take a clear example, two different authors
each can describe, with very different words, the theory of special relativity. The
words will be protected as expression. The theory is a set of unprotected ideas.
In the visual arts, the distinction breaks down. For one thing, it is impossible in
most cases to speak of the particular "idea" captured, embodied, or conveyed by a
work of art because every observer will have a different interpretation. [80]
Furthermore, it is not clear that there is any real distinction between the idea in a
work of art and its expression. An artist's idea, among other things, is to depict a
particular subject in a particular way. As a demonstration, a number of cases from
this Circuit have observed that a photographer's "conception" of his subject is
copyrightable. [81] By "conception," the courts must mean originality in the rendition,
timing, and creation of the subject — for that is what copyright protects in
photography. But the word "conception" is a cousin of "concept," and both are akin
to "idea." In other words, those elements of a photograph, or indeed, any work of
visual art protected by copyright, could just as [459] easily be labeled "idea" as
"expression." [82]
This Court is not the first to question the usefulness of the idea/expression
terminology in the context of non-verbal media. Judge Hand pointed out in Peter
Pan Fabrics that whereas "[i]n the case of verbal `works', it is well settled that ...
there can be no copyright in the ìdeas' disclosed but only in their èxpression[,]'"
"[i]n the case of designs, which are addressed to the aesthetic sensibilities of the
observer, the test is, if possible, even more intangible." [83] Moreover, Judge
Newman has written:
I do not deny that all of these subject matters [computer programs,

wooden dolls, advertisements in a telephone directory] required courts to
determine whether the first work was copyrightable and whether the
second infringed protectable elements. What I question is whether courts
should be making those determinations with the same modes of analysis
and even the same vocabulary that was appropriate for writings.... [I]t is
not just a matter of vocabulary. Words convey concepts, and if we use
identical phrases from one context to resolve issues in another, we risk
failing to notice that the relevant concepts are and ought to be somewhat
different. [84]
He then referred to dicta from his own decision in Warner Bros. v. American
Broadcasting Companies, [85] explaining: "I was saying ... [that] one cannot divide a
visual work into neat layers of abstraction in precisely the same manner one could
with a text." [86] The Third Circuit has made a similar point:
Troublesome, too, is the fact that the same general principles are applied
in claims involving plays, novels, sculpture, maps, directories of
information, musical compositions, as well as artistic paintings. Isolating
ChapterNumber:
28
the idea from the expression and determining the extent of copying
required for unlawful appropriation necessarily depend to some degree on
whether the subject matter is words or symbols written on paper, or paint
brushed onto canvas. [87]
For all of these reasons, I think little is gained by attempting to distinguish an

unprotectible "idea" from its protectible "expression" in a photograph or other work
of visual art. It remains, then, to consider just what courts have been referring to
[460] when they have spoken of the "idea" in a photograph.
A good example is Rogers v. Koons, in which the court observed that "[i]t is not ...
the idea of a couple with eight small puppies seated on a bench that is protected,
but rather Rogers' expression of this idea — as caught in the placement, in the
particular light, and in the expressions of the subjects...." [88] But "a couple with
eight small puppies seated on a bench" is not necessarily the idea of Puppies, which
just as easily could be "people with dogs on their laps," "the bliss of owning
puppies," or even a sheepishly ironic thought such as "Ha ha! This might look cute
now, but boy are these puppies going to be a lot of work!"
Rather, "a couple with eight small puppies seated on a bench" is nothing more or
less than what "a young African American man wearing a white T-shirt and a large
amount of jewelry" [89] is: a description of the subject at a level of generality
sufficient to avoid implicating copyright protection for an original photograph.
Other copyright cases that have referred to the "idea" of a photograph also used
"idea" to mean a general description of the subject or subject matter. [90] The Kaplan
decision even used these terms interchangeably: "The subject matter of both
photographs is a businessperson contemplating a leap from a tall building onto the
city street below. As the photograph's central idea, rather than Kaplan's expression
of the idea, this subject matter is unprotectable in and of itself." [91] Thus another
photographer [461] may pose a couple with eight puppies on a bench, depict a
businessman contemplating a leap from an office building onto a street, or take a
picture of a black man in white athletic wear and showy jewelry. In each case,
however, there would be infringement (assuming actual copying and ownership of a
valid copyright) if the subject and rendition were sufficiently like those in the
copyrighted work.
This discussion of course prompts the question: at what point do the similarities
between two photographs become sufficiently general that there will be no
infringement even though actual copying has occurred? But this question is
precisely the same, although phrased in the opposite way, as one that must be
addressed in all infringement cases, namely whether two works are substantially
similar with respect to their protected elements. It is nonsensical to speak of one
photograph being substantially similar to another in the rendition and creation of
the subject but somehow not infringing because of a shared idea. Conversely, if the
two photographs are not substantially similar in the rendition and creation of the
subject, the distinction between idea and expression will be irrelevant because there
can be no infringement. The idea/expression distinction in photography, and
probably the other visual arts, thus achieves nothing beyond what other, clearer
copyright principles already accomplish.
I recognize that those principles sometimes may pose a problem like that Judge
Hand identified with distinguishing idea from expression in the literary context. As
Judge Hand observed, however, such line-drawing difficulties appear in all areas of
the law. The important thing is that the categories at issue be useful and relevant,
29
even if their precise boundaries are sometimes difficult to delineate. In the context
of photography, the idea/expression distinction is not useful or relevant.
D. Comparison of the Coors Billboard and the

Garnett Photograph
The next step is to determine whether a trier of fact could or must find the Coors
Billboard substantially similar to the Garnett Photograph with respect to their
protected elements.
Substantial similarity ultimately is a question of fact. "The standard test for

substantial similarity between two items is whether an òrdinary observer, unless he
set out to detect the disparities, would be disposed to overlook them, and regard
[the] aesthetic appeal as the same.'" [92] The Second Circuit sometimes has applied a
"more discerning observer" test when a work contains both protectible and
unprotectible elements. The test "requires the court to eliminate the unprotectible
elements from its consideration and to ask whether the protectible elements,
standing alone, are substantially similar." [93] The Circuit, however, is ambivalent
about this test. In several cases dealing with fabric and garment designs, the Circuit
has cautioned that:
[462] a court is not to dissect the works at issue into separate components
and compare only the copyrightable elements.... To do so would be to take
the `more discerning' test to an extreme, which would result in almost
nothing being copyrightable because original works broken down into
their composite parts would usually be little more than basic unprotectible
elements like letters, colors and symbols. [94]
Dissecting the works into separate components and comparing only the
copyrightable elements, however, appears to be exactly what the "more discerning
observer" test calls for.
The Circuit indirectly spoke to this tension in the recent case of Tufenkian
Import/Export Ventures, Inc. v. Einstein Moomjy, Inc. [95] There the trial court
purported to use the more discerning observer test but nonetheless compared the
"total-concept-and-feel" of carpet designs. [96] The Circuit observed that the more
discerning observer test is "intended to emphasize that substantial similarity must
exist between the defendant's allegedly infringing design and the protectible
elements in the plaintiff's design." [97] In making its own comparison, the Circuit did
not mention the "more discerning observer" test at all, but it did note that:
"the total-concept-and-feel locution functions as a reminder that, while the

infringement analysis must begin by dissecting the copyrighted work into its
component parts in order to clarify precisely what is not original, infringement
analysis is not simply a matter of ascertaining similarity between components
viewed in isolation.... The court, confronted with an allegedly infringing work,
must analyze the two works closely to figure out in what respects, if any, they are
similar, and then determine whether these similarities are due to protected aesthetic
expressions original to the allegedly infringed work, or whether the similarity is to
something in the original that is free for the taking." [98]
ChapterNumber:
30
In light of these precedents, the Court concludes that it is immaterial whether the
ordinary or more discerning observer test is used here because the inquiries would
be identical. The cases agree that the relevant comparison is between the protectible
elements in the Garnett Photograph and the Coors Billboard, but that those elements
are not to be viewed in isolation.
The Garnett Photograph is protectible to the extent of its originality in the rendition
and creation of the subject. Key elements of the Garnett Photograph that are in the
public domain — such as Kevin Garnett's likeness — are not replicated in the Coors
Billboard. Other elements arguably in the public domain — such as the existence of
a cloudy sky, Garnett's pose, his white T-shirt, and his specific jewelry — may not
be copyrightable in and of themselves, but their existence and arrangement in this
photograph indisputably contribute to its originality. Thus the fact that the Garnett
Photograph includes certain elements that would not be copyrightable in isolation
does not affect the nature of the comparison. The question is whether the aesthetic
appeal of the two images is the same.
The two photographs share a similar composition and angle. The lighting is similar,
and both use a cloudy sky as backdrop. [463] The subjects are wearing similar
clothing and similar jewelry arranged in a similar way. The defendants, in other
words, appear to have recreated much of the subject that Mannion had created and
then, through imitation of angle and lighting, rendered it in a similar way. The
similarities here thus relate to the Garnett Photograph's originality in the rendition
and the creation of the subject and therefore to its protected elements.
There of course are differences between the two works. The similarity analysis may
take into account some, but not all, of these. It long has been the law that "no
plagiarist can excuse the wrong by showing how much of his work he did not
pirate." [99] Thus the addition of the words "Iced Out" and a can of Coors Light beer
may not enter into the similarity analysis.
Other differences, however, are in the nature of changes rather than additions. One
image is black and white and dark, the other is in color and bright. One is the mirror
image of the other. One depicts only an unidentified man's torso, the other the top
three-fourths of Kevin Garnett's body. The jewelry is not identical. One T-shirt
appears to fit more tightly than the other. These changes may enter the analysis
because "[i]f the points of dissimilarity not only exceed the points of similarity, but
indicate that the remaining points of similarity are, within the context of plaintiff's
work, of minimal importance... then no infringement results." [100]
The parties have catalogued at length and in depth the similarities and differences
between these works. In the last analysis, a reasonable jury could find substantial
similarity either present or absent. As in Kisch v. Ammirati & Puris Inc., [101] which
presents facts as close to this case as can be imagined, the images are such that
infringement cannot be ruled out — or in — as a matter of law.
Conclusion
The defendants' motion for summary judgment dismissing the complaint (docket
item 18) is granted to the extent that the complaint seeks relief for violation of the
plaintiff's exclusive right to prepare derivative works and otherwise denied. The
plaintiff's cross motion for summary judgment is denied.
SO ORDERED.
31
---------------
Notes:
[1] Mannion Decl. ¶ 1.
[2] Id. ¶ 3.
[3] See Pl.Ex. A.
[4] See id.; Def. Ex. A; Am. Cpt. Ex. B.
[5] Published opinions in copyright cases concerning graphical works do not often
include reproductions of those works. Two exceptions are Knitwaves, Inc. v.
Lollytogs Ltd., 71 F.3d 996, 1014-17 (2d Cir.1995) and Tufenkian Import/Export
Ventures, Inc. v. Einstein Moomjy, Inc., 237 F.Supp.2d 376, 390-93
(S.D.N.Y.2002). Such reproductions are helpful in understanding the opinions, even
if the images are not ideal because the West reporters print in black and white.
[6] Def. Ex. A; Pl.Ex. A; Am. Cpt. Ex. B; Mannion Decl. ¶¶ 4-5, 7-8.
[7] Cook Decl. ¶ 2.
[8] See Mannion Decl. ¶ 12; Cook Decl. ¶ 4; Fournier v. Erickson, 202 F.Supp.2d
290, 292 (S.D.N.Y.2002).
[9] See, e.g., AMERICAN HERITAGE DICTIONARY 868 (4th ed.2000).
[10] See Cook Decl. ¶¶ 3, 5; Pl.Ex. B.
[11] See Cook Decl. ¶ 5; Def. Ex. B.
The authorization was for "[u]sage in internal corporate merchandising catalog,"

Def. Ex. B, which Mannion concedes extended to the Iced Out Comp Board. See Pl.
Opening Mem. 2; Pl. Reply Mem. 2.
[12] See Pl.Ex. B.
[13] Cook Decl. ¶ 6; Mannion Decl. ¶¶ 12, 17-19.
[14] See Def. Ex. C; Am. Cpt. Ex. C.
[18] Am. Cpt. Ex. A.
[19] Id.
[20] FED.R.CIV.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106
S.Ct. 2505, 91 L.Ed.2d 202 (1986); White v. ABCO Eng'g Corp., 221 F.3d 293, 300
(2d Cir.2000).
[21] Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d 142
(1970).
ChapterNumber:
32
[22] United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176
(1962); Hetchkop v. Woodlawn at Grassmere, Inc., 116 F.3d 28, 33 (2d Cir.1997).
[23] Hotel Employees & Restaurant Employees Union, Local 100 v. City of New
York Dep't of Parks & Recreation, 311 F.3d 534, 543 (2d Cir.2002) (quoting
Heublein, Inc. v. United States, 996 F.2d 1455, 1461 (2d Cir.1993) (internal
quotation marks omitted)); accord Make the Road by Walking, Inc. v. Turner, 378
F.3d 133, 142 (2d Cir.2004).
[24] Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995) (second
emphasis added) (quoting Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d
119, 122-23 (2d Cir.1994)); accord Tufenkian Import/Export Ventures, Inc. v.
Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir.2003) (citing Castle Rock Entm't,
Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137-38 (2d Cir.1998)); Boisson v.
Banian, Ltd., 273 F.3d 262, 267-68 (2d Cir.2001) (citing Feist Publ'ns, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) and
Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir.1998)); Fournier
v. Erickson, 202 F.Supp.2d 290, 294 (S.D.N.Y.2002).
[25] 4 NIMMER ON COPYRIGHT § 13.01[B], at 13-8 ("NIMMER").
[26] E.g., Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir.2003); Boisson,
273 F.3d at 267-68 (citing Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d
Cir.1992)).
[27] See Def. Opening Mem. 7; Def. Supp. Mem. 5.
[28] Contrary to the implication in some of the plaintiff's papers, see Am. Cpt. ¶¶
27-29; Pl. Opening Mem. 6; Pl. Supp. Mem. 6-10; see also Tr. (1/27/05) 8-11, 14-
19, 25, 30-32, 34-36 ("Tr."), this case does not require a determination whether the
defendants have violated the plaintiff's exclusive right under 17 U.S.C. § 106(2) to
prepare derivative works based upon the Garnett Photograph. The image used on
the Iced Out Comp Board may have been a derivative work based upon the Garnett
Photograph, see 17 U.S.C. § 101 (2005), but CHWA obtained the right to use the
Garnett Photograph in connection with the Iced Out Comp Board.
The question whether the Coors Billboard is a derivative work based upon the
Garnett Photograph is immaterial. "[A] work will be considered a derivative work
only if it would be considered an infringing work" absent consent. 1 NIMMER §
3.01, at 3-4. That is, the infringement inquiry logically precedes or at least controls
the derivative work inquiry.
Finally — again contrary to the plaintiff's suggestion, see Pl. Opening Mem. 9; Pl.
Reply Mem. 2-4; Tr. 21-24 — also immaterial is the question whether the Coors
Billboard may infringe Mannion's copyright if the Coors Billboard is not
substantially similar to the Garnett Photograph but is substantially similar to the
Garnett Photograph's hypothesized derivative on the Iced Out Comp Board.
Mannion has no registered copyright in the image on the Iced Out Comp Board,
which precludes a suit for infringement based upon that image. Well-Made Toy Mfg.
Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115-117 (2d Cir.2003); 17 U.S.C. § 411(a)
(2005).
The only question in this case is whether the Coors Billboard infringes the
copyright in the Garnett Photograph. The only material comparison therefore is
33
between those two images. Accordingly, the complaint is dismissed to the extent
that it asserts a violation of Mannion's exclusive right to prepare derivative works.
[29] Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282,
113 L.Ed.2d 358 (1991).
[30] Id. at 348, 111 S.Ct. 1282.
[31] Id. at 345, 111 S.Ct. 1282 (citing 1 NIMMER §§ 2.01[A], [B] (1990)).
[32] 1 NIMMER § 2.08[E][1], at 2-130.
[33] E.g., Caratzas v. Time Life, Inc., No. 92 Civ. 6346(PKL), 1992 WL 322033, at
*4 (S.D.N.Y. Oct.23, 1992) (observing, in the context of photographs of historic
sites, that "Justice Holmes made it clear almost ninety years ago that actionable
copying does not occur where a photographer takes a picture of the subject matter
depicted in a copyrighted photograph, so long as the second photographer does not
copy original aspects of the copyrighted work, such as lighting or placement of the
subject.").
[34] See Rogers v. Koons, 960 F.2d 301 (2d Cir.1992); Gross v. Seligman, 212 F.
930 (2d Cir.1914).
[35] 1 NIMMER § 2.08[E][1], at 2-129; see also Bridgeman Art Library, Ltd. v.
Corel Corp., 36 F.Supp.2d 191, 196 (S.D.N.Y.1999).
[36] See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 4 S.Ct. 279, 28
L.Ed. 349 (1884); SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301,
307-08 (S.D.N.Y.2000) (recounting the history of Burrow-Giles with reference to
THE WAKING DREAM: PHOTOGRAPHY'S FIRST CENTURY 339-40 (Met.
Museum of Art 1993)).
The photograph at issue in Burrow-Giles is reproduced in MELVILLE B. NIMMER

ET AL., CASES AND MATERIALS ON COPYRIGHT 11 (6th ed. 2000) ("CASES
AND MATERIALS ON COPYRIGHT").
[37] See Burrow-Giles Lithographic Co., 111 U.S. at 60, 4 S.Ct. 279 (originality of
Wilde portrait founded upon overall composition, including pose, clothing,
background, light, and shade, "suggesting and evoking the desired expression");
Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 116 (2d Cir.1998)
("Leibovitz is entitled to protection for such artistic elements as the particular
lighting, the resulting skin tone of the subject, and the camera angle that she
selected."); Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992) ("Elements of
originality in a photograph may include posing the subjects, lighting, angle,
selection of film and camera, evoking the desired expression, and almost any other
variant involved."); Gross v. Seligman, 212 F. 930, 931 (2d Cir.1914) ("exercise of
artistic talent" reflected in "pose, light, and shade, etc."); SHL Imaging, Inc. v.
Artisan House, Inc., 117 F.Supp.2d 301, 311 (S.D.N.Y.2000) ("What makes
plaintiff's photographs original is the totality of the precise lighting selection, angle
of the camera, lens and filter selection."); E. Am. Trio Prods., Inc. v. Tang Elec.
Corp., 97 F.Supp.2d 395, 417 (S.D.N.Y.2000) ("The necessary originality for a
photograph may be founded upon, among other things, the photographer's choice of
subject matter, angle of photograph, lighting, determination of the precise time
when the photograph is to be taken, the kind of camera, the kind of film, the kind of
lens, and the area in which the pictures are taken."); Kisch v. Ammirati & Puris
Inc., 657 F.Supp. 380, 382 (S.D.N.Y.1987) (copyrightable elements of a photograph
ChapterNumber:
34
"include such features as the photographer's selection of lighting, shading,

positioning and timing.").
Even these lists are not complete. They omit such features as the amount of the
image in focus, its graininess, and the level of contrast.
[38] Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992).
[39] SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 311
(S.D.N.Y.2000).
[40] E. Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F.Supp.2d 395, 417
(S.D.N.Y.2000) (Kaplan, J.)
[41] Feist, 499 U.S. at 359-60, 111 S.Ct. 1282.
[42] 36 F.Supp.2d 191 (S.D.N.Y.1999).
[43] Id. at 197; Bridgeman Art Library, Ltd. v. Corel Corp., 25 F.Supp.2d 421, 427
& nn. 41, 47 (S.D.N.Y.1998).
[44] HON. SIR HUGH LADDIE ET AL., THE MODERN LAW OF COPYRIGHT
AND DESIGNS (3d ed. Butterworths 2000) ("LADDIE").
[45] See Copyright, Designs and Patents Act 1988, c. 48, § 1(1)(a); 1 LADDIE §
1.8.
[46] See 1 LADDIE § 4.57, at 229.
[47] Id.
[48] See Caratzas v. Time Life, Inc., No. 92 Civ. 6346(PKL), 1992 WL 322033, at
*4 (S.D.N.Y. Oct.23, 1992); Leigh v. Warner Bros., 212 F.3d 1210, 1214 (11th
Cir.2000); see also Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249,
23 S.Ct. 298, 47 L.Ed. 460 (1903) ("It is obvious also that the plaintiff's case is not
affected by the fact, if it be one, that the pictures represent actual groups — visible
things. They seem from the testimony to have been composed from hints or
description, not from sight.... But even if they had been drawn from the life, that
fact would not deprive them of protection. The opposite proposition would mean
that a portrait by Velasquez or Whistler was common property because others might
try their hand on the same face. Others are free to copy the original. They are not
free to copy the copy."); Franklin Mint Corp. v. Nat'l Wildlife Art Exchange, Inc.,
575 F.2d 62, 65 (3d Cir.1978) (same); F.W. Woolworth Co. v. Contemporary Arts,
193 F.2d 162, 164 (1st Cir.1951) ("It is the well established rule that a copyright on
a work of art does not protect a subject, but only the treatment of a subject.");
BENJAMIN KAPLAN, AN UNHURRIED VIEW OF COPYRIGHT 56 (1967)
(observing that, with respect to "works of `fine art,'" "the manner of execution is
usually of more interest than the subject pictured.").
[49] 117 F.Supp.2d 301 (S.D.N.Y.2000).
[50] Id. at 311.
[51] 1 LADDIE § 4.57, at 229.
[52] 234 F. 963 (S.D.N.Y.1916).
[53] Id. at 964.

35
[54] A digital image of the photograph may be found at

http://www.fulcrumgallery.com/print — 38089.aspx (last visited July 20, 2005).
[55] A digital image appears at http://www.gallerym.com/work.cfm? ID=69 (last

visited July 20, 2005).
[56] See, e.g., http://www.raydoan.com/6140.asp (last visited July 20, 2005);

http://www .shusterimages.net/BearsätBrooksFalls.htm (last visited July 20, 2005).
[57] 1 LADDIE § 4.57, at 229.
[58] 960 F.2d 301 (2d Cir.1992).
[59] 212 F. 930 (2d Cir.1914).
[60] For a reproduction of the works at issue in Rogers v. Koons, see ROBERT C.
OSTERBERG & ERIC C. OSTERBERG, SUBSTANTIAL SIMILARITY IN
COPYRIGHT LAW A-24, A-25 (Practising Law Institute 2003).
[61] 960 F.2d at 304.
[62] See id. ("When Rogers went to [Jim Scanlon's] home... he decided that taking a
picture of the puppies alone [as Scanlon originally had requested] would not work
successfully, and chose instead to include [the Scanlons] holding them.... [Rogers]
selected the light, the location, the bench on which the Scanlons are seated and the
arrangement of the small dogs.").
[63] The two photographs are reproduced in CASES AND MATERIALS ON

COPYRIGHT 211.
[64] 212 F. at 930-31.
Also part of the court's analysis was the observation that there were "many close
identities of ... light[] and shade." Id.
[65] I recognize that the preceding analysis focuses on a medium — traditional

print photography — that is being supplanted in significant degree by digital
technology. These advancements may or may not demand a different analytical
framework.
[66] Mannion Decl. ¶¶ 4-7, 9.
[67] Def. Reply Mem. 10-11.
The defendants complain as well that Mannion's declaration does not mention,
among other things, the type of film, camera, and filters that he used to produce the
Garnett Photograph. Id. at 11. These omissions are irrelevant. As discussed above,
originality in the rendition is assessed with respect to the work, not the artist's
specific decisions in producing it.
[68] Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003 (2d Cir.1995) (citation
omitted).
[69] Def. Br. 6.
[70] See 4 NIMMER § 13.03[B][2][a]; 17 U.S.C. § 102(b).
[71] 4 NIMMER § 13.03[B][3].

ChapterNumber:
36
[72] 133 F.Supp.2d 317 (S.D.N.Y.2001).
[73] The Kaplan decision itself characterized the "idea" as "a businessperson
contemplating a leap from a tall building onto the city street below," see id. at 323,
but this characterization does not fully account for the disposition of the case. The
court agreed with the defendants that:
"in order to most accurately express th[is] idea ..., the photograph must be
taken from the `jumper's' own viewpoint, which would (i) naturally
include the sheer side of the building and the traffic below, and (ii)
logically restrict the visible area of the businessperson's body to his shoes
and a certain portion of his pants legs.... Thus, the angle and viewpoint
used in both photographs are essential to, commonly associated with, and
naturally flow from the photograph's unprotectable subject matter.... [T]he
most common, and most effective, viewpoint from which the convey the
idea of the `jumper' ... remains that of the `jumper' himself." Id. at 326.
The Kaplan court's observations about the angle and viewpoint "essential to" and
"commonly associated with," that "naturally flow from," "most accurately express,"
and "most effective[ly]" convey the "idea of a businessperson's contemplation of a
leap" are unpersuasive. Thus, the opinion is best read to hold that the "idea"
expressed was that of a businessperson contemplating suicide as seen from his own
vantage point because only this reading explains the outcome.
[74] Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930) (citation
omitted).
This passage is often referred to as the abstractions test, but it is no such thing.
Judge Newman has lamented this parlance and the underlying difficulty it elides:
"Judge Hand manifestly did not think of his observations as the enunciation of
anything that might be called a `test.' His disclaimer (for himself and everyone else)
of the ability to `fix the boundary' should have been sufficient caution that no `test'
capable of yielding a result was intended." Hon. Jon O. Newman, New Lyrics for an
Old Melody: The Idea/Expression Dichotomy in the Computer Age, 17 CARDOZO
ARTS & ENT. L.J. 691, 694 (1999).
[75] Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d
Cir.1960).
[76] See, e.g., Attia v. Soc'y of the N.Y. Hosp., 201 F.3d 50, 54 (2d Cir.1999)
(quoting Peter Pan Fabrics0; Williams v. Crichton, 84 F.3d 581, 587-588 (2d
Cir.1996) ("The distinction between an idea and its expression is an elusive one.");
Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 912 (2d Cir.1980) (quoting Peter
Pan Fabrics and characterizing "the idea/expression distinction" as "an imprecise
tool"); Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir.1976)
(acknowledging that "the demarcation between idea and expression may not be
susceptible to overly helpful generalization"); Herbert Rosenthal Jewelry Corp. v.
Kalpakian, 446 F.2d 738, 742 (9th Cir.1971) ("At least in close cases, one may
suspect, the classification the court selects may simply state the result reached
rather than the reason for it."); Fournier v. Erickson, 202 F.Supp.2d 290, 295
(S.D.N.Y.2002) ("the distinction between the concept and the expression of a
concept is a difficult one"); see also BENJAMIN KAPLAN, AN UNHURRIED
VIEW OF COPYRIGHT 48 (1967) ("We are in a viscid quandary once we admit
that èxpression' can consist of anything not close aboard the particular collocation
37
in its sequential order. The job of comparison is not much eased by speaking of
patterns, nor is the task of deciding when the monopoly would be too broad for the
public convenience made much neater by speaking of ideas and expression. The
polarity proposed by Hand is indeed related geneologically to the ancient
opposition of idea to form, but the ancestor is not readily recognized in the
ambiguous and elusive descendant.").
[77] "[W]hile we are as aware as any one that the line, whereever it is drawn, will
seem arbitrary, that is no excuse for not drawing it; it is a question such as courts
must answer in nearly all cases." Nichols, 45 F.2d at 122.
[78] There appears to be no Supreme Court case explicitly making the distinction
any earlier than Holmes v. Hurst, 174 U.S. 82, 19 S.Ct. 606, 43 L.Ed. 904 (1899), in
which the Court observed that the Copyright Act protects "that arrangement of
words which the author has selected to express his ideas." Id. at 86, 19 S.Ct. 606.
[79] One non-literary case in which the Supreme Court referred to the
idea/expression distinction was Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460,
98 L.Ed. 630 (1954), which is described below in footnote 80.
[80] In cases dealing with toys or products that have both functional and design
aspects, courts sometimes use "idea" to refer to a gimmick embodied in the product.
See, e.g., Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460, 98 L.Ed. 630 (1954)
(court, after introducing idea/expression dichotomy, stated that plaintiffs, who had
copyrights in statuettes of human figures used as table lamps, "may not exclude
others from using statuettes of human figures in table lamps; they may only prevent
use of copies of their statuettes as such or as incorporated in some other article.");
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971)
(bejeweled gold pin in the shape of a bee was an unprotected "idea"); Herbert
Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64, 65-66 (2d Cir.1974)
(same for turtle pins); Great Importations, Inc. v. Caffco Int'l, Inc., No. 95 Civ.
0514, 1997 WL 414111, at *4 (S.D.N.Y. July 24, 1997) (M.J.) ("To the degree the
similarities between the two sculptures herein are simply because they are both
three-piece sets of candleholders in the shape of the letters J, O and Y with baby
angels and holly, those similarities are non-copyrightable ideas....").
This case does not concern any kind of gimmick, and the Court ventures no opinion
about the applicability of the idea/expression dichotomy to any product that
embodies a gimmick, including toys or other objects that combine function and
design.
[81] See Gross v. Seligman, 212 F. 930, 931 (2d Cir.1914); Kaplan v. Stock Market
Photo Agency, Inc., 133 F.Supp.2d 317, 323 (S.D.N.Y.2001); Andersson v. Sony
Corp. of Am., No. 96 Civ. 7975(RO), 1997 WL 226310, at *2 (S.D.N.Y. May 2,
1997); Kisch v. Ammirati & Puris Inc., 657 F.Supp. 380, 382 (S.D.N.Y.1987);
Pagano v. Chas. Beseler Co., 234 F. 963, 964 (S.D.N.Y.1916).
[82] The terminology can be still more confused. Consider this sentence, in a
section of an opinion analyzing what was original, and hence protectible, in a
photograph created by a freelancer in accordance with instructions from a
defendant: "[D]efendants conclude that Fournier cannot assert copyright protection,
to the extent that he does, over the expression of businessmen in traditional dress on
their way to work, an idea which originated with McCann in any event." Fournier
v. Erickson, 202 F.Supp.2d 290, 295 (S.D.N.Y.2002) (emphases added).
ChapterNumber:
38
[83] 274 F.2d at 489.
[84] Newman, New Lyrics for an Old Melody, supra, at 697.
[85] 720 F.2d 231 (2d Cir.1983).
In that case, which considered the question whether the protagonist of the television
series The Greatest American Hero infringed the copyright in the Superman
character, Judge Newman observed that a tension between two different
propositions dealing with the significance of differences between an allegedly
infringing work and a copyrighted work "perhaps results from [those propositions']
formulation in the context of literary works and their subsequent application to
graphic and three-dimensional works." Id. at 241.
[87] Franklin Mint Corp. v. Nat'l Wildlife Art Exchange, Inc., 575 F.2d 62, 65 (3d
Cir.1978); accord Kisch v. Ammirati & Puris Inc., 657 F.Supp. 380, 383
(S.D.N.Y.1987).
[88] 960 F.2d at 308 (first emphasis added).
[89] Def. Br. 6. See supra.
[90] See SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 314
(S.D.N.Y.2000) ("defendants' instructions were so general as to fall within the
realm of unprotectible ideas. Thus, they cannot substantiate a work-for-hire
authorship defense." (emphasis added)); Andersson v. Sony Corp., No. 96 Civ.
7975(RO), 1997 WL 226310, at *3 (S.D.N.Y. May 2, 1997) ("What these two
photos may arguably share, the idea of a woman in futuristic garb becoming
fascinated with an object held in her hand, is simply not protectible." (emphasis
added)); Gentieu v. Tony Stone Images/Chicago, Inc., 255 F.Supp.2d 838, 849
(N.D.Ill.2003) ("Gentieu cannot claim a copyright in the idea of photographing
naked or diapered babies or in any elements of expression that are intrinsic to that
unprotected idea. Clearly the `poses' at issue in Gentieu's images capture the natural
movements and facial expressions of infants.... Such poses are implicit in the very
idea of a baby photograph and are not proper material for protection under
Gentieu's copyrights." (emphases added)).
[…]

1.1.6
Sec. 13 (1) Copyright Act 1957

Section 13(1)
Subject to the provisions of this section and the other provisions of this Act,
copyright shall subsist throughout India in the following classes of works, that is to
say,-
39
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) sound recording.

1.1.7
Burlington Home Shopping Pvt. Ltd v. Rajnish

Chibber

http://indiankanoon.org/doc/130087/

1.1.8
Eastern Book Company & Others v. D.B. Modak &

Another


1.1.9
CCH Canadian Ltd. v. Law Society of Upper

Canada

http://scc-csc.lexum.com/scc-csc/scc-csc/en/item/2125/index.do?
r=AAAAAQATQ2FuYWRhIEV2aWRlbmNlIEFjdAE

1.1.10
William W. Fisher, Recalibrating Originality

54 Hous. L. Rev. 437 (2016)

ChapterNumber:
40
https://www.law.uh.edu/ipil/symposium/2016/6-Fisher_Final.pdf

1.2

The Idea/Expression Distinction

1.2.1
17 U.S.C 102

Lesson Specific Section - (b)
§ 102. Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original works of
authorship fixed in any tangible medium of expression, now known or later
developed, from which they can be perceived, reproduced, or otherwise com -
municated, either directly or with the aid of a machine or device. Works of
authorship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.
(b) In no case does copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, il lustrated, or
embodied in such work.
VII, § 703, Dec. 1, 1990, 104 Stat. 5133.)

41
1.2.2
Baker v. Selden


101 U.S. 99, 25 L. Ed. 841, 1879 U.S. LEXIS 1888,
SCDB 1879-074
1879-10
101 U.S. 99 (1879)
Baker
v.
Selden
[…]
Mr. Alphonso Taft and Mr. H. P. Lloyd for the appellant.
Mr. C. W. Moulton and Mr. M. I. Southard for the appellee.
MR. JUSTICE BRADLEY delivered the opinion of the court.
Charles Selden, the testator of the complainant in this case, in the year 1859 took
the requisite steps for obtaining the copyright [100] of a book, entitled 'Selden's
Condensed Ledger, or Book-keeping Simplified,' the object of which was to exhibit
and explain a peculiar system of book-keeping. In 1860 and 1861, he took the
copyright of several other books, containing additions to and improvements upon
the said system. The bill of complaint was filed against the defendant, Baker, for an
alleged infringement of these copyrights. The latter, in his answer, denied that
Selden was the author or designer of the books, and denied the infringement
charged, and contends on the argument that the matter alleged to be infringed is not
a lawful subject of copyright.
The parties went into proofs, and the various books of the complainant, as well as
those sold and used by the defendant, were exhibited before the examiner, and
witnesses were examined on both sides. A decree was rendered for the complainant,
and the defendant appealed.
The book or series of books of which the complainant claims the copyright consists
of an introductory essay explaining the system of book-keeping referred to, to
which are annexed certain forms or banks, consisting of ruled lines, and headings,
illustrating the system and showing how it is to be used and carried out in practice.
This system effects the same results as book-keeping by double entry; but, by a
peculiar arrangement of columns and headings, presents the entire operation, of a
day, a week, or a month, on a single page, or on two pages facing each other, in an
account-book. The defendant uses a similar plan so far as results are concerned; but
makes a different arrangement of the columns, and uses different headings. If the
complainant's testator had the exclusive right to the use of the system explained in
his book, it would be difficult to contend that the defendant does not infringe it,
notwithstanding the difference in his form of arrangement; but if it be assumed that
ChapterNumber:
42
the system is open to public use, it seems to be equally difficult to contend that the
books made and sold by the defendant are a violation of the copyright of the
complainant's book considered merely as a book explanatory of the system. Where
the truths of a science or the methods of an art are the common property of the
whole world, any author has the right to express the one, or explain and use the
other, in [101] his own way. As an author, Selden explained the system in a
particular way. It may be conceded that Baker makes and uses account-books
arranged on substantially the same system; but the proof fails to show that he has
violated the copyright of Selden's book, regarding the latter merely as an
explanatory work; or that he has infringed Selden's right in any way, unless the
latter became entitled to an exclusive right in the system.
The evidence of the complainant is principally directed to the object of showing

that Baker uses the same system as that which is explained and illustrated in
Selden's books. It becomes important, therefore, to determine whether, in obtaining
the copyright of his books, he secured the exclusive right to the use of the system or
method of book-keeping which the said books are intended to illustrate and explain.
It is contended that he has secured such exclusive right, because no one can use the
system without using substantially the same ruled lines and headings which he has
appended to his books in illustration of it. In other words, it is contended that the
ruled lines and headings, given to illustrate the system, are a part of the book, and,
as such, are secured by the copyright; and that no one can make or use similar ruled
lines and headings, or ruled lines and headings made and arranged on substantially
the same system, without violating the copyright. And this is really the question to
be decided in this case. Stated in another form, the question is, whether the
exclusive property in a system of book-keeping can be claimed, under the law of
copyright, by means of a book in which that system is explained? The complainant's
bill, and the case made under it, are based on the hypothesis that it can be.
It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of
the complainant's account-book can be claimed under any special class of objects,
other than books, named in the law of copyright existing in 1859. The law then in
force was that of 1831, and specified only books, maps, charts, musical
compositions, prints, and engravings. An account-book, consisting of ruled lines
and blank columns, cannot be called by any of these names unless by that of a book.
There is no doubt that a work on the subject of book-keeping, [102] though only
explanatory of well-known systems, may be the subject of a copyright; but, then, it
is claimed only as a book. Such a book may be explanatory either of old systems, or
of an entirely new system; and, considered as a book, as the work of an author,
conveying information on the subject of book-keeping, and containing detailed
explanations of the art, it may be a very valuable acquisition to the practical
knowledge of the community. But there is a clear distinction between the book, as
such, and the art which it is intended to illustrate. The mere statement of the
proposition is so evident, that it requires hardly any argument to support it. The
same distinction may be predicated of every other art as well as that of book-
keeping. A treatise on the composition and use of medicines, be they old or new; on
the construction and use of ploughs, or watches, or churns; or on the mixture and
application of colors for painting or dyeing; or on the mode of drawing lines to
produce the effect of perspective, would be the subject of copyright; but no one
would contend that the copyright of the treatise would give the exclusive right to
the art or manufacture described therein. The copyright of the book, if not pirated
from other works, would be valid without regard to the novelty, or want of novelty,
43
of its subject-matter. The novelty of the art or thing described or explained has
nothing to do with the validity of the copyright. To give to the author of the book
an exclusive property in the art described therein, when no examination of its
novelty has ever been officially made, would be a surprise and a fraud upon the
public. That is the province of letters-patent, not of copyright. The claim to an
invention or discovery of an art or manufacture must be subjected to the
examination of the Patent Office before an exclusive right therein can be obtained;
and it can only be secured by a patent from the government.
The difference between the two things, letters-patent and copyright, may be
illustrated by reference to the subjects just enumerated. Take the case of medicines.
Certain mixtures are found to be of great value in the healing art. If the discoverer
writes and publishes a book on the subject (as regular physicians generally do), he
gains no exclusive right to the manufacture and sale of the medicine; he gives that
to the [103] public. If he desires to acquire such exclusive right, he must obtain a
patent for the mixture as a new art, manufacture, or composition of matter. He may
copyright his book, if he pleases; but that only secures to him the exclusive right of
printing and publishing his book. So of all other inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and

illustrations it may contain, gives no exclusive right to the modes of drawing
described, though they may never have been known or used before. By publishing
the book, without getting a patent for the art, the latter is given to the public. The
fact that the art described in the book by illustrations of lines and figures which are
reproduced in practice in the application of the art, makes no difference. Those
illustrations are the mere language employed by the author to convey his ideas more
clearly. Had he used words of description instead of diagrams (which merely stand
in the place of words), there could not be the slightest doubt that others, applying
the art to practical use, might lawfully draw the lines and diagrams which were in
the author's mind, and which he thus described by words in his book.
The copyright of a work on mathematical science cannot give to the author an

exclusive right to the methods of operation which he propounds, or to the diagrams
which he employs to explain them, so as to prevent an engineer from using them
whenever occasion requires. The very object of publishing a book on science or the
useful arts is to communicate to the world the useful knowledge which it contains.
But this object would be frustrated if the knowledge could not be used without
incurring the guilt of piracy of the book. And where the art it teaches cannot be
used without employing the methods and diagrams used to illustrate the book, or
such as are similar to them, such methods and diagrams are to be considered as
necessary incidents to the art, and given therewith to the public; not given for the
purpose of publication in other works explanatory of the art, but for the purpose of
practical application.
Of course, these observations are not intended to apply to ornamental designs, or

pictorial illustrations addressed to the taste. Of these it may be said, that their form
is their essence, [104] and their object, the production of pleasure in their
contemplation. This is their final end. They are as much the product of genius and
the result of composition, as are the lines of the poet or the historian's periods. On
the other hand, the teachings of science and the rules and methods of useful art have
their final end in application and use; and this application and use are what the
public derive from the publication of a book which teaches them. But as embodied
and taught in a literary composition or book, their essence consists only in their
statement. This alone is what is secured by the copyright. The use by another of the
ChapterNumber:
44
same methods of statement, whether in words or illustrations, in a book published

for teaching the art, would undoubtedly be an infringement of the copyright.
Recurring to the case before us, we observe that Charles Selden, by his books,
explained and described a peculiar system of book-keeping, and illustrated his
method by means of ruled lines and blank columns, with proper headings on a page,
or on successive pages. Now, whilst no one has a right to print or publish his book,
or any material part thereof, as a book intended to convey instruction in the art, any
person may practise and use the art itself which he has described and illustrated
therein. The use of the art is a totally different thing from a publication of the book
explaining it. The copyright of a book on book-keeping cannot secure the exclusive
right to make, sell, and use account-books prepared upon the plan set forth in such
book. Whether the art might or might not have been patented, is a question which is
not before us. It was not patented, and is open and free to the use of the public.
And, of course, in using the art, the ruled lines and headings of accounts must
necessarily be used as incident to it.
The plausibility of the claim put forward by the complainant in this case arises from
a confusion of ideas produced by the peculiar nature of the art described in the
books which have been made the subject of copyright. In describing the art, the
illustrations and diagrams employed happen to correspond more closely than usual
with the actual work performed by the operator who uses the art. Those illustrations
and diagrams consist of ruled lines and headings of accounts; and [105] it is similar
ruled lines and headings of accounts which, in the application of the art, the book-
keeper makes with his pen, or the stationer with his press; whilst in most other
cases the diagrams and illustrations can only be represented in concrete forms of
wood, metal, stone, or some other physical embodiment. But the principle is the
same in all. The description of the art in a book, though entitled to the benefit of
copyright, lays no foundation for an exclusive claim to the art itself. The object of
the one is explanation; the object of the other is use. The former may be secured by
copyright. The latter can only be secured, if it can be secured at all, by letters-
patent.
[…]
The conclusion to which we have come is, that blank account-books are not the
subject of copyright; and that the mere copyright of Selden's book did not confer
upon him the exclusive right to make and use account-books, ruled and arranged as
designated by him and described and illustrated in said book.
The decree of the Circuit Court must be reversed, and the cause remanded with
instructions to dismiss the complainant's bill; and it is
So ordered

1.2.3
NICHOLS v. UNIVERSAL

45
United States Court of Appeals for the Second Circuit

45 F.2d 119
No. 4
1930-11-10
45 F.2d 119 (1930)
NICHOLS
v.
UNIVERSAL PICTURES CORPORATION et
al.
No. 4.
Circuit Court of Appeals, Second Circuit.
November 10, 1930.
[…]
Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
L. HAND, Circuit Judge.
The plaintiff is the author of a play, "Abie's Irish Rose," which it may be assumed
was properly copyrighted under section five, subdivision (d), of the Copyright Act,
17 USCA § 5(d). The defendant produced publicly a motion picture play, "The
Cohens and The Kellys," which the plaintiff alleges was taken from it. As we think
the defendant's play too unlike the plaintiff's to be an infringement, we may assume,
arguendo, that in some details the defendant used the plaintiff's play, as will
subsequently appear, though we do not so decide. It therefore becomes necessary to
give an outline of the two plays.
"Abie's Irish Rose" presents a Jewish family living in prosperous circumstances in

New York. The father, a widower, is in business as a merchant, in which his son
and only child helps him. The boy has philandered with young women, who to his
father's great disgust have always been Gentiles, for he is obsessed with a passion
that his daughter-in-law shall be an orthodox Jewess. When the play opens the son,
who has been courting a young Irish Catholic girl, has already married her secretly
before a Protestant minister, and is concerned to soften the blow for his father, by
securing a favorable impression of his bride, while concealing her faith and race.
To accomplish this he introduces her to his father at his home as a Jewess, and lets
it appear that he is interested in her, though he conceals the marriage. The girl
somewhat reluctantly falls in with the plan; the father takes the bait, becomes
infatuated with the girl, concludes that they must marry, and assumes that of course
they will, if he so decides. He calls in a rabbi, and prepares for the wedding
according to the Jewish rite.
Meanwhile the girl's father, also a widower, who lives in California, and is as
intense in his own religious antagonism as the Jew, has been called to New York,
supposing that his daughter is to marry an Irishman and a Catholic. Accompanied
by a priest, he arrives at the house at the moment when the marriage is being
ChapterNumber:
46
celebrated, but too late to prevent it, and the two fathers, each infuriated by the
proposed union of his child to a heretic, fall into unseemly and grotesque antics.
The priest and the rabbi become friendly, exchange trite sentiments about religion,
and agree that the match is good. Apparently out of abundant caution, the priest
celebrates the marriage for a third time, while the girl's father is inveigled away.
The second act closes with each father, still outraged, seeking to find some way by
which the union, thus trebly insured, may be dissolved.
The last act takes place about a year later, the young couple having meanwhile been
abjured by each father, and left to their own resources. They have had twins, a boy
and a girl, but their fathers know no more than that a child has been born. At
Christmas each, led by his craving to see his grandchild, goes separately to the
young folks' home, where they encounter each other, each laden with gifts, one for
a boy, the other for a girl. After some slapstick comedy, depending upon the
insistence of each that he is right about the sex of the grandchild, they become
reconciled when they learn the truth, and that each child is to bear the given name
of a grandparent. The curtain falls as the fathers are exchanging amenities, and the
Jew giving evidence of an abatement in the strictness of his orthodoxy.
"The Cohens and The Kellys" presents two families, Jewish and Irish, living side by
side in the poorer quarters of New York in a state of perpetual enmity. The wives in
both cases are still living, and share in the mutual animosity, as do two small sons,
and even the respective dogs. The Jews have a daughter, the Irish a son; the Jewish
father is in the clothing business; the Irishman is a policeman. The children are in
love with each other, and secretly marry, apparently after the play opens. The Jew,
being in great financial straits, learns from a lawyer that he has fallen heir to a large
fortune from a great-aunt, and moves into a great house, fitted luxuriously. Here he
and his family live in vulgar ostentation, and here the Irish boy seeks out his Jewish
bride, and is chased away by the angry father. The Jew then abuses the Irishman
over the telephone, and both become hysterically excited. The extremity of his
feelings makes the Jew sick, so that he must go to Florida for a rest, just before
which the daughter discloses her marriage to her mother.
On his return the Jew finds that his daughter has borne a child; at first he suspects
the lawyer, but eventually learns the truth and is overcome with anger at such a low
alliance. Meanwhile, the Irish family who have been forbidden to see the
grandchild, go to the Jew's house, and after a violent scene between the two fathers
in which the Jew disowns his daughter, who decides to go back with her husband,
the Irishman takes her back with her baby to his own poor lodgings. [121] The
lawyer, who had hoped to marry the Jew's daughter, seeing his plan foiled, tells the
Jew that his fortune really belongs to the Irishman, who was also related to the dead
woman, but offers to conceal his knowledge, if the Jew will share the loot. This the
Jew repudiates, and, leaving the astonished lawyer, walks through the rain to his
enemy's house to surrender the property. He arrives in great dejection, tells the
truth, and abjectly turns to leave. A reconciliation ensues, the Irishman agreeing to
share with him equally. The Jew shows some interest in his grandchild, though this
is at most a minor motive in the reconciliation, and the curtain falls while the two
are in their cups, the Jew insisting that in the firm name for the business, which
they are to carry on jointly, his name shall stand first.
It is of course essential to any protection of literary property, whether at common-

law or under the statute, that the right cannot be limited literally to the text, else a
plagiarist would escape by immaterial variations. That has never been the law, but,
as soon as literal appropriation ceases to be the test, the whole matter is necessarily
47
at large, so that, as was recently well said by a distinguished judge, the decisions
cannot help much in a new case. Fendler v. Morosco, 253 N. Y. 281, 292, 171 N. E.
56. When plays are concerned, the plagiarist may excise a separate scene [Daly v.
Webster, 56 F. 483 (C. C. A. 2); Chappell v. Fields, 210 F. 864 (C. C. A. 2);
Chatterton v. Cave, L. R. 3 App. Cas. 483]; or he may appropriate part of the
dialogue (Warne v. Seebohm, L. R. 39 Ch. D. 73). Then the question is whether the
part so taken is "substantial," and therefore not a "fair use" of the copyrighted work;
it is the same question as arises in the case of any other copyrighted work. Marks v.
Feist, 290 F. 959 (C. C. A. 2); Emerson v. Davies, Fed. Cas. No. 4436, 3 Story,
768, 795-797. But when the plagiarist does not take out a block in situ, but an
abstract of the whole, decision is more troublesome. 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
consist 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.
Holmes v. Hurst, 174 U. S. 82, 86, 19 S. Ct. 606, 43 L. Ed. 904; Guthrie v. Curlett,
36 F.(2d) 694 (C. C. A. 2). Nobody has ever been able to fix that boundary, and
nobody ever can. In some cases the question has been treated as though it were
analogous to lifting a portion out of the copyrighted work (Rees v. Melville,
MacGillivray's Copyright Cases [1911-1916], 168); but the analogy is not a good
one, because, though the skeleton is a part of the body, it pervades and supports the
whole. In such cases we are rather concerned with the line between expression and
what is expressed. As respects plays, the controversy chiefly centers upon the
characters and sequence of incident, these being the substance.
We did not in Dymow v. Bolton, 11 F. (2d) 690, hold that a plagiarist was never
liable for stealing a plot; that would have been flatly against our rulings in Dam v.
Kirk La Shelle Co., 175 F. 902, 41 L. R. A. (N. S.) 1002, 20 Ann. Cas. 1173, and
Stodart v. Mutual Film Co., 249 F. 513, affirming my decision in (D. C.) 249 F.
507; neither of which we meant to overrule. We found the plot of the second play
was too different to infringe, because the most detailed pattern, common to both,
eliminated so much from each that its content went into the public domain; and for
this reason we said, "this mere subsection of a plot was not susceptible of
copyright." But we do not doubt that two plays may correspond in plot closely
enough for infringement. How far that correspondence must go is another matter.
Nor need we hold that the same may not be true as to the characters, quite
independently of the "plot" proper, though, as far as we know, such a case has never
arisen. 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 his mistress. These would be no more than Shakespeare's "ideas" in the
play, as little capable of monopoly as Einstein's Doctrine of Relativity, or Darwin's
theory of the Origin of Species. It follows that the less developed the characters, the
less they can be copyrighted; that is the penalty an author must bear for marking
them too indistinctly.
In the two plays at bar we think both as to incident and character, the defendant
took no more — assuming that it took anything at all — than the law allowed. The
stories are quite different. One is of a religious zealot [122] who insists upon his
child's marrying no one outside his faith; opposed by another who is in this respect
ChapterNumber:
48
just like him, and is his foil. Their difference in race is merely an obbligato to the
main theme, religion. They sink their differences through grandparental pride and
affection. In the other, zealotry is wholly absent; religion does not even appear. It is
true that the parents are hostile to each other in part because they differ in race; but
the marriage of their son to a Jew does not apparently offend the Irish family at all,
and it exacerbates the existing animosity of the Jew, principally because he has
become rich, when he learns it. They are reconciled through the honesty of the Jew
and the generosity of the Irishman; the grandchild has nothing whatever to do with
it. The only matter common to the two is a quarrel between a Jewish and an Irish
father, the marriage of their children, the birth of grandchildren and a
reconciliation.
If the defendant took so much from the plaintiff, it may well have been because her
amazing success seemed to prove that this was a subject of enduring popularity.
Even so, granting that the plaintiff's play was wholly original, and assuming that
novelty is not essential to a copyright, there is no monopoly in such a background.
Though the plaintiff discovered the vein, she could not keep it to herself; so
defined, the theme was too generalized an abstraction from what she wrote. It was
only a part of her "ideas."
Nor does she fare better as to her characters. It is indeed scarcely credible that she
should not have been aware of those stock figures, the low comedy Jew and
Irishman. The defendant has not taken from her more than their prototypes have
contained for many decades. If so, obviously so to generalize her copyright, would
allow her to cover what was not original with her. But we need not hold this as
matter of fact, much as we might be justified. Even though we take it that she
devised her figures out of her brain de novo, still the defendant was within its
rights.
There are but four characters common to both plays, the lovers and the fathers. The
lovers are so faintly indicated as to be no more than stage properties. They are
loving and fertile; that is really all that can be said of them, and anyone else is quite
within his rights if he puts loving and fertile lovers in a play of his own, wherever
he gets the cue. The plaintiff's Jew is quite unlike the defendant's. His obsession is
his religion, on which depends such racial animosity as he has. He is affectionate,
warm and patriarchal. None of these fit the defendant's Jew, who shows affection
for his daughter only once, and who has none but the most superficial interest in his
grandchild. He is tricky, ostentatious and vulgar, only by misfortune redeemed into
honesty. Both are grotesque, extravagant and quarrelsome; both are fond of display;
but these common qualities make up only a small part of their simple pictures, no
more than any one might lift if he chose. The Irish fathers are even more unlike; the
plaintiff's a mere symbol for religious fanaticism and patriarchal pride, scarcely a
character at all. Neither quality appears in the defendant's, for while he goes to get
his grandchild, it is rather out of a truculent determination not to be forbidden, than
from pride in his progeny. For the rest he is only a grotesque hobbledehoy, used for
low comedy of the most conventional sort, which any one might borrow, if he
chanced not to know the exemplar.
The defendant argues that the case is controlled by my decision in Fisher v.

Dillingham (D. C.) 298 F. 145. Neither my brothers nor I wish to throw doubt upon
the doctrine of that case, but it is not applicable here. We assume that the plaintiff's
play is altogether original, even to an extent that in fact it is hard to believe. We
assume further that, so far as it has been anticipated by earlier plays of which she
knew nothing, that fact is immaterial. Still, as we have already said, her copyright
49
did not cover everything that might be drawn from her play; its content went to
some extent into the public domain. We have to decide how much, and while we are
as aware as any one that the line, whereever it is drawn, will seem arbitrary, that is
no excuse for not drawing it; it is a question such as courts must answer in nearly
all cases. Whatever may be the difficulties a priori, we have no question on which
side of the line this case falls. A comedy based upon conflicts between Irish and
Jews, into which the marriage of their children enters, is no more susceptible of
copyright than the outline of Romeo and Juliet.
The plaintiff has prepared an elaborate analysis of the two plays, showing a
"quadrangle" of the common characters, in which each is represented by the
emotions which he discovers. She presents the resulting parallelism as proof of
infringement, but the adjectives employed are so general as to be quite useless.
Take for example the attribute of "love" ascribed to both Jews. The plaintiff has
depicted her father as deeply attached [123] to his son, who is his hope and joy; not
so, the defendant, whose father's conduct is throughout not actuated by any
affection for his daughter, and who is merely once overcome for the moment by her
distress when he has violently dismissed her lover. "Anger" covers emotions
aroused by quite different occasions in each case; so do "anxiety," "despondency"
and "disgust." It is unnecessary to go through the catalogue for emotions are too
much colored by their causes to be a test when used so broadly. This is not the
proper approach to a solution; it must be more ingenuous, more like that of a
spectator, who would rely upon the complex of his impressions of each character.
We cannot approve the length of the record, which was due chiefly to the use of
expert witnesses. Argument is argument whether in the box or at the bar, and its
proper place is the last. The testimony of an expert upon such issues, especially his
cross-examination, greatly extends the trial and contributes nothing which cannot
be better heard after the evidence is all submitted. It ought not to be allowed at all;
and while its admission is not a ground for reversal, it cumbers the case and tends
to confusion, for the more the court is led into the intricacies of dramatic
craftsmanship, the less likely it is to stand upon the firmer, if more naïve, ground of
its considered impressions upon its own perusal. We hope that in this class of cases
such evidence may in the future be entirely excluded, and the case confined to the
actual issues; that is, whether the copyrighted work was original, and whether the
defendant copied it, so far as the supposed infringement is identical.
The defendant, "the prevailing party," was entitled to a reasonable attorney's fee
(section 40 of the Copyright Act [17 USCA § 40]).
Decree affirmed.

1.2.4
Alexander v. Haley

ChapterNumber:
50

of New York
460 F. Supp. 40
Nos. 77 Civ. 1907 (M.E.F.), 77 Civ. 1908 (M.E.F.)
1978-09-20
460 F. Supp. 40
Margaret Walker ALEXANDER, Plaintiff,

v.
Alex HALEY, Doubleday & Company, Inc.,
and Doubleday Publishing Company,
Defendants.
[…]
United States District Court, S. D. New York.
September 20, 1978.
As Amended September 21, 1978.
[…]
FRANKEL, District Judge.
[…]
I.
The plaintiff, Margaret Walker Alexander, initiated twin copyright infringement
and unfair competition actions against Alex Haley and Doubleday Publishing
Company and Doubleday & Co., Inc., his publishers, based upon alleged
similarities between the book Roots, written by Haley, and the novel Jubilee and the
pamphlet How I Wrote Jubilee ("HIWJ"), both written by the plaintiff. Jubilee was
copyrighted in 1966, and HIWJ in 1972. The copyright for Roots was registered in
1976, although a portion of the material which later became Roots appeared under
copyright in The Reader's Digest in 1974.
Both Roots and Jubilee are amalgams of fact and fiction derived from the sombre
history of black slavery in the United States. Each purports to be at least loosely
based on the lives of the author's own forbears. Differences in scope are, however,
more striking than the similarities. Jubilee is a historical novel which recounts the
life of Vyry (described as the author's great grandmother) starting around 1835,
from her childhood and early adulthood in slavery, through the Civil War years and
into Reconstruction. The novel is divided roughly into thirds, marked out by the
beginning and the end of the Civil War. HIWJ, as its title suggests, is an account of
the author's career, including her awakening interest in her family's and people's
past, her many years of research, her struggle to complete the manuscript amidst
other obligations, and an explanation of the mixture of fact and fiction in Jubilee.
51
Roots covers a much broader canvas, commencing its narrative in Africa and
continuing through multiple generations of a single family, described as the
ancestors of the author. The story commences in about 1750 and continues through
the birth and life of the author. Well over a fifth of the book is set in Africa, and
approximately three-quarters covers a period antedating the time of Jubilee. In the
closing pages the author relates the story of his own life, the evolution of his
concern with his family's past, his developing interest in writing, his research and
the completion of his manuscript. Particular emphasis is placed upon an account of
the trail the author says was followed to the unearthing of the African roots of his
family tree.
II.
The case came before the court initially on defendants' motions for summary [43]
judgment. In order to succeed in her claims of infringement plaintiff has the burden
of proving two elements: actual copying of her works by the defendant and
substantial similarity between the accused work and the original. Arnstein v. Porter,
154 F.2d 464, 468 (2d Cir. 1946)[ … ]. Actual copying may be established by direct
proof or by proof of access plus a demonstration of similarities or other factors
circumstantially evidencing copying..
IV.
In order to demonstrate the alleged similarity between Roots on the one hand and
Jubilee and HIWJ on the other, plaintiff submitted several sets of affidavits and
answers to interrogatories setting forth passages from Roots along with passages
from the plaintiff's works, with certain portions underscored to highlight the
asserted similarities. Plaintiff also submitted an affidavit commenting seriatim on
the alleged similarities.
After consideration of each of the numerous similarities suggested in the plaintiff's

submissions, the court concludes that none supports the claim of infringement. By
this the court means both that (1) no support is given to the claim of copying by
such similarity as is shown, [ … ] and (2) that the claimed similarities do not, as a
matter of law, constitute actionable substantial similarity between the works. [4]
Substantial similarity is ordinarily a question of fact, not subject to resolution on a

motion for summary judgment. Arnstein v. Porter, supra, 154 F.2d at 469. In the
instant case, however, defendants' argument is that such similarities as are claimed
by the plaintiff are irrelevant because they relate solely to aspects of the plaintiff's
works which are not protectable by copyright. The law seems clear that summary
judgment may be granted when such circumstances are demonstrated. [ … ]
The court agrees with defendants; each of the similarities asserted by the plaintiff is
in one or more of several categories of attributes of written work which are not
subject to the protection of the copyright laws.
Many of the claimed similarities are based on matters of historical or contemporary

[45] fact. [5] No claim of copyright protection can arise from the fact that plaintiff
ChapterNumber:
52
has written about such historical and factual items, even if we were to assume that
Haley was alerted to the facts in question by reading Jubilee. [ … ]
Another major category of items consists of material traceable to common sources,

the public domain, or folk custom. Thus, a number of the claimed infringements are
embodiments of the cultural history of black Americans, or of both black and white
Americans playing out the cruel tragedy of white-imposed slavery. [6] Where
common sources exist for the alleged similarities, or the material that is similar is
otherwise not original with the plaintiff, there is no infringement. [ … ]This group
of asserted infringements can no more be the subject of copyright protection than
the use of a date or the name of a president or a more conventional piece of
historical information.
A third species of the alleged similarities constitutes what have been called scenes a
faire. Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir. 1976).
These are incidents, characters or settings which are as a practical matter
indispensable, or at least standard, in the treatment of a given topic. Attempted
escapes, flights through the woods pursued by baying dogs, the sorrowful or happy
singing of slaves, the atrocity of the buying and selling of human beings, and other
miseries are all found in stories at least as old as Mrs. Stowe's. This is not, and
could not be, an offense to any author. Nobody writes books of purely original
content. In any event, the plaintiff misconceives the protections of the copyright
law in her listing of infringements by including such scenes a faire. [7] [ … ]
Yet another group of alleged infringements is best described as cliched language,

metaphors and the very words of which the language is constructed. Words and
metaphors are not subject to copyright protection; nor are phrases and expressions
conveying an idea that can only be, or is typically, expressed in a limited number of
stereotyped fashions. [ … ] Nor is the later use of stock ideas copyright
infringement.. Plaintiff collides with these principles over and over again as she
extracts widely scattered passages from her book and pamphlet, and juxtaposes
them against similarly scattered portions of Haley's Roots, only to demonstrate the
use by both authors of obvious terms to describe expectable scenes. [8]
Other alleged infringements display no similarity at all in terms of expression or

language, but show at most some similarity of theme or setting. [9] These items, the
skeleton of a creative work rather than the flesh, are not protected by the copyright
laws. [ … ]It is only the means of expressing these elements that is protected by the
copyright laws...
Finally, some of the allegations of similarity are seen upon inspecting the books to
be totally and palpably devoid of any factual basis. [ … ]
Every one of the alleged similarities between the plaintiff's two works and the
defendants' book falls into at least one of the aforementioned categories of non-
actionable material. Many fall into more than one. The review of the alleged
similarities points unmistakably to the conclusion that no actionable similarities
exist between the works.
[…]
The defendants' motions for summary judgment are granted. The complaints are
dismissed.
53
It is so ordered.
--------
Notes:
[1] Looking at things from the opposite direction, it is commonplace that similarity
may be probative of copying. Arnstein v. Porter, supra, 154 F.2d at 468.
[2] In objecting to the Magistrate's Report, counsel for plaintiff have deviated more
often than they should from fundamental rules of evidence and procedure. Their
objections arrived late, and should perhaps be ruled out of consideration altogether,
as defendants suggest. Though that drastic course is not followed, other blemishes
must be noted and improper portions disregarded. Having had ample opportunity to
be at the evidentiary hearing, plaintiff did not testify there. It was indicated that she
might appear on rebuttal or be available to defendants if they wanted her. It was
never intimated that she wished to testify and could not, or that she might desire an
adjournment for such a purpose. Now, with the hearing long closed, she submits an
affidavit on the issue of access, observing toward the end: "Because of my
husband's illness, I was unable to attend the Evidentiary hearing in this cause." This
won't do. She could have been deposed. She could have sought other relief. Her
affidavit will be given no weight. If it were weighed, it might have negative impact
anyhow. One startling aspect is its verbatim quotation of what is sworn to have
been a letter from defendant Haley. No copy is attached.
In a comparably informal fashion, plaintiff's counsel include in their objections an

alleged quotation of the defendant Haley from Playboy Magazine. But this was
offered at the hearing, after Mr. Haley had testified, and objected to. The offer was
withdrawn.
Then, the same set of objections appends a purported analysis of another lawsuit in
The Village Voice. This was not offered at the hearing. It certainly has no place here
now.
[3] Thus further failing to support the element defendants were willing to concede
for this motion.
[4] So that, in the strict logic defendants pursued from the outset, plaintiff would
lose even if she had proved copying. The logic was not unsound. But if the court
has proceeded properly, this may be another case of the kind in which logic alone is
not enough.
[5] This category covers a large number of what plaintiff cites as assertedly
infringing passages. For instance, the passages from page 32 of Jubilee and page
521 of Roots cited by the plaintiff share only a reference to New Orleans and the
women of mixed race found there. Another example reveals only two treatments of
the theme of the westward movement and settlement in the United States (Jubilee,
p. 43; Roots, pp. 287, 595.) Yet another is based on the historical fact of slave
uprisings and the repressive measures taken to combat them. (Jubilee, pp. 51, 83;
Roots, pp. 279, 282.) The record is replete with other examples which the court
need not discuss. See, e. g., Jubilee, p. 91, Roots, p. 277 (Quakers as abolitionists);
Jubilee, p. 146, Roots, p. 282 (process of manumission); Jubilee, p. 184, Roots, p.
626; Jubilee, p. 19, Roots, p. 373; Jubilee, p. 47, Roots, p. 429; Jubilee, p. 82,
Roots, p. 387; Jubilee, p. 192, Roots, p. 572; HIWJ, p. 18, Roots, p. 671. This
listing, like those that follow, is not intended to be exhaustive. With respect to each
ChapterNumber:
54
category, the court has made the judgment reported — that the instances embraced
are non-actionable because they are thus classifiable under at least one such
heading.
[6] One example is the references to laying out the body of a deceased on a
"cooling board." (Jubilee, pp. 68-69; Roots, p. 355.) Uncontroverted affidavits
show that this is an authentic piece of folk custom. See, also, Jubilee, p. 110, Roots,
p. 518 (folk herbal medicines); Jubilee, p. 119, Roots, pp. 562-63 (cockfighting);
Jubilee, p. 143, Roots, p. 310 ("jumping the broom" as a folk rite of marriage);
Jubilee, p. 285, Roots, p. 644; Jubilee, p. 20, Roots, p. 364; Jubilee, p. 341, Roots,
p. 365; Jubilee, p. 339, Roots, p. 247; Jubilee, p. 319, Roots, p. 212; Jubilee, p. 484,
Roots, p. 327; Jubilee, p. 39, Roots, p. 383; Jubilee, p. 98, Roots, p. 396; Jubilee, p.
36, Roots, pp. 236, 438; Jubilee, p. 138, Roots, p. 439; Jubilee p. 100, Roots, p.
480; Jubilee, pp. 67, 83, 100, Roots, p. 418.
[7] Examples include scenes portraying sex between male slaveowners and female
slaves and the resentment of the female slave owners (Jubilee, p. 44, Roots, p. 436);
the sale of a slave child away from her family and the attendant agonies ( Jubilee,
pp. 84-85, Roots, pp. 424-26); the horror of punitive mutilation (Jubilee, p. 114,
Roots, p. 224); and slave owners complaining about the high price of slaves
(Jubilee, p. 113, Roots, p. 397). See, also, Jubilee, p. 145, Roots, p. 403; Jubilee, p.
169, Roots, p. 232; Jubilee, pp. 172-73, Roots, p. 234; Jubilee, pp. 278-280, Roots,
p. 644; Jubilee, p. 328, Roots, p. 649; Jubilee, p. 461, Roots, p. 361; HIWJ, p. 12,
Roots, p. 664.
[8] Among the many examples are: "poor white trash" (Jubilee, p. 60, Roots, p.
294), and the fluffiness of cotton (Jubilee, p. 36, Roots, pp. 205, 207, 236). See,
also, Jubilee, pp. 25-26, Roots, pp. 204, 221; Jubilee, p. 149, Roots, p. 435; Jubilee,
p. 164, Roots, p. 243; Jubilee, p. 199, Roots, p. 628; Jubilee, p. 172, Roots, p. 209;
HIWJ, pp. 15-16, Roots, pp. 673-75; Jubilee, p. 22, Roots, pp. 677, 679; HIWJ, p.
24, Roots, p. 686.
[9] Examples of such alleged similarities include descriptions of puberty ( Jubilee,

pp. 53-54, Roots, pp. 412-13); hypocrisy in sermons delivered to slaves (Jubilee, p.
123, Roots, p. 451); and sexuality among the young (Jubilee, p. 136, Roots, p. 444).
See, also, Jubilee, pp. 71, 80, Roots, pp. 449-453; Jubilee, p. 104, Roots, p. 594;
Jubilee, p. 137, Roots, p. 265; Jubilee, p. 290, Roots, p. 219; Jubilee, p. 93, Roots,
p. 210; HIWJ, p. 12, Roots, p. 668; HIWJ, p. 19, Roots, p. 682.
[10] A good example is found in the allegedly similar passages at page 48 of

Jubilee and pages 226-227 of Roots. Plaintiff claims that both concern secret
organized religious meetings, but the scene in Roots does not portray an organized
meeting, nor is the gathering secret or religious in nature. See, also, Jubilee, p. 179,
Roots, p. 358; Jubilee, p. 83, Roots, p. 290; Jubilee, pp. 460, 496, 440, Roots, p.
327; Jubilee, pp. 129-130, Roots, p. 358.

1.2.5
R.G. Anand v. Delux Films

55

57
2
Week 2

ChapterNumber:
58

2.1

Labor v. Personhood

2.1.1
Summary of Theoretical Approaches

https://ipxcourses.org/wp-content/uploads/2023/01/Summary-of-
Theoretical-Approaches.pdf

2.1.2
John Locke, The Second Treatise of Government

(1689), Chapter 5

http://ccb.ff6.mwp.accessdomain.com/C/Locke_chpt5.pdf

2.1.3
Robert Nozick, Anarchy, State, and Utopia (1974),

pp. 174-182

http://ccb.ff6.mwp.accessdomain.com/C/Nozick_ASU_1974.pdf

2.1.4
Turner Entertainment Co. v. Huston, Court of

Appeal of Versailles, France, December 19, 1994

59
http://ccb.ff6.mwp.accessdomain.com/C/Turner.pdf

2.2

Nonfiction

2.2.1
A. A. Hoehling v. Universal City Studios, Inc.

618 F.2d 972
[…]
A. A. HOEHLING, Plaintiff-Appellant,
v.
UNIVERSAL CITY STUDIOS, INC., and
Michael MacDonald Mooney,
Defendants-Appellees.
[…]
United States Court of Appeals, Second Circuit.
Argued Feb. 27, 1980.

Decided March 25, 1980.
[618 F.2d 974] James C. Eastman, Washington, D. C., for plaintiff-appellant.
Coudert Bros., New York City (Eugene L. Girden, New York City, of counsel), for
defendant-appellee Universal City Studios, Inc.
Peter A. Flynn, and Myron M. Cherry, Chicago, Ill. (Cherry, Flynn & Kanter,
Chicago, Ill., Hervey M. Johnson, White Plains, N. Y.), and James J. McEnroe,
New York City (Watson, Leavenworth, Kelton & Taggert, New York City), for
defendant-appellee Michael M. Mooney.
Before KAUFMAN, Chief Judge, TIMBERS, Circuit Judge, and WERKER, District
Judge. [ … ]
IRVING R. KAUFMAN, Chief Judge:

ChapterNumber:
60
A grant of copyright in a published work secures for its author a limited monopoly
over the expression it contains. The copyright provides a financial incentive to
those who would add to the corpus of existing knowledge by creating original
works. Nevertheless, the protection afforded the copyright holder has never
extended to history, be it documented fact or explanatory hypothesis. The rationale
for this doctrine is that the cause of knowledge is best served when history is the
common property of all, and each generation remains free to draw upon the
discoveries and insights of the past. Accordingly, the scope of copyright in
historical accounts is narrow indeed, embracing no more than the author's original
expression of particular facts and theories already in the public domain. As the case
before us illustrates, absent wholesale usurpation of another's expression, claims of
copyright infringement where works of history are at issue are rarely successful.
I.
This litigation arises from three separate accounts of the triumphant introduction,
last voyage, and tragic destruction of the Hindenburg, the colossal dirigible
constructed in Germany during Hitler's reign. The zeppelin, the last and most
sophisticated in a fleet of luxury airships, which punctually floated its wealthy
passengers from the Third Reich to the United States, exploded into flames and
disintegrated in 35 seconds as it hovered above the Lakehurst, New Jersey Naval
Air Station at 7:25 p. m. on May 6, 1937. Thirty-six passengers and [618 F.2d 975]
crew were killed but, fortunately, 52 persons survived. Official investigations
conducted by both American and German authorities could ascertain no definitive
cause of the disaster, but both suggested the plausibility of static electricity or St.
Elmo's Fire, which could have ignited the highly explosive hydrogen that filled the
airship. Throughout, the investigators refused to rule out the possibility of sabotage.
The destruction of the Hindenburg marked the concluding chapter in the chronicle
of airship passenger service, for after the tragedy at Lakehurst, the Nazi regime
permanently grounded the Graf Zeppelin I and discontinued its plan to construct an
even larger dirigible, the Graf Zeppelin II.
The final pages of the airship's story marked the beginning of a series of
journalistic, historical, and literary accounts devoted to the Hindenburg and its fate.
Indeed, weeks of testimony by a plethora of witnesses before the official
investigative panels provided fertile source material for would-be authors.
Moreover, both the American and German Commissions issued official reports,
detailing all that was then known of the tragedy. A number of newspaper and
magazine articles had been written about the Hindenburg in 1936, its first year of
trans-Atlantic service, and they, of course, multiplied many fold after the crash. In
addition, two passengers Margaret Mather and Gertrud Adelt published separate
and detailed accounts of the voyage, C. E. Rosendahl, commander of the Lakehurst
Naval Air Station and a pioneer in airship travel himself, wrote a book titled What
About the Airship?, in which he endorsed the theory that the Hindenburg was the
victim of sabotage. In 1957, Nelson Gidding, who would return to the subject of the
Hindenburg some 20 years later, wrote an unpublished "treatment" for a motion
picture based on the deliberate destruction of the airship. In that year as well, John
Toland published Ships in the Sky which, in its seventeenth chapter, chronicled the
last flight of the Hindenburg. In 1962, Dale Titler released Wings of Mystery, in
which he too devoted a chapter to the Hindenburg. [1]
61
Appellant A. A. Hoehling published Who Destroyed the Hindenburg ?, a full-length

book based on his exhaustive research in 1962. Mr. Hoehling studied the
investigative reports, consulted previously published articles and books, and
conducted interviews with survivors of the crash as well as others who possessed
information about the Hindenburg. His book is presented as a factual account,
written in an objective, reportorial style.
The first half recounts the final crossing of the Hindenburg, from Sunday, May 2,
when it left Frankfurt, to Thursday, May 6, when it exploded at Lakehurst.
Hoehling describes the airship, its role as an instrument of propaganda in Nazi
Germany, its passengers and crew, the danger of hydrogen, and the ominous threats
received by German officials, warning that the Hindenburg would be destroyed.
The second portion, headed The Quest, sets forth the progress of the official
investigations, followed by an account of Hoehling's own research. In the final
chapter, spanning eleven pages, Hoehling suggests that all proffered explanations of
the explosion, save deliberate destruction, are unconvincing. He concludes that the
most likely saboteur is one Eric Spehl, a "rigger" on the Hindenburg crew who was
killed at Lakehurst.
According to Hoehling, Spehl had motive, expertise, and opportunity to plant an

explosive device, constructed of dry-cell batteries and a flashbulb, in "Gas Cell 4,"
the location of the initial explosion. An amateur photographer with access to
flashbulbs, Spehl could have destroyed the Hindenburg to please his ladyfriend, a
suspected communist dedicated to exploding the myth of Nazi invincibility.
Ten years later appellee Michael MacDonald Mooney published his book, The
Hindenburg. [618 F.2d 976] Mooney's endeavor might be characterized as more
literary than historical in its attempt to weave a number of symbolic themes through
the actual events surrounding the tragedy. His dominant theme contrasts the natural
beauty of the month of May, when the disaster occurred, with the cold, deliberate
progress of "technology." The May theme is expressed not simply by the season,
but also by the character of Spehl, portrayed as a sensitive artisan with needle and
thread. The Hindenburg, in contrast, is the symbol of technology, as are its German
creators and the Reich itself. The destruction is depicted as the ultimate triumph of
nature over technology, as Spehl plants the bomb that ignites the hydrogen.
Developing this theme from the outset, Mooney begins with an extended review of
man's efforts to defy nature through flight, focusing on the evolution of the
zeppelin. This story culminates in the construction of the Hindenburg, and the
Nazis' claims of its indestructibility. Mooney then traces the fateful voyage,
advising the reader almost immediately of Spehl's scheme. The book concludes with
the airship's explosion.
Mooney acknowledges, in this case, that he consulted Hoehling's book, and that he
relied on it for some details. He asserts that he first discovered the "Spehl-as-
saboteur" theory when he read Titler's Wings of Mystery. Indeed, Titler concludes
that Spehl was the saboteur, for essentially the reasons stated by Hoehling. Mooney
also claims to have studied the complete National Archives and New York Times
files concerning the Hindenburg, as well as all previously published material.
Moreover, he traveled to Germany, visited Spehl's birthplace, and conducted a
number of interviews with survivors.
After Mooney prepared an outline of his anticipated book, his publisher succeeded
in negotiations to sell the motion picture rights to appellee Universal City Studios. [2]
Universal then commissioned a screen story by writers Levinson and Link, best
ChapterNumber:
62
known for their television series, Columbo, in which a somewhat disheveled, but
wise detective unravels artfully conceived murder mysteries. In their screen story,
Levinson and Link created a Columbo-like character who endeavored to identify
the saboteur on board the Hindenburg. Director Robert Wise, however, was not
satisfied with this version, and called upon Nelson Gidding to write a final
screenplay. Gidding, it will be recalled, had engaged in preliminary work on a film
about the Hindenburg almost twenty years earlier.
The Gidding screenplay follows what is known in the motion picture industry as a
"Grand Hotel" formula, developing a number of fictional characters and subplots
involving them. This formula has become standard fare in so-called "disaster"
movies, which have enjoyed a certain popularity in recent years. In the film, which
was released in late 1975, a rigger named "Boerth," who has an anti-Nazi
ladyfriend, plans to destroy the airship in an effort to embarrass the Reich. Nazi
officials, vaguely aware of sabotage threats, station a Luftwaffe intelligence officer
on the zeppelin, loosely resembling a Colonel Erdmann who was aboard the
Hindenburg. This character is portrayed as a likable fellow who soon discovers that
Boerth is the saboteur. Boerth, however, convinces him that the Hindenburg should
be destroyed and the two join forces, planning the explosion for several hours after
the landing at Lakehurst, when no people would be on board. In Gidding's version,
the airship is delayed by a storm, frantic efforts to defuse the bomb fail, and the
Hindenburg is destroyed. The film's subplots involve other possible suspects,
including a fictional countess who has had her estate expropriated by the Reich, two
fictional confidence men wanted [618 F.2d 977] by New York City police, and an
advertising executive rushing to close a business deal in America.
Upon learning of Universal's plans to release the film, Hoehling instituted this
action against Universal for copyright infringement and common law unfair
competition in the district court for the District of Columbia in October 1975. Judge
Smith declined to issue an order restraining release of the film in December, and it
was distributed throughout the nation.
In January 1976, Hoehling sought to amend his complaint to include Mooney as a

defendant. The district court, however, decided that it lacked personal jurisdiction
over Mooney. [3] In June 1976, Hoehling again attempted to amend his complaint,
this time to add Mooney's publishers as defendants. Judge Smith denied this motion
as well, but granted Hoehling's request to transfer the litigation to the Southern
District of New York, 28 U.S.C. § 1404(a), where Mooney himself was successfully
included as a party. Judge Metzner, with the assistance of Magistrate Sinclair,
supervised extensive discovery through most of 1978. After the completion of
discovery, both Mooney and Universal moved for summary judgment, Fed.R.Civ.P.
56, which was granted on August 1, 1979.
II.
It is undisputed that Hoehling has a valid copyright in his book. To prove
infringement, however, he must demonstrate that defendants "copied" his work and
that they "improperly appropriated" his "expression." See Arnstein v. Porter, 154
F.2d 464, 468 (2d Cir. 1946). Ordinarily, wrongful appropriation is shown by
proving a "substantial similarity" of copyrightable expression. See Nichols v.
Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S.
902, 51 S.Ct. 216, 75 L.Ed. 795 (1931). Because substantial similarity is
63
customarily an extremely close question of fact, [ … ] summary judgment has

traditionally been frowned upon in copyright litigation, id. at 474. Nevertheless,
while Arnstein 's influence in other areas of the law has been diminished, [ … ] a
series of copyright cases in the Southern District of New York have granted
defendants summary judgment when all alleged similarity related to non -
copyrightable elements of the plaintiff's work, [ … ]These cases signal an important
development in the law of copyright, permitting courts to put "a swift end to
meritless litigation" and to avoid lengthy and costly trials. [ … ] Drawing on these
cases, Judge Metzner assumed both copying and substantial similarity, but
concluded that all similarities pertained to various categories of non-copyrightable
material. Accordingly, he granted appellees' motion for summary judgment. We
affirm the judgment of the district court.
A
Hoehling's principal claim is that both Mooney and Universal copied the essential
plot of his book i. e., Eric Spehl, influenced by his girlfriend, sabotaged the
Hindenburg by placing a crude bomb in Gas Cell 4. In their briefs, and at oral
argument, appellees have labored to convince us that their plots are not
substantially similar to Hoehling's. While Hoehling's Spehl destroys the airship to
please his communist girlfriend, Mooney's character is motivated by an aversion to
the technological age. Universal's [618 F.2d 978] Boerth, on the other hand, is a
fervent anti-fascist who enlists the support of a Luftwaffe colonel who, in turn,
unsuccessfully attempts to defuse the bomb at the eleventh hour.
Although this argument has potential merit when presented to a fact finder
adjudicating the issue of substantial similarity, it is largely irrelevant to a motion
for summary judgment where the issue of substantial similarity has been eliminated
by the judge's affirmative assumption. Under Rule 56(c), summary judgment is
appropriate only when "there is no genuine issue as to any material fact." [ … ]
Perhaps recognizing this, appellees further argue that Hoehling's plot is an "idea,"
and ideas are not copyrightable as a matter of law. [ … ]
Hoehling, however, correctly rejoins that while ideas themselves are not subject to
copyright, his "expression" of his idea is copyrightable. Id. at 54. He relies on
Learned Hand's opinion in Sheldon, supra, at 50, holding that Letty Lynton
infringed Dishonored Lady by copying its story of a woman who poisons her lover,
and Augustus Hand's analysis in Detective Comics, Inc. v. Bruns Publications, Inc.,
111 F.2d 432 (2d Cir. 1940), concluding that the exploits of "Wonderman"
infringed the copyright held by the creators of "Superman," the original
indestructible man. Moreover, Hoehling asserts that, in both these cases, the line
between "ideas" and "expression" is drawn, in the first instance, by the fact finder.
Sheldon and Detective Comics, however, dealt with works of fiction, [4] where the
distinction between an idea and its expression is especially elusive. But, where, as
here, the idea at issue is an interpretation of an historical event, our cases hold that
such interpretations are not copyrightable as a matter of law. In Rosemont
Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966), cert. denied,
385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967), we held that the defendant's
biography of Howard Hughes did not infringe an earlier biography of the reclusive
alleged billionaire. Although the plots of the two works were necessarily similar,
there could be no infringement because of the "public benefit in encouraging the
ChapterNumber:
64
development of historical and biographical works and their public distribution." Id.
at 307; accord, Oxford Book Co. v. College Entrance Book Co., 98 F.2d 688 (2d
Cir. 1938). To avoid a chilling effect on authors who contemplate tackling an
historical issue or event, broad latitude must be granted to subsequent authors who
make use of historical subject matter, including theories or plots. Learned Hand
counseled in Myers v. Mail & Express Co., 36 C.O.Bull. 478, 479 (S.D.N.Y.1919),
"(t)here cannot be any such thing as copyright in the order of presentation of the
facts, nor, indeed, in their selection." [5]
In the instant case, the hypothesis that Eric Spehl destroyed the Hindenburg is
based entirely on the interpretation of historical facts, including Spehl's life, his
girlfriend's anti-Nazi connections, the explosion's origin in Gas Cell 4, Spehl's duty
station, discovery of a dry-cell battery [618 F.2d 979] among the wreckage, and
rumors about Spehl's involvement dating from a 1938 Gestapo investigation. Such
an historical interpretation, whether or not it originated with Mr. Hoehling, is not
protected by his copyright and can be freely used by subsequent authors.
B
The same reasoning governs Hoehling's claim that a number of specific facts,
ascertained through his personal research, were copied by appellees. [6] The cases in
this circuit, however, make clear that factual information is in the public domain.
See, e. g., Rosemont Enterprises, Inc., supra, 366 F.2d at 309; Oxford Book Co.,
supra, 98 F.2d at 691. Each appellee had the right to "avail himself of the facts
contained" in Hoehling's book and to "use such information, whether correct or
incorrect, in his own literary work." Greenbie v. Noble, 151 F.Supp. 45, 67
(S.D.N.Y.1957). Accordingly, there is little consolation in relying on cases in other
circuits holding that the fruits of original research are copyrightable. See, e. g.,
Toksvig v. Bruce Publications Corp., 181 F.2d 664, 667 (7th Cir. 1950); Miller v.
Universal City Studios, Inc., 460 F.Supp. 984 (S.D.Fla.1978). Indeed, this circuit
has clearly repudiated Toksvig and its progeny. In Rosemont Enterprises, Inc.,
supra, 366 F.2d at 310, we refused to "subscribe to the view that an author is
absolutely precluded from saving time and effort by referring to and relying upon
prior published material. . . . It is just such wasted effort that the proscription
against the copyright of ideas and facts . . . . are designed to prevent." Accord, 1
Nimmer on Copyright § 2.11 (1979).
C
The remainder of Hoehling's claimed similarities relate to random duplications of
phrases and sequences of events. For example, all three works contain a scene in a
German beer hall, in which the airship's crew engages in revelry prior to the
voyage. Other claimed similarities concern common German greetings of the
period, such as "Heil Hitler," or songs, such as the German National anthem. These
elements, however, are merely scenes a faire, that is, "incidents, characters or
settings which are as a practical matter indispensable, or at least standard, in the
treatment of a given topic." Alexander, supra, 460 F.Supp. at 45; accord, Bevan v.
Columbia Broadcasting System, Inc., 329 F.Supp. 601, 607 (S.D.N.Y.1971).
Because it is virtually impossible to write about a particular historical era or
65
fictional theme without employing certain "stock" or standard literary devices, we

have held that scenes a faire are not copyrightable as a matter of law.[ … ]
D
All of Hoehling's allegations of copying, therefore, encompass material that is non-
copyrightable as a matter of law, rendering summary judgment entirely appropriate.
We are aware, however, that in distinguishing between themes, facts, and scenes a
faire on the one hand, and copyrightable expression on the other, courts may lose
sight of the forest for the trees. By factoring out similarities based on non-
copyrightable elements, a court runs the [618 F.2d 980] risk of overlooking
wholesale usurpation of a prior author's expression. A verbatim reproduction of
another work, of course, even in the realm of nonfiction, is actionable as copyright
infringement.[ … ] Thus, in granting or reviewing a grant of summary judgment for
defendants, courts should assure themselves that the works before them are not
virtually identical. In this case, it is clear that all three authors relate the story of the
Hindenburg differently.
In works devoted to historical subjects, it is our view that a second author may
make significant use of prior work, so long as he does not bodily appropriate the
expression of another. Rosemont Enterprises, Inc., supra, 366 F.2d at 310. This
principle is justified by the fundamental policy undergirding the copyright laws the
encouragement of contributions to recorded knowledge. The "financial reward
guaranteed to the copyright holder is but an incident of this general objective, rather
than an end in itself." [ … ] Knowledge is expanded as well by granting new
authors of historical works a relatively free hand to build upon the work of their
predecessors. [7]
III
Finally, we affirm Judge Metzner's rejection of Hoehling's claims based on the
common law of "unfair competition." Where, as here, historical facts, themes, and
research have been deliberately exempted from the scope of copyright protection to
vindicate the overriding goal of encouraging contributions to recorded knowledge,
the states are pre-empted from removing such material from the public domain.
[ … ]"To forbid copying" in this case, "would interfere with the federal policy . . .
of allowing free access to copy whatever the federal patent and copyright laws
leave in the public domain." Id. at 237, 84 S.Ct. at 782.
The judgment of the district court is affirmed.
[…]
[*] Of the United States District Court for the Southern District of New York,
sitting by designation.
[1] Titler's account was published after the release of appellant's book. In an
affidavit in this litigation, Titler states that he copied Hoehling's theory of sabotage.
Hoehling, however, has never instituted a copyright action against Titler.
ChapterNumber:
66
[2] Mooney, his publishers, and Universal entered into an agreement under which
(1) Universal acquired the film rights to Mooney's book, (2) Universal agreed to
promote sales of the book, and (3) Mooney would receive a percentage fee, tied to
sales of his book. Hoehling claims that because of this arrangement, Universal is
vicariously liable if Mooney's book, but not the motion picture, is held to infringe
his copyright. In view of our disposition of the appeal, however, we need not
address this issue.
[3] At the same time, Judge Smith denied Universal's motion for summary
judgment, concluding it was inappropriate prior to the completion of requested
discovery.
[4] In Sheldon, both works were loosely based on an actual murder committed by a
young Scottish girl. Judge Hand, however, clearly dealt only with the fictional plots
conceived by the respective authors. See Sheldon v. Metro-Goldwyn Pictures Corp.,
81 F.2d 49, 54 (2d Cir.), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392
(1936).
[5] This circuit has permitted extensive reliance on prior works of history. See, e.
g., Gardner v. Nizer, 391 F.Supp. 940 (S.D.N.Y.1975) (the story of the Rosenberg
trial not copyrightable); Fuld v. National Broadcasting Co., 390 F.Supp. 877
(S.D.N.Y.1975) ("Bugsy" Siegel's life story not copyrightable); Greenbie v. Noble,
151 F.Supp. 45 (S.D.N.Y.1957) (the life of Anna Carroll, a member of Lincoln's
cabinet, not copyrightable). The commentators are in accord with this view. See, e.
g. 1 Nimmer on Copyright § 2.11(A) (1979); Chafee, Reflections on the Law of
Copyright: I, 45 Colum.L.Rev. 503, 511 (1945).
[6] In detailed comparisons of his book with Mooney's work and Universal's motion
picture, Hoehling isolates 266 and 75 alleged instances of copying, respectively.
Judge Metzner correctly pointed out that many of these allegations are patently
frivolous. The vast majority of the remainder deals with alleged copying of
historical facts. It would serve no purpose to review Hoehling's specific allegations
in detail in this opinion. The following ten examples, however, are illustrative: (1)
Eric Spehl's age and birthplace; (2) Crew members had smuggled monkeys on
board the Graf Zeppelin; (3) Germany's ambassador to the United States dismissed
threats of sabotage; (4) A warning letter had been received from a Mrs. Rauch; (5)
The Hindenburg's captain was constructing a new home in Zeppelinheim; (6) Eric
Spehl was a photographer; (7) The airship flew over Boston; (8) The Hindenburg
was "tail heavy" before landing; (9) A member of the ground crew had etched his
name in the zeppelin's hull; and (10) The navigator set the Hindenburg's course by
reference to various North Atlantic islands.
[7] We note that publication of Mooney's book and release of the motion picture
revived long dormant interest in the Hindenburg. As a result, Hoehling's book,
which had been out of print for some time, was actually re-released after the film
was featured in theaters across the country.

67
2.2.2
American Historical Association, Statement on

Standards of Professional Conduct, #4: Plagiarism
(2005)

http://www.historians.org/pubs/free/
ProfessionalStandards.cfm#Plagiarism

2.2.3
Malcolm Gladwell, "Something Borrowed," The

New Yorker, Nov. 22, 2004

http://www.newyorker.com/archive/2004/11/22/041122fa_fact

69
3
Week 3

ChapterNumber:
70

3.1

Subject Matter

3.1.1
Shine v. Childs


of New York
382 F. Supp. 2d 602
No. 04 Civ. 8828 (MBM)
2005-08-10
382 F.Supp.2d 602 (2005)
Thomas SHINE, Plaintiff,
v.
David M. CHILDS and Skidmore Owings & Merrill,
LLP, Defendants.
No[ … ]
August 10, 2005.
[…]
MUKASEY, District Judge.

Plaintiff Thomas Shine sues David M. Childs and Skidmore, Owings & Merrill,
LLP (SOM) for copyright infringement under the United States Copyright Act [ … ].
Shine alleges that he created designs for an original skyscraper which Childs saw
and later copied in the first design plan for the [605] Freedom Tower at the World
Trade Center (WTC) site. Defendants move to dismiss the Complaint, or
alternatively for summary judgment. For the reasons explained below, defendants'
motion for summary judgment is granted in part and denied in part.
71
I.
The facts viewed in the light most favorable to the plaintiff[ … ] are as follows. In
fall 1999, Shine was a student in the Masters of Architecture Program at the Yale
School of Architecture. As part of the required curriculum in his program, he took a
studio class on skyscrapers taught by renowned architect Cesar Pelli. [ … ] The
object of this studio was to create a design proposal for a monumental skyscraper
that would be built on West 32nd Street in Manhattan and used by the media during
the 2012 Olympic Games; the building was to be adjacent to the proposed West
Side stadium...
During the first half of October 1999, Shine developed a preliminary model for his
design, which he refers to as "Shine '99" for the purposes of this litigation. [ … ]
Plaintiff describes Shine '99 as a tower that tapers as it rises, with "two straight,
parallel, roughly triangular sides, connected by two twisting facades, resulting in a
tower whose top [is] in the shape of a parallelogram." [ … ]
By the end of the fall 1999 semester, Shine had developed a more sophisticated
model of his design, entitled "Olympic Tower." Shine describes this structure as "a
twisting tower with a symmetrical diagonal column grid, expressed on the exterior
of the building, that follows the twisting surface created by the floor plates'
geometry." [ … ] According to Shine, the column grid he designed gives rise to "an
elongated diamond pattern, supporting a textured curtain wall with diamonds
interlocking and protruding to create a crenelated appearance." [ … ]
On or about December 9, 1999, Shine presented his designs for Olympic Tower to a
jury of experts invited by the Yale School of Architecture to evaluate and critique
its students' work. During a 30-minute presentation to the panel, Shine explained
his tower's structural design, and displayed different structural and design models
(including Shine '99), renderings, floor plans, elevations, sections, a site plan, and a
photomontage giving a visual impression of the tower's exterior. [ … ] Defendant
Childs was on the panel, and he praised Olympic Tower during the presentation, as
did the other luminaries [2] evaluating Shine's work. When the review was
completed, Shine was applauded by the jury and other visitors, which, according to
Shine, is "highly unusual" at a student's final review. [ … ] After the presentation,
Childs approached Shine, complimented Shine's color pencil rendering of Olympic
Tower, and invited Shine to visit after his graduation. [ … ]
[606] Childs' favorable reaction to Olympic Tower was also documented in

Retrospecta, an annual alumni magazine [3] published by the Yale School of
Architecture featuring selected works by the school's current students. The 1999-
2000 edition of Retrospecta featured a large composite photographic rendering of
Olympic Tower set against an imaginary New York sunset, in addition to smaller
inset photographs of two of Shine's models of the tower. Favorable comments from
the panel members were printed next to the photographic rendering, including the
following compliment from Childs: "It is a very beautiful shape. You took the skin
and developed it around the form — great!" [ … ] Shine does not allege that he had
any contact with Childs after the December 1999 panel evaluation. However, he
does claim that Childs' design for the Freedom Tower, unveiled four years later,
infringed Shine '99 and Olympic Tower.
Childs did not begin work on the Freedom Tower until summer 2003. In order to
choose the best possible design for the rebuilt WTC, the Lower Manhattan
Development Corporation and the Port Authority of New York and New Jersey held
ChapterNumber:
72
an architectural competition in 2002 and 2003, in search of a master WTC site plan.
In February 2003, Studio Daniel Libeskind's plan entitled "Memory Foundations"
was selected as the winning design. [ … ] In summer 2003, WTC developer Larry
Silverstein asked Childs, who is a Consulting Design Partner at SOM, to begin
working as design architect and project manager for the tallest building at the
proposed new WTC site as conceptualized by Libeskind — the building that later
would be called the Freedom Tower. [ … ] Libeskind was to serve as collaborating
architect during the initial concept and schematic design phases. [ … ] In spite of
what was described as a "difficult marriage" between Childs and Libeskind, [ … ] a
design for the Freedom Tower was completed within six months, and was presented
to the public at a press conference at Federal Hall in lower Manhattan on December
19, 2003. [ … ] At this presentation, SOM and Childs displayed six large computer-
generated images of the Freedom Tower[ … ]; two scale models of the Tower[ … ];
and a computer slide show detailing the Tower's design principles[ … ]. They also
distributed a press packet containing six images of the proposed Tower[ … ].
As described by Shine, this version of the Freedom Tower "tapers as it rises and has
two straight, parallel, roughly triangular facades on opposite sides, with two
twisting facades joining them." [ … ] Shine alleges that this design is substantially
similar to the form and shape of Shine '99, and that it incorporates a structural grid
identical to the grid in Olympic Tower, as well as a facade design that is "strikingly
similar" to the one in Olympic Tower. [ … ] Apparently, others at the Yale School
of Architecture noticed the similarity between the Freedom Tower and Shine's
design: According to plaintiff's expert, Yale Professor James Axley, several days
after Childs unveiled the design for the Freedom Tower, one of Shine's original
models for Olympic Tower "was retrieved [607] from archival storage and placed
on the desk of the Dean of the School of Architecture." [ … ]
Shine registered Olympic Tower as an architectural work with the U.S. Copyright
Office on March 30, 2004 [ … ], and did the same for Shine '99 on June 24, 2004
[ … ]. He filed the Complaint in this action on November 8, 2004, claiming that
defendants copied his designs without his permission or authorization, and stating
that defendants distributed and claimed credit for his designs "willfully and with
conscious disregard" for his rights in his copyrighted works. [ … ]
Shine requests an injunction to prevent further infringement by defendants, as well

as actual damages and defendants' profits realized by their infringement. [ … ]
Defendants move to dismiss the Complaint, or alternatively for summary judgment,
claiming that Shine's works are not original and not worthy of protection, and
further arguing that there is no substantial similarity between either work and the
Freedom Tower.
It should be noted that in June 2005, after law enforcement authorities, among
others, objected to the Freedom Tower's original design, [ … ] Childs, SOM, and
Libeskind unveiled a substantially redesigned version of the Tower. The alleged
infringing design apparently has been scrapped and is unlikely to be constructed.
The new version has, at least to this court's untrained eye, little similarity to either
of Shine's copyrighted works, and the court assumes that Shine makes no claim that
it infringes his works. Because the alleged infringing design may never be
constructed, Shine's actual damages in this action may be reduced, and he may be
unable to show the need for an injunction. But because defendants' original design
for the Freedom Tower remains in the public domain, Shine's infringement claim
stands.
73
Defendants have moved under Fed.R.Civ.P. 12(b)(6) to dismiss the Complaint, or

alternatively, for summary judgment under Fed.R.Civ.P. 56. Because plaintiff has
treated the motion as one for summary judgment, [ … ] and because both parties
have submitted materials outside the Complaint that the court has found helpful, the
court will consider those materials, and apply summary judgment standards. In
assessing whether a genuine issue of material fact remains to be tried, the court will
view the facts in the light most favorable to the nonmoving party. SCS
Communications, Inc. v. Herrick Co., 360 F.3d 329, 338 (2d Cir.2004).
II.
To prevail, plaintiff must prove "`(1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original.'" [ … ] To prove
copying of original elements of his work, in addition to showing originality,
plaintiff must demonstrate both that defendants actually copied his works, and that
such copying was illegal because there is substantial similarity between each of his
works and the alleged infringing work — the Freedom Tower...
Defendants argue first that neither Shine '99 nor Olympic Tower qualifies as an
architectural work under the Copyright Act. They argue also that both designs are
unoriginal and functional, and therefore unworthy of whatever copyright protection
[608] they currently have. Finally, assuming that plaintiff's copyrights are valid,
defendants deny that they copied plaintiff's designs, and assert that there is no
substantial similarity between plaintiff's designs and the Freedom Tower. Plaintiff
counters that Shine '99 and Olympic Tower are each original, copyrightable
designs, that defendants actually copied each work, and that the Freedom Tower is
substantially similar to each in different ways.
A. Architectural Works Under the Copyright

Act
Prior to 1990, the United States did not allow structures to be copyrighted, except
those few that did not serve any utilitarian purpose. [ … ] However, in 1989, the
United States became a party to the Berne Convention for the Protection of Literary
and Artistic Works, which required protection for "`three dimensional works
relative to ... architecture.'" See id. (quoting Berne Convention for the Protection of
Literary and Artistic Works, revised at Paris, July 24, 1971, art. 2, 828 U.N.T.S.
221). Membership in the Berne Convention required the United States to protect
works of architecture; therefore, in 1990, Congress amended the Copyright Act,
adding the Architectural Works Copyright Protection Act (AWCPA), which
included architectural works as a new category of copyrightable material.
The AWCPA defines an architectural work as:
the design of a building as embodied in any tangible medium of

expression, including a building, architectural plans, or drawings. The
work includes the overall form as well as the arrangement and
composition of spaces and elements in the design, but does not include
individual standard features.
ChapterNumber:
74
17 U.S.C. § 101. Defendants cite various portions of the legislative history of the
AWCPA to argue that Shine's models are not architectural works meriting copyright
protection. They claim that Shine's works are preliminary or conceptual, and do not
meet the standard of a "design of a building." They argue also that plans for the
"design of a building" may be protected only if a building actually could be
constructed from the plans.
Defendants cite no cases to support their reading of the AWCPA. The statute
nowhere states or implies that only designs capable of construction are worthy of
protection. Although our Circuit has not specifically articulated the standard by
which an architectural design is to be evaluated under the Copyright Act, when
considering pictorial, graphic, and sculptural (PGS) works, also protected by the
Act, see 17 U.S.C. § 101, it has twice noted that plans or designs not sufficiently
detailed to allow for construction still may be protected. See Attia v. Soc'y of the
N.Y. Hosp., 201 F.3d 50, 57 (2d Cir.1999) ("[W]e do not mean to suggest that, in
the domain of copyrighted architectural depictions, only final construction drawings
can contain protected expression."); Sparaco v. Lawler, Matusky & Skelly Eng'rs
LLP, 303 F.3d 460, 469 (2d Cir.2002) ("We do not mean to imply that technical
drawings cannot achieve protected status unless they are sufficiently complete and
detailed to support actual construction."). This reasoning should apply equally to
architectural works, because our Circuit also has held that "`[i]n general,
architectural works are subject to the same standards that apply to other
copyrightable works.'" Attia, 201 F.3d at 53 n. 3 (quoting 1 Nimmer § 2.20[A]). It
is true that "generalized ideas and concepts pertaining to the placement of elements,
traffic flow, and engineering strategies," or in other words, "ideas and concepts,"
are not worthy of protection. Id. at 57. However, once a design includes "specific
expression and [609] realization of ... ideas," copying constitutes infringement.
Sparaco, 303 F.3d at 469; cf. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274
F.2d 487, 489 (2d Cir.1960) ("[N]o principle can be stated as to when an imitator
has gone beyond copying the ìdea' and has borrowed its èxpression.' Decisions
must therefore inevitably be ad hoc.") (L.Hand, J.).
Both Shine '99 and Olympic Tower are worthy of protection under the AWCPA.
Shine '99 is a scale model of a twisting tower: Two of the tower's sides are smooth
and taper straight toward the top creating a roughly triangular shape; the other two
sides twist and taper as they rise, and one of those sides features four graded
setbacks or levels that narrow as the tower rises. The top of the tower forms a
parallelogram. [ … ] Shine '99, although certainly a rough model, is more than a
concept or an idea; it is a distinctive design for a building. As explained above,
whether a tower actually could be constructed from this model is irrelevant.
Defendants argue that the shape and form of Shine '99 are so rudimentary and
standard that protecting it would be akin to protecting a particular geometric shape,
such as "an ellipse, a pyramid, or an egg." [ … ] However, the AWCPA protects
"the design of a building as embodied in any tangible medium of expression ...
[including] the overall form as well as the arrangement and composition of spaces
and elements in the design...." 17 U.S.C. § 101. Individual arguably "standard"
elements of Shine '99, such as its twist or its setbacks, might not be worthy of
protection, but the arrangement and composition of the various elements in the
model do at least arguably constitute the "design of a building" under the AWCPA.
The same is true for Olympic Tower, which is a much more intricate and detailed
design than Shine '99. The copyrighted Olympic Tower materials include two
models of the tower, one of the building's internal supports and one of its external
75
appearance. Both models show that the building twists on all four sides; comparing
the models reveals that the internal diamond-shaped grid supporting the tower is
reflected and repeated in the external "skin" on its facade — a design that Childs
commented on during his evaluation of Shine's work. [ … ] Shine also copyrighted
elevation sketches of the tower to display the building's core at different levels, see
id. Ex. B, pp. 7-8, a photomontage of what the building might look like against the
New York sky, see id. Ex. B. p. 1, as well as what appears to be a sketch of the
undulating triangular grid design for the exterior, of the building, see id. Ex. B, p.
9. The detailed and specific materials Shine copyrighted for Olympic Tower
certainly constitute the "design of a building," and qualify it as an architectural
work under the AWCPA.
B. Originality
Defendants next claim that neither Shine '99 nor Olympic Tower is sufficiently
original to warrant protection under the AWCPA. Using the House Committee
Report on the AWCPA as their guide, defendants argue for a two-step analysis of
the originality and functionality of an architectural work: First, the House Report
noted, the work in question should be examined for the presence of original design
elements. If such elements exist and are not functionally required, the Report
concluded, then the work is protectable. [ … ] Following this framework,
defendants argue that no single part of Shine's work is original; that any parts that
might be original are functionally required to support its design and therefore
unprotectable; and that the arrangement [610] of the various design elements
featured in Shine's work is a compilation not meriting protection under existing
law.
In this analysis, defendants fly high and fast over the large body of Supreme Court
and Second Circuit case law on originality and copyright infringement, as well as
the text of the AWCPA, which states that "the overall form as well as the
arrangement and composition of spaces and elements in the design" of an
architectural work may be the subject of a valid copyright. 17 U.S.C. § 101. First,
defendants fail to acknowledge that plaintiff's "certificates of [copyright]
registration constitute prima facie evidence of the validity not only of their
copyrights, but also of the originality of [the] works." Boisson v. Banian, Ltd., 273
F.3d 262, 268 (2d Cir.2001); see also 17 U.S.C. § 410(c) (a copyright registration
certificate, when issued within five years of the first publication of the work, is
prima facie evidence of ownership of a valid copyright). It is also true, however,
that originality is "the sine qua non of copyright," Feist, 499 U.S. at 345, 111 S.Ct.
1282, and if a work is not original, then it is not protectable. If a certain element
within a work is not original, that element is not protectable "even if other
elements, or the work as a whole, warrant protection." Boisson, 273 F.3d at 268.
Plaintiff need not clear a high bar in order for his architectural works to qualify as
original:
In the copyright context, originality means the work was independently

created by its author, and not copied from someone else's work. The level
of originality and creativity that must be shown is minimal, only an
"unmistakable dash of originality need be demonstrated, high standards of
uniqueness in creativity are dispensed with."
ChapterNumber:
76
Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 764-65 (2d Cir.1991)
(quoting Weissmann v. Freeman, 868 F.2d 1313, 1321 (2d Cir.1989)); see also
Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir.1988) (describing the requirement
of originality as "little more than a prohibition of actual copying") (internal
quotation marks omitted). Additionally, our Circuit has held that "a work may be
copyrightable even though it is entirely a compilation of unprotectible elements."
Knitwaves, 71 F.3d at 1003-04.
If the court followed defendants' suggestion and analyzed the elements of plaintiff's
works separately, comparing only those elements that are copyrightable to those
present in the designs for the Freedom Tower, as our Circuit noted, "we might have
to decide that there can be no originality in a painting because all colors of paint
have been used somewhere in the past." [ … ]
Following this analysis, both Shine '99 and Olympic Tower at least arguably are
protectable and original. It is true that, as defendants' expert points out, twisting
towers have been built before. Towers with diamond-windowed facades have been
built before. Towers with support grids [611] similar to the one in Olympic Tower
have been built before. Towers with setbacks have been built before. But
defendants do not present any evidence that the particular combinations of design
elements in either Shine '99 or Olympic Tower are unoriginal. [5] These works each
have at least the mere "dash of originality" required for copyrightability, not to
mention that they both have been copyrighted, and therefore are prima facie
original.
Defendants argue also that any original aspect of Olympic Tower's facade is
functionally required by the support grid utilized by Shine, and therefore
unprotectable. [ … ] However, Shine's expert disputes this contention. See Axley
Decl. ¶ 10. Therefore, even if certain of the original design elements of Olympic
Tower are dictated by functionality and therefore not copyrightable — a proposition
for which there is no apparent support in the case law or the AWCPA — a material
issue of fact on this matter remains for trial.
C. Infringement
To prove infringement,
[a] plaintiff must first show that his or her work was actually copied.
Copying may be established either by direct evidence of copying, or by
indirect evidence, including access to the copyrighted work, similarities
that are probative of copying between the works, and expert testimony. If
actual copying is established, a plaintiff must then show that the copying
amounts to an improper appropriation by demonstrating that substantial
similarity to protected material exists between the two works.
[…]
1. Actual Copying
77
As explained above, unless the rare situation exists where plaintiff has direct proof
that defendants copied his work, plaintiff may prove actual copying by showing that
defendants had access to his copyrighted works, and that similarities that suggest
copying exist between the protected works and the alleged infringing work. Cf.
Castle Rock Entm't v. Carol Publ'g Group, 150 F.3d 132, 137 (2d Cir.1998)
("`[P]robative,' rather than `substantial' similarity is the correct term in referring to
the plaintiff's initial burden of proving actual copying by indirect evidence. It is
only after actual copying is established that one claiming infringement then
proceeds to demonstrate that the copying was improper or unlawful by showing that
the second work bears `substantial similarity' to protected expression in the earlier
work.") (internal citations omitted);[ … ] [[ … ]
or the purposes of this motion, defendants concede that Childs had access to both
Shine '99 and Olympic Tower when he evaluated them as part of the expert jury at
the Yale School of Architecture in December 1999. ([ … ]Therefore, [612] all that
plaintiff must prove to show actual copying in this action is probative similarity
between his works and the Freedom Tower. The court may consider expert
testimony when assessing probative similarity,[ … ] Given the substantial
disagreement between plaintiff's expert Axley and defendants' expert Meier on the
alleged similarity between Olympic Tower and the Freedom Tower, compare Axley
Decl. ¶¶ 21-24 with Meier Aff. ¶¶ 32-41, and that these experts' views are, at least
to the court's untrained eye, plausible, there is at least an issue of material fact
remaining for trial as to the probative similarity between those two works.
However, plaintiff's expert Axley does not comment on whether any similarity
exists between Shine '99 and the Freedom Tower. According to plaintiff, "the shape
of Freedom Tower is remarkably similar to the shape of Shine '99" because both
towers have two straight parallel walls and two twisting walls. ([ … ]Shine claims
that the four setbacks on one side of Shine '99 were "intended as an alternative
approach to the form of the twisting sides." ([ … ]Whether they were so intended or
not, these setbacks are a distinctive feature of the model which bear no resemblance
to any feature of the Freedom Tower. Even imagining Shine '99 with four smooth
sides, there are still no similarities between Shine '99 and the Freedom Tower that
are probative of actual copying. Both towers twist as they rise, but as defendants'
expert points out with ample evidence, see Meier Aff. Exs. D, G, the idea of a
twisting tower with a rectangular base and parallel sides is by no means unique.
There is no evidence to suggest that Childs would have thought of the idea of a
twisting tower only by viewing Shine '99. Plaintiff's own expert could not find
similarities between Shine '99 and the Freedom Tower substantial enough to
warrant comment. Other than that Childs had access to the design, there is no
evidence to suggest that defendants actually copied the form or shape of Shine '99.
Therefore, no material issue of fact regarding the probative similarity of Shine '99
and the Freedom Tower remains for trial, and defendant's motion for summary
judgment as to Shine '99 is granted.
2. Substantial Similarity
Because there is at least an issue of material fact as to whether defendants actually
copied Shine's design for Olympic Tower, the court now must determine whether
reasonable jurors could find that substantial similarity exists between Olympic
Tower and the Freedom Tower. Our Circuit has not yet had occasion to compare the
ChapterNumber:
78
substantial similarity of a copyrighted architectural work such as Olympic Tower to

an alleged infringing work, so it is not entirely clear which standard the court
should use for the comparison. [7 [ … ]
wever, "total concept and feel" is the dominant standard used to evaluate substantial
similarity between artistic works in our Circuit, and that standard is the most
appropriate one in this case. See id. (noting that "[i]n recent years we have found it
productive to assess claims of inexact-copy infringement by comparing the
contested design's `total concept and overall feel' with that of the allegedly
infringed work," and applying this test to compare two carpet designs); Boisson,
273 F.3d at 272 (using the "total concept and feel" test to compare to quilt designs
and [613] noting that substantial similarity has "always" been guided by this test);
Knitwaves, 71 F.3d at 1003 (applying the "total concept and feel" test to compare
two different designs on sweaters); Laureyssens, 964 F.2d at 141 (using overall
aesthetic appeal test to compare two foam rubber puzzles); see also Sturdza, 281
F.3d at 1296 (comparing two architectural works and holding that "[t]he substantial
similarity determination requires comparison not only of the two works' individual
elements in isolation, but also of their òverall look and feel.'" (quoting Boisson,
273 F.3d at 266)).
Defendants argue that court should apply the test set forth in Computer Assocs.
Int'l, Inc. v. Altai, 982 F.2d 693 (2d Cir.1992) to compare the two complex
architectural works here. In Altai, the court was asked to determine whether one
computer program infringed another, and in doing so, it devised a new test for
determining substantial similarity in that context. The Court described its test as
follows:
In ascertaining substantial similarity under this approach, a court would

first break down the allegedly infringed program into its constituent
structural parts. Then, by examining each of these parts for such things as
incorporated ideas, expression that is necessarily incidental to those ideas,
and elements that are taken from the public domain, a court would be able
to sift out all non-protectable material. Left with a kernel, or possibly
kernels, of creative expression after following this process of elimination,
the court's last step would be to compare this material with the structure of
an allegedly infringing program. The result of this comparison will
determine whether the protectable elements of the programs at issue are
substantially similar so as to warrant a finding of infringement.
Id. at 706. However, as noted above in the discussion of originality, the AWCPA
protects the "overall form as well as the arrangement and composition of spaces and
elements in the design" of architectural works. 17 U.S.C. § 101. If the court were to
follow the Altai analysis and separate out only those "kernels" of expression that
would qualify as original, that, as our Circuit has held, "would result in almost
nothing being copyrightable because original works broken down into their
composite parts would usually be little more than basic unprotectible elements like
letters, colors, and symbols." Bo[ … ]
r Circuit noted recently that some commentators have worried that "`the total
concept and feel' standard may ìnvite an abdication of analysis,' because `feel' can
seem à wholly amorphous referent.'" Tu[ … ]ut the Court added that the total
concept and feel test was not "so incautious," because where it has been applied,
courts have taken care to identify "precisely the particular aesthetic decisions —
79
original to the plaintiff and copied by the defendant — that might be thought to
make the designs similar in the aggregate." Id. The Court explained further that
while the infringement analysis must begin by dissecting the copyrighted

work into its component parts in order to clarify precisely what is not
original, infringement analysis is not simply a matter of ascertaining
similarity between components viewed in isolation. For the defendant may
infringe on the plaintiff's work not only through literal copying of a
portion of it, but also by parroting properties that are apparent only when
numerous aesthetic decisions embodied in the plaintiff's work of art — the
excerpting, modifying, and arranging of public domain compositions, if
[614] any, together with the development and representation of wholly
new motifs and the use of texture and color, etc. — are considered in
relation to one another. The court, confronted with an allegedly infringing
work, must analyze the two works closely to figure out in what respects, if
any, they are similar, and then determine whether these similarities are
due to protected aesthetic expressions original to the allegedly infringed
work, or whether the similarity is to something in the original that is free
for the taking.
Id[ … ]lthough this analysis was applied to carpet designs, it also is appropriate for
architectural works, because the AWCPA protects the "overall form" of
architectural designs in addition to their individual copyrightable elements.
The court has already found that, even though several of its component parts may
not be original, the composite design of Olympic Tower is at least arguably unique
and original. See supra Part III.B. Now the court must determine whether,
examining the "total concept and feel" of both works, there is an issue of material
fact as to whether the design of the Freedom Tower infringes on any of the original
aesthetic expressions of the Olympic Tower.
This task presents the question of the point of view from which the "concept and
feel" substantial similarity analysis should be conducted. Defendants argue that the
analysis should be conducted with the aid of expert testimony, but they cite no
Second Circuit authority for this proposition. [8] It seems odd that defendants would
advocate such a test, because there is significant disagreement between the
respective parties' two highly qualified experts regarding the substantial similarity
of Olympic Tower and the Freedom Tower. According to the experts, many issues
of material fact remain in dispute as to total concept and feel. If the court were to
adopt defendants' suggestion and consider expert testimony in its analysis of
substantial similarity, it would have no choice but to deny summary judgment on
the issue.
However, the Second Circuit has long held that substantial similarity should be
determined not with the help of or solely by experts in the relevant field, but from
the perspective of the ordinary observer:
The plaintiff's legally protected interest is not, as such, his reputation ...
but his interest in the potential financial returns from his [work] which
derive from the lay public's approbation of his efforts. The question,
therefore, is whether defendant took from plaintiff's works so much of
what is pleasing to the ... lay [public] ... that defendant wrongfully
appropriated something which belongs to the plaintiff.
ChapterNumber:
80
Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir.1946) (footnotes omitted). Because
the lay public's approbation usually is the foundation of returns that derive from a
copyrighted work, an allegedly infringing work is considered substantially similar
to a copyrighted work if "the ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them, and regard their aesthetic appeal as
the same." Folio Impressions, 937 F.2d at 765.
[615] Our Circuit refined the ordinary observer test in cases where certain aspects
of the copyrighted work are taken directly from the public domain, and applied a
"more discerning" ordinary observer test. "What must be shown is substantial
similarity between those elements, and only those elements, that provide
copyrightability to the allegedly infringed compilation." Key Publ'ns, Inc. v.
Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir.1991). However,
this "more discerning" ordinary observer test must be applied in conjunction with
the "total concept and feel" test, so as not to deny protection to works that have
combined unoriginal elements in a unique and copyrightable fashion, as is at least
arguably true here. Boisson, 273 F.3d at 272-73; [ … ]Noting the difficulty of
applying the "more discerning ordinary observer" test to the "total concept and feel"
evaluation, the Boisson Court counseled that with all of the above concepts in mind,
the court's substantial similarity analysis ultimately should be guided by "common
sense." "
ith these principles in mind, the court finds that reasonable ordinary observers could
disagree on whether substantial similarity exists between the Freedom Tower and
Olympic Tower. Defendants present several photographic comparisons between the
two structures in their Reply Memorandum. Se[ … ]lthough defendants offer these
comparisons to point out what they claim are significant differences between the
two towers, "[i]t has long been settled that `no plagiarist can excuse the wrong by
showing how much of his work he did not pirate.'" Tufenkian, 338 F.3d at 132
(quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.1936)
(L.Hand, J.)). Any lay observer examining the two towers side by side would notice
that: (1) each tower has a form that tapers and twists as it rises, (2) each tower has
an undulating, textured diamond shaped pattern covering its facade, and (3) the
facade's diamond pattern continues to and concludes at the foot of each tower,
where one or more half diamond shapes open up and allow for entry. These
combination of these elements gives the two towers a similar "total concept and
feel" that is immediately apparent even to an untrained judicial eye.
It is possible, even likely, that some ordinary observers might not find the two
towers to be substantially similar because, as defendants note, there are differences
between the Freedom Tower and Olympic Tower, including, inter alia, the number
of sides of each tower that twist (the Freedom Tower's two versus Olympic Tower's
four); the direction of each tower's twist (the Freedom Tower twists clockwise and
Olympic Tower twists counterclockwise); the shape of each tower's ground floor
(the Freedom Tower is a parallelogram and Olympic Tower is a square); and the
various contrasting details of each tower's entrance and facade. See De[ … ]arner
Bros., Inc. v. Am. Broad. Cos., 654 F.2d 204, 211 (2d Cir.1981) ("[W]hile `no
pirate,' a defendant may legitimately avoid infringement by intentionally making
sufficient changes in a work which would otherwise be regarded as substantially
similar to that of the plaintiff's.") (quoting Sheldon, 81 F.2d at 56). However, it also
is possible that a lay observer, applying the total concept and feel test, might find
that the Freedom Tower's twisting shape and undulating diamond-shaped facade
81
make it substantially similar to Olympic Tower, and therefore [616] an improper

appropriation of plaintiff's copyrighted artistic expression.
Because reasonable jurors could disagree as to the substantial similarity between

Olympic Tower and the Freedom Tower, defendants' motion for summary judgment
as to plaintiff's claims regarding Olympic Tower is denied.
******
For the foregoing reasons, defendants' motion for summary judgment regarding
plaintiff's claim that the Freedom Tower infringed upon his copyrighted
architectural work Shine '99 is granted. Defendants' motion for summary judgment
regarding plaintiff's claim that the Freedom Tower infringed upon his copyrighted
architectural work Olympic Tower is denied.
SO ORDERED.
[1] The Complaint states that plaintiff began designing Shine '99 on or about
"October 1, 1997." However, because the rest of the Complaint refers only to events
occurring in 1999, this reference to 1997 appears to be a typographical error.
[2] In addition to Childs and Shine's professor Cesar Pelli, the jury included Yale
professor and urban planner Alexander Garvin, architecture writer and critic Paul
Goldberger, and Robert A.M. Stern, dean of the Yale School of Architecture. (Shine
Decl. ¶ 6)
[3] Because Childs is an alumnus of the Yale School of Architecture, he

presumably received a copy of this issue of Retrospecta. However in his Answer,
Childs denies that he ever saw a copy of the issue referenced by Shine in the
Complaint. (Durschinger Aff. Ex. D, ¶ 12)
[4] See Glenn Collins, A Freedom Tower Restarted From Scratch, The New York
Times, July 10, 2005.
[5] None of the designs defendants indicate as evidence of the unoriginality of

Shine's works bear any significant resemblance to either Shine '99 or Olympic
Tower. Se[ … ]
] The phrase "probative similarity" is used to distinguish this stage of infringement

analysis from "substantial similarity," which is examined only after actual copying
is shown. The idea of probative similarity was first suggested in a law review
article, and later adopted by our Circuit. See Alan Latman, "Probative Similarity" as
Proof of Copying: Toward Dispelling Some Myths in Copyright Infringement, 90
Colum. L.Rev. 1187 (1990); Laureyssens, 964 F.2d at 140.
[7] In two recent cases where it analyzed the resemblance between copyrighted PGS
works and structures, the Court generally discussed the similarities between the
copyrighted materials and the alleged infringing works, but did not utilize a specific
procedure for these comparisons. See Sparaco, 303 F.3d at 467-70; Attia, 201 F.3d
at 56-58.
[8] Defendants note that the Altai Court granted discretion to district courts to allow
expert testimony in evaluating the substantial similarity of computer programs.
However, they cite no case where a court has actually utilized such testimony,
either to examine computer programs or any other copyrighted material.
Se[ … ]ndeed, the Altai Court noted that its decision to allow expert testimony on
ChapterNumber:
82
the substantial similarity of computer programs was not intended "to disturb the
traditional role of lay observers in judging substantial similarity in copyright cases
that involve the aesthetic arts, such as music, visual works or literature." [ … ]

3.1.2
DC Comics v. Towle Court of Appeals

DC COMICS [ … ]
v.
MARK TOWLE,[ … ]
United States Court of Appeals, Ninth Circuit.
[…]
Filed September 23, 2015.
[…]
IKUTA, Circuit Judge.

We are asked to decide whether defendant Mark Towle infringed DC Comics'
exclusive rights under a copyright when he built and sold replicas of the Batmobile,
as it appeared in the 1966 television show Batman and the 1989 film BATMAN.
Holy copyright law, Batman!
I
DC Comics (DC) is the publisher and copyright owner of comic books featuring the
story of the world-famous character, Batman. Since his first comic book appearance
in 1939, the Caped Crusader has protected Gotham City from villains with the help
of his sidekick Robin the Boy Wonder, his utility belt, and of course, the
Batmobile.
Originally introduced in the Batman comic books in 1941, the Batmobile is a

fictional, high-tech automobile that Batman employs as his primary mode of
transportation. The Batmobile has varied in appearance over the years, but its name
and key characteristics as Batman's personal crimefighting vehicle have remained
consistent. Over the past eight decades, the comic books have continually depicted
the Batmobile as possessing bat-like external features, ready to leap into action to
assist Batman in his fight against Gotham's most dangerous villains, and equipped
with futuristic weaponry and technology that is "years ahead of anything else on
wheels."
83
Since its creation in the comic books, the Batmobile has also been depicted in
numerous television programs and motion pictures. Two of these depictions are
relevant to this case: the 1966 television series Batman, starring Adam West, and
the 1989 motion picture BATMAN, starring Michael Keaton.
The 1966 Batman television series was the product of a licensing agreement
between DC's predecessor, National Periodical Publications, Inc. (National
Periodical) and the American Broadcasting Company (ABC). In 1965, National
Periodical entered into a licensing agreement with ABC (the 1965 ABC Agreement)
in which it granted ABC "an exclusive license to produce a series of half-hour
television programs . . . based upon the literary property consisting of the comic
book and comic strip stories entitled `Batman' . . . including the characters therein."
This exclusive right included the right to "translate, adapt, [or] arrange" the Batman
literary property "to such extent as ABC may desire" in the making of the television
programs, and the right to secure copyrights in the television programs produced.
The agreement also provided that "[a]ll rights in the property not specifically
granted to ABC are hereby reserved to and may be exercised by National at all
times during the term of this agreement" except as otherwise expressly stated in the
agreement. National Periodical's reserved rights included "[a]ll rights of
publication," and the exclusive merchandising rights to all products manufactured
or distributed under the name of any character in the Batman comic books.
Under this agreement, ABC (through a series of sublicensing agreements) produced

the 1966 television show starring Adam West as Batman. In addition to Batman,
Robin, and the use of visual onomatopoeia that flashed on screen during fight
scenes—Pow! Boff! Thwack!—the television series featured the Batmobile. The
design of the Batmobile did not directly copy any iterations of the Batmobile as it
appeared in the comic books. As in the comic books, however, the Batmobile in the
1966 television show maintained a bat-like appearance and was equipped with
state-of-the-art weaponry and technology. [2]
In 1979, DC again licensed its rights in the Batman literary property, this time to
Batman Productions, Inc. (BPI). In the agreement (the 1979 BPI Agreement), DC
granted BPI the exclusive right to create a motion picture based on the "Property,"
which was defined to include "[t]he names, titles, fictional locations and fictional
conveyances . . . as depicted and contained in the comic magazines [published by
DC], which are identifiable with or associated with the fictional character known as
`Batman,' such as . . . that certain conveyance known as the `Batmobile.'" The 1979
BPI Agreement also granted BPI the right to "adapt, use, . . . modify, [or] alter . . .
the Property" for the purpose of producing the motion picture. Like the 1965 ABC
Agreement, the 1979 BPI Agreement provided that "[a]ll rights in the Property not
specifically granted to" BPI under the agreement "are reserved to DC and may be
exercised by DC at all times without any limitation or restriction whatsover except
as specifically set forth herein." [ … ]
BPI subsequently sub-licensed its rights to Warner Bros., Inc., who eventually
(through a number of additional sublicensing agreements) produced the 1989
motion picture BATMAN, starring Michael Keaton as Batman. Like the 1966
television series, the 1989 motion picture featured a Batmobile that was physically
distinct from the Batmobile portrayed in the comic books and the 1966 television
series. Nonetheless, the Batmobile as portrayed in the motion picture retained a bat-
like physical appearance and was again equipped with futuristic technology and
crime-fighting weaponry. [3]
ChapterNumber:
84
Defendant Mark Towle produces replicas of the Batmobile as it appeared in both

the 1966 television show and 1989 motion picture as part of his business at Gotham
Garage, where he manufactures and sells replicas of automobiles featured in motion
pictures or television programs. Towle concedes that these replicas copy the
designs of the Batmobile as depicted on television and in the motion picture, though
they do not copy every feature. Towle then sells these vehicles for approximately
$90,000 to "avid car collectors" who "know the entire history of the Batmobile."
Towle also sells kits that allow customers to modify their cars to look like the
Batmobile, as it appeared in the 1966 television show and the 1989 motion picture.
Before DC brought this lawsuit, Towle advertised each replica as the "Batmobile,"
and used the domain name batmobilereplicas.com to market his business. He also
advertised that the replicas included such features as "custom bat insignias, wheel
bats, [and a] bat steering wheel," and would attract attention due to the fame of the
Batmobile. By his own admission, Towle is not authorized by DC to manufacture or
sell any products bearing DC's copyright or trademark.
In May 2011, DC filed this action against Towle, alleging, among other things,
causes of action for copyright infringement, trademark infringement, and unfair
competition arising from Towle's manufacture and sale of the Batmobile replicas. [ …
]
In a published order, the district court granted in part and denied in part DC's
motion for summary judgment, and denied Towle's cross motion for summary
judgment. [ … ]First, the district court held that the Batmobile was a character
entitled to copyright protection.[ … ]
Second, the district court held that DC maintained a copyright in the Batmobile as it
appeared in both the 1966 television show and the 1989 motion picture based on its
ownership of the merchandising rights. Alternatively, the district court concluded
that DC owns a copyright in the Batmobile as it appeared in each production
because the appearance of the Batmobile in each production was derived from the
Batmobile depicted in DC's comic books. Finally, the district court concluded that
Towle infringed upon DC's copyright because he copied the Batmobile as it
appeared in the 1966 and 1989 productions in his replicas. Accordingly, the district
court granted summary judgment on the copyright infringement claim to DC.
[…]
II
In order to prevail on its claim for copyright infringement, DC must prove that it
owns a copyright in the Batmobile as it appeared in the 1966 television series and
1989 movie, and that Towle infringed that copyright by creating unauthorized
replicas. [ … ]
To the Batmobile!
A
85
We begin with the question whether the Batmobile, as it appears in the comic
books, television series, and motion picture, is entitled to copyright protection.
[ … ] In the context of copyright law, where, as here, "the question requires us to
consider legal concepts in the mix of fact and law and to exercise judgment about
the values that animate legal principles, . . . the question should be classified as one
of law and reviewed de novo." [ … ]
Courts have recognized that copyright protection extends not only to an original
work as a whole, but also to "sufficiently distinctive" elements, like comic book
characters, contained within the work. [ … ]Although comic book characters are not
listed in the Copyright Act, we have long held that such characters are afforded
copyright protection. See Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th
Cir. 1978). In Air Pirates, for instance, we considered a number of subversive
comic books that portrayed well-known Disney characters as being active
participants in "a free thinking, promiscuous, drug ingesting counterculture."
[ … ]In holding that the Disney characters were copyrightable (and that Disney's
copyright in those characters had been infringed), we distinguished a prior decision
suggesting that literary "characters ordinarily are not copyrightable,"[ … ] on the
grounds that a comic book character "has physical as well as conceptual qualities"
and "is more likely to contain some unique elements of expression" than a purely
literary character. [ … ]We subsequently held that characters in a television series
or a motion picture may also be entitled to copyright protection. See Olson v.
National Broadcasting Co., 855 F.2d 1446 (9th Cir. 1988).
Not every comic book, television, or motion picture character is entitled to

copyright protection. We have held that copyright protection is available only "for
characters that are especially distinctive." Halicki, 547 F.3d at 1224. To meet this
standard, a character must be "sufficiently delineated" and display "consistent,
widely identifiable traits." [ … ]A masked magician "dressed in standard magician
garb" whose role "is limited to performing and revealing the magic tricks," for
example, is not "an èspecially distinct' character differing from an ordinary
magician in a manner that warrants copyright protection." Id. Further, characters
that have been "lightly sketched" and lack descriptions may not merit copyright
protection. [ … ]
We have previously determined that an automotive character can be copyrightable.

[ … ] In Halicki, we considered whether "Eleanor," a car that appeared in both the
original 1971 and 2000 remake motion picture Gone in 60 Seconds, could be
entitled to copyright protection as a character. [ … ]Considering Eleanor's
persistent attributes in both the original and remake of Gone in 60 Seconds, we
concluded that Eleanor met some of the key factors necessary to qualify for
copyright protection. Id. at 1225. We first noted that Eleanor was more like a comic
book character than a literary character given Eleanor's "physical as well as
conceptual qualities." Id. We also stated that Eleanor "displays consistent, widely
identifiable traits and is especially distinctive." [ … ]We gave several examples of
these traits. First, we noted that "[i]n both films, the thefts of the other cars go
largely as planned, but whenever the main human character tries to steal Eleanor,
circumstances invariably become complicated." [ … ]Second, we noted that in the
original, "the main character says Ì'm getting tired of stealing this Eleanor car,'"
and in the remake "the main character refers to his history with Eleanor." [ … ]
As indicated in Halicki, a character may be protectable if it has distinctive character

traits and attributes, even if the character does not maintain the same physical
appearance in every context. As the Eighth Circuit has recognized, "the presence of
ChapterNumber:
86
distinctive qualities apart from visual appearance can diminish or even negate the
need for consistent visual appearance." [ … ] For example, in Halicki, Eleanor's
ability to consistently disrupt heists by her presence was more pertinent to our
analysis of whether the car should qualify as a sufficiently distinctive character than
Eleanor's make and model. 547 F.3d at 1225. Indeed, Halicki put no weight on the
fact that Eleanor was a customized yellow 1971 Fastback Ford Mustang in one film,
and a silver 1967 Shelby GT-500 in another.
Similarly, district courts have determined that James Bond, Batman, and Godzilla
are characters protected by copyright, despite their changes in appearance. [ … ]
We read these precedents as establishing a three-part test for determining whether a

character in a comic book, television program, or motion picture is entitled to
copyright protection. First, the character must generally have "physical as well as
conceptual qualities." [ … ]Second, the character must be "sufficiently delineated"
to be recognizable as the same character whenever it appears. [ … ] Considering the
character as it has appeared in different productions, it must display consistent,
identifiable character traits and attributes, although the character need not have a
consistent appearance. See Halicki, 547 F.3d at 1224. Third, the character must be
"especially distinctive" and "contain some unique elements of expression." Halicki,
547 F.3d at 1224. It cannot be a stock character such as a magician in standard
magician garb. Rice, 330 F.3d at 1175. Even when a character lacks sentient
attributes and does not speak (like a car), it can be a protectable character if it
meets this standard. Halicki, 547 F.3d at 1224.
We now apply this framework to this case. Because (unlike in Halicki) the district
court here addressed this question in detail, we consider its factual findings in
analyzing this issue. [ … ] First, because the Batmobile has appeared graphically in
comic books, and as a three-dimensional car in television series and motion
pictures, it has "physical as well as conceptual qualities," and is thus not a mere
literary character. Air Pirates, 581 F.2d at 755.
Second, the Batmobile is "sufficiently delineated" to be recognizable as the same

character whenever it appears. [ … ] As the district court determined, the Batmobile
has maintained distinct physical and conceptual qualities since its first appearance
in the comic books in 1941. In addition to its status as "a highly-interactive vehicle,
equipped with high-tech gadgets and weaponry used to aid Batman in fighting
crime," the Batmobile is almost always bat-like in appearance, with a bat-themed
front end, bat wings extending from the top or back of the car, exaggerated fenders,
a curved windshield, and bat emblems on the vehicle. This bat-like appearance has
been a consistent theme throughout the comic books, television series, and motion
picture, even though the precise nature of the bat-like characteristics have changed
from time to time.
The Batmobile also has consistent character traits and attributes. No matter its
specific physical appearance, the Batmobile is a "crime-fighting" car with sleek and
powerful characteristics that allow Batman to maneuver quickly while he fights
villains. In the comic books, the Batmobile is described as waiting "[l]ike an
impatient steed straining at the reins . . . shiver[ing] as its super-charged motor
throbs with energy" before it "tears after the fleeing hoodlums" an instant later.
Elsewhere, the Batmobile "leaps away and tears up the street like a cyclone," and at
one point "twin jets of flame flash out with thunderclap force, and the miracle car
of the dynamic duo literally flies through the air!" [ … ]Like its comic book
counterpart, the Batmobile depicted in both the 1966 television series and the 1989
87
motion picture possesses "jet engine[s]" and flame-shooting tubes that undoubtedly
give the Batmobile far more power than an ordinary car. Furthermore, the
Batmobile has an ability to maneuver that far exceeds that of an ordinary car. In the
1966 television series, the Batmobile can perform an "emergency bat turn" via
reverse thrust rockets. Likewise, in the 1989 motion picture, the Batmobile can
enter "Batmissile" mode, in which the Batmobile sheds "all material outside [the]
central fuselage" and reconfigures its "wheels and axles to fit through narrow
openings." [ … ]
Equally important, the Batmobile always contains the most up-to-date weaponry
and technology. At various points in the comic book, the Batmobile contains a "hot-
line phone . . . directly to Commissioner Gordon's office" maintained within the
dashboard compartment, a "special alarm" that foils the Joker's attempt to steal the
Batmobile, and even a complete "mobile crime lab" within the vehicle. Likewise,
the Batmobile in the 1966 television series possesses a "Bing-Bong warning bell," a
mobile Bat-phone, a "Batscope, complete with [a] TV-like viewing screen on the
dash," and a "Bat-ray." Similarly, the Batmobile in the 1989 motion picture is
equipped with a "pair of forward-facing Browning machine guns," "spherical
bombs," "chassismounted shinbreakers," and "side-mounted disc launchers."
Because the Batmobile, as it appears in the comic books as well as in the 1966
television show and 1989 motion picture, displays "consistent, identifiable
character traits and attributes," the second prong of the character analysis is met
here.
Third, the Batmobile is "especially distinctive" and contains unique elements of

expression. In addition to its status as Batman's loyal bat-themed sidekick complete
with the character traits and physical characteristics described above, the Batmobile
also has its unique and highly recognizable name. It is not merely a stock character.
Accordingly, applying our three-part test, we conclude that the Batmobile is a

character that qualifies for copyright protection.
Towle raises two arguments against this conclusion. First, he points out that the
Batmobile has at times appeared without its signature sleek "bat-like" features. He
notes that in a 1988 comic book rendition, the Batmobile appears as a heavily
armored tank with large tires and a rocket launcher. The Batmobile portrayed in the
1989 motion picture could also transform into a Batmissile. As we have noted,
however, a consistent appearance is not as significant in our analysis as consistent
character traits and attributes. The changes in appearance cited by Towle resemble
costume changes that do not alter the Batmobile's innate characteristics, any more
than James Bond's change from blue swimming trunks (in Casino Royale) to his
classic tuxedo affects his iconic character. In context, the depictions of the
Batmobile as a tank or missile promote its character as Batman's crime-fighting
super car that can adapt to new situations as may be necessary to help Batman
vanquish Gotham City's most notorious evildoers. [ … ]
Second, Towle argues that a jury should decide the question whether the Batmobile
displayed unique elements of expression and consistent, widely identifiable traits.
We disagree. We have previously recognized that "[w]hether a particular work is
subject to copyright protection is a mixed question of fact and law subject to de
novo review." [ … ] Neither party disputes the relevant facts regarding the
Batmobile here. Accordingly, we are well-equipped to determine whether, as a
ChapterNumber:
88
matter of law, these undisputed facts establish that the Batmobile is an "especially
distinctive" character entitled to copyright protection.
B
Having concluded that the Batmobile is a copyrightable character, we next consider
whether Towle's copies of the Batmobile as it appeared in the 1966 and 1989
productions infringed on DC's copyright. Here, Towle does not contest that his
replicas copy the Batmobile as it appeared in the 1966 and 1989 productions, even
if they do not copy every feature. Rather, Towle's main argument is that DC does
not own any copyright interest in the 1966 and 1989 productions and therefore
lacks standing to pursue its copyright infringement claim against Towle.
To analyze Towle's argument, we begin with the applicable legal framework. Under
the Copyright Act, "copyright ownership `vests initially in the author or authors of
the work,' which is generally the creator of the copyrighted work." [ … ]The owner
of a copyright has a number of exclusive rights, including the right "to prepare
derivative works" based on its original work of authorship, 17 U.S.C. § 106. A
derivative work is a "work based upon one or more preexisting works that recasts,
transforms, or adapts the preexisting work," Parts Geek, 692 F.3d at 1015-16
(alterations omitted) (quoting 17 U.S.C. § 101), such as a motion picture that is
based on a literary work, see, e.g., Stewart v. Abend, 495 U.S. 207, 212-14 (1990), a
threedimensional costume based upon two-dimensional cartoon characters, see
Entm't Research Grp., 122 F.3d at 1218, or three-dimensional figurines based on
cartoon characters[ … ]. If an unauthorized third party prepares a derivative work,
the copyright owner of the underlying work can sue for infringement. [ … ]
A copyright owner also has the exclusive right to "authorize others to prepare
derivative works based on their copyrighted works." [ … ] When a copyright owner
authorizes a third party to prepare a derivative work, the owner of the underlying
work retains a copyright in that derivative work with respect to all of the elements
that the derivative creator drew from the underlying work and employed in the
derivative work. See Stewart, 495 U.S. at 223. By contrast, the creator of the
derivative work has a copyright only as to those original aspects of the work that
the derivative creator contributed, and only to the extent the derivative creator's
contributions are "more than trivial." Parts Geek, 692 F.3d at 1016; see also
Stewart, 495 U.S. at 223. Moreover, a copyright in a derivative work "must not in
any way affect the scope of any copyright protection in that preexisting material."
[ … ]Logically, therefore, if a third party copies a derivative work without
authorization, it infringes the original copyright owner's copyright in the underlying
work to the extent the unauthorized copy of the derivative work also copies the
underlying work.
[…]
In sum, as a leading copyright commentator explained, "if the material copied was
derived from a copyrighted underlying work, this will constitute an infringement of
such work regardless of whether the defendant copied directly from the underlying
work, or indirectly via the derivative work." 1 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 3.05, at 3-34.31[ … ].
89
Applying these principles, we conclude that DC owns a copyright interest in the

Batmobile character, as it is depicted in the 1966 and 1989 productions. There is no
dispute that DC is the original creator of the Batmobile character. While DC
licensed rights to produce derivative works of this character in the 1965 ABC
Agreement and the 1979 BPI Agreement, DC did not transfer its underlying rights
to the Batmobile character. [ … ]DC therefore owns the copyright in the Batmobile
character, as expressed in the 1966 and 1989 productions, at least to the extent
these productions drew on DC's underlying work. [ … ] Accordingly, it is irrelevant
that Towle's replica Batmobiles were an indirect copy of the Batmobile character,
because DC is entitled to sue for infringement of its underlying work. [ … ][ … ]
Towle argues that his replicas of the Batmobile as it appeared in the 1966 and 1989
productions do not infringe on DC's underlying work because those versions of the
Batmobile look substantially different from any particular depiction of the
Batmobile in the comic books. We reject this argument. As a copyrightable
character, the Batmobile need not have a consistent appearance in every context, so
long as the character has distinctive character traits and attributes. [ … ] Here, DC
retained its copyright in the Batmobile character even though its appearance in the
1966 and 1989 productions did not directly copy any comic book depiction.
Because Towle produced a three-dimensional expression of the entire Batmobile
character as it appeared in the 1966 and 1989 productions, and the Batmobile
character in each of those productions was derived from DC's underlying work, we
conclude that Towle's replicas necessarily copied some aspects of DC's underlying
works. [ … ] Therefore, while we question whether a derivative work based on a
character could ever have any independently copyrightable elements that would not
"affect the scope of any copyright protection in that preexisting material," Parts
Geek, 692 F.3d at 1016, we need not address that issue here.
[…]
C
Having established that the Batmobile character is entitled to copyright protection,
and that DC owns a copyright to this character as it appears in the 1966 television
series and 1989 motion picture, we conclude that Towle infringed upon these
copyrights when he produced replicas of the Batmobile. While we ordinarily apply
a two-part "substantial similarity" test to determine whether a plaintiff has
established "copying of constituent elements of the work that are original," [ … ]
we need not do so where, as here, "the copying of the substance of the entire work"
is admitted[ … ]. Based on the undisputed facts, Towle's production and sale of
replicas of the Batmobile, as it appeared in the 1966 and 1989 productions,
infringed DC's exclusive right to produce derivative works of this character.
Therefore, there is no genuine issue of material fact as to whether he infringed DC's
copyrighted material. DC is entitled to judgment, and we affirm.
[…]
IV
ChapterNumber:
90
As Batman so sagely told Robin, "In our well-ordered society, protection of private
property is essential." [ … ] Here, we conclude that the Batmobile character is the
property of DC, and Towle infringed upon DC's property rights when he produced
unauthorized derivative works of the Batmobile as it appeared in the 1966
television show and the 1989 motion picture. Accordingly, we affirm the district
court.
[…]
[2] A photo of the Batmobile depicted in the 1966 television series, as well as a
photo of Towle's replica of this Batmobile, can be found in Appendix A.
[3] A photo of the Batmobile depicted in the 1989 motion picture, as well as a
photo of Towle's replica of this Batmobile, can be found in Appendix B.
[4] DC clearly asserted in both its original and amended complaint that the
Batmobile in all of its forms, including the 1966 television program and 1989
motion picture, is copyrightable subject matter owned by DC. We thus reject
Towle's argument that DC has failed to identify the copyrights at issue in this case.
[5] The district court also concluded, in the alternative, that the 1966 and 1989
Batmobiles were entitled to copyright protection as a sculptural work under 17
U.S.C. § 102(a)(5). Because we agree that the Batmobile is a character entitled to
copyright protection, we need not reach this issue.
[6] We later indicated that the analysis in Warner Bros. Pictures, Inc. v. Columbia
Broad Syst., Inc., regarding the noncopyrightability of literary characters was dicta
or an alternative holding. See Walt Disney Productions, 581 F.2d at 755 n.10; see
also Olson v. National Broadcasting Co., 855 F.2d 1446, 1452 n.6 (9th Cir. 1988)
(same).
[7] This episode causes Robin to exclaim "Whee! The Batplane couldn't do better!"
[8] Towle submitted a chart to the district court setting forth these features.
[9] Indeed, DC expressly retained all rights not specifically granted to the licensees,
including the merchandising rights to all of if its characters in both the 1965 ABC
Agreement and the 1979 BPI Agreement. See supra, at 5, 6. As a result, DC
retained the exclusive right to produce threedimensional expressions of the
Batmobile character. See Durham Indus., 630 F.2d at 909; see also Halicki, 547
F.3d at 1218, 1223-24 (concluding that because a party retained the exclusive
merchandising rights in a derivative work, she could assert a claim for copyright
infringement against a party producing "vehicles resembling the 1967 Shelby GT-
500 Èleanor' character that appeared in the Remake" Gone in Sixty Seconds).
[10] Because DC retains its copyright in the underlying Batmobile character, we

also reject Towle's argument that the version of the Batmobile that appeared in the
1966 and 1989 productions cannot be copyrighted because the third party producers
of these vehicles obtained a design patent on these works. These creators could
obtain protection only for the original, independently copyrightable aspects of their
work. Parts Geek, 692 F.3d at 1016. In any event, parties may now obtain both a
design patent and a copyright in a work. See Registrability of Pictorial, Graphic, or
Sculptural Works Where a Design Patent Has Been Issued, 60 Fed. Reg. 15605-01,
15605 (March 24, 1995).

91
3.1.3
Star Athletica v. Varsity Brands (2017)

SUPREME COURT OF THE UNITED STATES
[…]
STAR ATHLETICA, L. L. C., PETITIONER v. VARSITY BRANDS, INC., et

al.
on writ of certiorari to the United States Court of Appeals for the Sixth Circuit
March 22, 2017
Justice Thomas delivered the opinion of the Court.
Congress has provided copyright protection for original works of art, but not for
industrial designs. The line between art and industrial design, however, is often
difficult to draw. This is particularly true when an industrial design incorporates
artistic elements. Congress has afforded limited protection for these artistic
elements by providing that “pictorial, graphic, or sculptural features” of the “design
of a useful article” are eligible for copyright protection as artistic works if those
features “can be identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article.” 17 U. S. C. §101.
We granted certiorari to resolve widespread disagreement over the proper test for
implementing §101’s separate-identification and independent-existence
requirements. [ … ]We hold that a feature incorporated into the design of a useful
article is eligible for copyright protection only if the feature (1) can be perceived as
a two- or three-dimensional work of art separate from the useful article and (2)
would qualify as a protectable pictorial, graphic, or sculptural work—either on its
own or fixed in some other tangible medium of expression—if it were imagined
separately from the useful article into which it is incorporated. Because that test is
satisfied in this case, we affirm.
I
Respondents Varsity Brands, Inc.,[ … ] design, make, and sell cheerleading
uniforms. Respondents have obtained or acquired more than 200 U. S. copyright
registrations for two-dimensional designs appearing on the surface of their uniforms
and other garments. These designs are primarily “combinations, positionings, and
arrangements of elements” that include “chevrons . . . , lines, curves, stripes,
angles, diagonals, inverted [chevrons], coloring, and shapes.” At issue in this case
are Designs 299A, 299B, 074, 078, and 0815 * . [ … ]
Petitioner Star Athletica, L. L. C., also markets and sells cheerleading uniforms.
Respondents sued petitioner for infringing their copyrights in the five designs. The
District Court entered summary judgment for petitioner on respondents’ copyright
**
See page 22 of the pdf here, to see the designs: https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf [#1350510]
ChapterNumber:
92
claims on the ground that the designs did not qualify as protectable pictorial,
graphic, or sculptural works. It reasoned that the designs served the useful, or
“utilitarian,” function of identifying the garments as “cheerleading uniforms” and
therefore could not be “physically or conceptually” separated under §101 “from the
utilitarian function” of the uniform.
The Court of Appeals for the Sixth Circuit reversed. In its view, the “graphic
designs” were “separately identifiable” because the designs “and a blank
cheerleading uniform can appear ‘side by side’—one as a graphic design, and one
as a cheerleading uniform.” [ … ] And it determined that the designs were
“‘capable of existing independently’” because they could be incorporated onto the
surface of different types of garments, or hung on the wall and framed as art.
[…]
II
The first element of a copyright-infringement claim is “ownership of a valid
copyright.” [ … ] A valid copyright extends only to copyrightable subject matter.
The Copyright Act of 1976 defines copyrightable subject matter as “original works
of authorship fixed in any tangible medium of expression.” 17 U. S. C. §102(a).
“Works of authorship” include “pictorial, graphic, and sculptural works,” §102(a)

(5), which the statute defines to 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,” §101. And a work of authorship is “‘fixed’ in a tangible
medium of expression when it[ is] embodi[ed] in a” “material objec[t] . . . from
which the work can be perceived, reproduced, or otherwise communicated.” [ … ]
The Copyright Act also establishes a special rule for copyrighting a pictorial,
graphic, or sculptural work incorporated into a “useful article,” which is defined as
“an article having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information.” [ … ] The statute does not
protect useful articles as such. Rather, “the design of a useful article” is “considered
a pictorial, graphical, 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.”[ … ]
Courts, the Copyright Office, and commentators have described the analysis
undertaken to determine whether a feature can be separately identified from, and
exist independently of, a useful article as “separability.” In this case, our task is to
determine whether the arrangements of lines, chevrons, and colorful shapes
appearing on the surface of respondents’ cheerleading uniforms are eligible for
copyright protection as separable features of the design of those cheerleading
uniforms.
A
93
As an initial matter, we must address whether separability analysis is necessary in

this case.
1
Respondents argue that “[s]eparability is only implicated when a [pictorial, graphic,
or sculptural] work is the ‘design of a useful article.’” They contend that the surface
decorations in this case are “twodimensional graphic designs that appear on useful
articles,” but are not themselves designs of useful articles. Consequently, the
surface decorations are protected two-dimensional works of graphic art without
regard to any separability analysis under §101. Under this theory, two-dimensional
artistic features on the surface of useful articles are “inherently separable.”
This argument is inconsistent with the text of §101. The statute requires separability
analysis for any “pictorial, graphic, or sculptural features” incorporated into the
“design of a useful article.” “Design” refers here to “the combination” of “details”
or “features” that “go to make up” the useful article. [ … ] Furthermore, the words
“pictorial” and “graphic” include, in this context, two-dimensional features such as
pictures, paintings, or drawings. [ … ]And the statute expressly defines “[p]ictorial,
graphical, and sculptural works” to include “two-dimensional . . . works of . . . art.”
[ … ] The statute thus provides that the “design of a useful article” can include
twodimensional “pictorial” and “graphic” features, and separability analysis applies
to those features just as it does to three-dimensional “sculptural” features.
[…]
B
We must now decide when a feature incorporated into a useful article “can be
identified separately from” and is “capable of existing independently of” “the
utilitarian aspects” of the article. This is not a free-ranging search for the best
copyright policy, but rather “depends solely on statutory interpretation.” [ … ] “The
controlling principle in this case is the basic and unexceptional rule that courts must
give effect to the clear meaning of statutes as written.” We thus begin and end our
inquiry with the text, giving each word its “ordinary, contemporary, common
meaning.” We do not, however, limit this inquiry to the text of §101 in isolation.
“[I]nterpretation of a phrase of uncertain reach is not confined to a single sentence
when the text of the whole statute gives instruction as to its meaning.” We thus
“look to the provisions of the whole law” to determine §101’s meaning.
1
The statute provides that a “pictorial, graphic, or sculptural featur[e]” incorporated
into the “design of a useful article” is eligible for copyright protection if it (1) “can
be identified separately from,” and (2) is “capable of existing independently of, the
utilitarian aspects of the article.” §101. The first requirement—separate
identification—is not onerous. The decisionmaker need only be able to look at the
useful article and spot some two- or three-dimensional element that appears to have
pictorial, graphic, or sculptural qualities.
ChapterNumber:
94
The independent-existence requirement is ordinarily more difficult to satisfy. The

decisionmaker must determine that the separately identified feature has the capacity
to exist apart from the utilitarian aspects of the article. [ … ] In other words, the
feature must be able to exist as its own pictorial, graphic, or sculptural work as
defined in §101 once it is imagined apart from the useful article. If the feature is not
capable of existing as a pictorial, graphic, or sculptural work once separated from
the useful article, then it was not a pictorial, graphic, or sculptural feature of that
article, but rather one of its utilitarian aspects.
Of course, to qualify as a pictorial, graphic, or sculptural work on its own, the

feature cannot itself be a useful article or “[a]n article that is normally a part of a
useful article” (which is itself considered a useful article). [ … ] Nor could someone
claim a copyright in a useful article merely by creating a replica of that article in
some other medium—for example, a cardboard model of a car. Although the replica
could itself be copyrightable, it would not give rise to any rights in the useful
article that inspired it.
2
The statute as a whole confirms our interpretation. The Copyright Act provides “the
owner of [a] copyright” with the “exclusive righ[t] . . . to reproduce the copyrighted
work in copies.” §106(1). The statute clarifies that this right “includes the right to
reproduce the [copyrighted] work in or on any kind of article, whether useful or
otherwise.” §113(a). Section 101 is, in essence, the mirror image of §113(a).
Whereas §113(a) protects a work of authorship first fixed in some tangible medium
other than a useful article and subsequently applied to a useful article, §101 protects
art first fixed in the medium of a useful article. The two provisions make clear that
copyright protection extends to pictorial, graphic, and sculptural works regardless
of whether they were created as freestanding art or as features of useful articles.
The ultimate separability question, then, is whether the feature for which copyright
protection is claimed would have been eligible for copyright protection as a
pictorial, graphic, or sculptural work had it originally been fixed in some tangible
medium other than a useful article before being applied to a useful article.
3
This interpretation is also consistent with the history of the Copyright Act. In
Mazer, a case decided under the 1909 Copyright Act, the respondents copyrighted a
statuette depicting a dancer. ** ** The statuette was intended for use as a lamp base,
“with electric wiring, sockets and lamp shades attached.” Copies of the statuette
were sold both as lamp bases and separately as statuettes. The petitioners copied the
statuette and sold lamps with the statuette as the base. They defended against the
respondents’ infringement suit by arguing that the respondents did not have a
copyright in a statuette intended for use as a lamp base.
Two of Mazer’s holdings are relevant here. First, the Court held that the
respondents owned a copyright in the statuette even though it was intended for use
as a lamp base. In doing so, the Court approved the Copyright Office’s regulation
extending copyright protection to works of art that might also serve a useful
***
[ ** 10]
95
purpose [ … ] (protecting “works of artistic craftsmanship, in so far as their form

but not their mechanical or utilitarian aspects are concerned”)).
Second, the Court held that it was irrelevant to the copyright inquiry whether the
statuette was initially created as a freestanding sculpture or as a lamp base. [ … ]
Mazer thus interpreted the 1909 Act consistently with the rule discussed above: If a
design would have been copyrightable as a standalone pictorial, graphic, or
sculptural work, it is copyrightable if created first as part of a useful article.
Shortly thereafter, the Copyright Office enacted a regulation implementing the

holdings of Mazer. As amended, the regulation introduced the modern separability
test to copyright law:
“If the sole intrinsic function of an article is its utility, the fact that the article is
unique and attractively shaped will not qualify it as a work of art. However, if the
shape of a utilitarian article incorporates features, such as artistic sculpture,
carving, or pictorial representation, which can be identified separately and are
capable of existing independently as a work of art, such features will be eligible for
registration.” [ … ]
Congress essentially lifted the language governing protection for the design of a
useful article directly from the post-Mazer regulations and placed it into §101 of the
1976 Act. Consistent with Mazer, the approach we outline today interprets §§101
and 113 in a way that would afford copyright protection to the statuette in Mazer
regardless of whether it was first created as a standalone sculptural work or as the
base of the lamp.
C
In sum, a feature of the design of a useful article is eligible for copyright if, when
identified and imagined apart from the useful article, it would qualify as a pictorial,
graphic, or sculptural work either on its own or when fixed in some other tangible
medium.
Applying this test to the surface decorations on the cheerleading uniforms is

straightforward. First, one can identify the decorations as features having pictorial,
graphic, or sculptural qualities. Second, if the arrangement of colors, shapes,
stripes, and chevrons on the surface of the cheerleading uniforms were separated
from the uniform and applied in another medium—for example, on a painter’s
canvas—they would qualify as “two-dimensional . . . works of . . . art,” §101. And
imaginatively removing the surface decorations from the uniforms and applying
them in another medium would not replicate the uniform itself. Indeed, respondents
have applied the designs in this case to other media of expression—different types
of clothing—without replicating the uniform. The decorations are therefore
separable from the uniforms and eligible for copyright protection.[1]
The dissent argues that the designs are not separable because imaginatively
removing them from the uniforms and placing them in some other medium of
expression—a canvas, for example—would create “pictures of cheerleader
uniforms.” [ … ]Petitioner similarly argues that the decorations cannot be
copyrighted because, even when extracted from the useful article, they retain the
outline of a cheerleading uniform.
ChapterNumber:
96
This is not a bar to copyright. Just as two-dimensional fine art corresponds to the
shape of the canvas on which it is painted, two-dimensional applied art correlates to
the contours of the article on which it is applied. A fresco painted on a wall, ceiling
panel, or dome would not lose copyright protection, for example, simply because it
was designed to track the dimensions of the surface on which it was painted. Or
consider, for example, a design etched or painted on the surface of a guitar. If that
entire design is imaginatively removed from the guitar’s surface and placed on an
album cover, it would still resemble the shape of a guitar. But the image on the
cover does not “replicate” the guitar as a useful article. Rather, the design is a two-
dimensional work of art that corresponds to the shape of the useful article to which
it was applied. The statute protects that work of art whether it is first drawn on the
album cover and then applied to the guitar’s surface, or vice versa. Failing to
protect that art would create an anomaly: It would extend protection to two-
dimensional designs that cover a part of a useful article but would not protect the
same design if it covered the entire article. The statute does not support that
distinction, nor can it be reconciled with the dissent’s recognition that “artwork
printed on a t-shirt” could be protected.
To be clear, the only feature of the cheerleading uniform eligible for a copyright in
this case is the two-dimensional work of art fixed in the tangible medium of the
uniform fabric. Even if respondents ultimately succeed in establishing a valid
copyright in the surface decorations at issue here, respondents have no right to
prohibit any person from manufacturing a cheerleading uniform of identical shape,
cut, and dimensions to the ones on which the decorations in this case appear. They
may prohibit only the reproduction of the surface designs in any tangible medium
of expression—a uniform or otherwise. [2]
D
This section optional - the court addresses and rejects several counter-arguments.
[#1350540]
[ … ][ … ]
[ … ][ … ][ … ]
[…]
III
We hold that an artistic feature of the design of a useful article is eligible for
copyright protection if the feature (1) can be perceived as a two- or three-
dimensional work of art separate from the useful article and (2) would qualify as a
protectable pictorial, graphic, or sculptural work either on its own or in some other
medium if imagined separately from the useful article. Because the designs on the
surface of respondents’ cheerleading uniforms in this case satisfy these
requirements, the judgment of the Court of Appeals is affirmed.
It is so ordered.
97
_______________________________________________________________
[1] We do not today hold that the surface decorations are copyrightable. We express
no opinion on whether these works are sufficiently original to qualify for copyright
protection, see Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S.
340–359 (1991), or on whether any other prerequisite of a valid copyright has been
satisfied.
[2] The dissent suggests that our test would lead to the copyrighting of shovels. But
a shovel, like a cheerleading uniform, even if displayed in an art gallery, is “an
article having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information.” 17 U. S. C. §101. It therefore
cannot be copyrighted. A drawing of a shovel could, of course, be copyrighted.
And, if the shovel included any artistic features that could be perceived as art apart
from the shovel, and which would qualify as protectable pictorial, graphic, or
sculptural works on their own or in another medium, they too could be copyrighted.
But a shovel as a shovel cannot.

3.1.4
The Music Modernization Act | U.S. Copyright

Office

https://www.copyright.gov/music-modernization/

3.1.5
A $550 Million Springsteen Deal? It’s Glory Days

for Catalog Sales. - The New York Times

https://www.nytimes.com/2021/12/20/arts/music/bruce-springsteen-
catalog.html

ChapterNumber:
98
3.1.6
Google v. Oracle (SCOTUS 2021), paragraphs 1-49,

107-125

https://ipxcourses.org/C/2021_Oracle_Full.docx

3.1.7
Lotus Development Corporation v. Borland

International, Inc., 49 F.3d 807 (1st Cir. 1995)

https://h2o.law.harvard.edu/collages/15457

3.2

Indian materials

3.2.1
Sec. 13 Copyright Act 1957

Section 13 - Works in which copyright subsists
(1) Subject to the provisions of this section and the other provisions of this Act,
copyright shall subsist throughout India in the following classes of works, that
is to say -
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) sound recording.
(2) Copyright shall not subsist in any work specified in sub-section (1), other than a
work to which the provisions of section 40 or section 41 apply, unless,-
(i) in the case of a published work, the work is first published in India, or where the
work is first published outside India, the author is at the date of such publication, or
99
in a case where the author was dead at that date, was at the time of his death, a
citizen of India;
(ii) in the case of an unpublished work other than work of architecture, the author is
at the date of the making of the work a citizen of India or domiciled in India; and
(iii) in the case of work of architecture, the work is located in India.
Explanation - In the case of a work of joint authorship, the conditions conferring

copyright specified in this sub-section shall be satisfied by all the authors of the
work.
(3) Copyright shall not subsist-
(a) in any cinematograph film if a substantial part of the film is an infringement of

the copyright in any other work;
(b) in any sound recording made in respect of a literary, dramatic or musical work,
if in making the sound recording, copyright in such work has been infringed.
(4) The copyright in a cinematograph film or a sound recording shall not affect the
separate copyright in any work in respect of which or a substantial part of which,
the film, or, as the case may be, the sound recording is made.
(5) In the case of work of architecture, copyright shall subsist only in the artistic
character and design and shall not extend to processes or methods of construction.

3.2.2
Sec. 16 Copyright Act 1957

3.2.3
Agarwala Publishing House, Khurja v. Board of

High School and Intermediate Education U. P.
Allahabad


ChapterNumber:
100
3.2.4
Ananda Expanded Italics., In re.


3.2.5
Fortune Films International v. Dev Anand and

another


3.2.6
Gramophone Company of India Ltd. v. Super

Cassette Industries Ltd.


101
4
Week 4

ChapterNumber:
102

4.1

Welfare Theory

4.1.1
Raustiala and Sprigman, 'When are IP Rights

Necessary? Evidence from Innovation in IP's
Negative Space' (Edward Elgar Publishing, 2016)

https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2838555

4.1.2
Jolls, Sunstein, and Thaler, A Behavioral Approach

to Law and Economics, pp. 1471-1489

http://www.law.harvard.edu/programs/olin_center/papers/pdf/236.pdf

103
5
Week 5

ChapterNumber:
104

5.1

Multiple Authors

5.1.1
17 USC 201

§201. Ownership of copyright

(a) INITIAL OWNERSHIP.—Copyright in a work protected under this title vests
initially in the author or authors of the work. The authors of a joint work are
coowners of copyright in the work.
(b) WORKS MADE FOR HIRE.—In the case of a work made for hire, the
employer or other person for whom the work was prepared is considered the author
for purposes of this title, and, unless the parties have expressly agreed otherwise in
a written instrument signed by them, owns all of the rights comprised in the
copyright.
(c) CONTRIBUTIONS TO COLLECTIVE WORKS.—Copyright in each separate

contribution to a collective work is distinct from copyright in the collective work as
a whole, and vests initially in the author of the contribution. In the absence of an
express transfer of the copyright or of any rights under it, the owner of copyright in
the collective work is presumed to have acquired only the privilege of reproducing
and distributing the contribution as part of that particular collective work, any
revision of that collective work, and any later collective work in the same series.
(d) TRANSFER OF OWNERSHIP.—
(1) The ownership of a copyright may be transferred in whole or in part by any

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

copyright, or of any of the exclusive rights under a copyright, has not previously
been transferred voluntarily by that individual author, no action by any
governmental body or other official or organization purporting to seize, expropriate,
105
transfer, or exercise rights of ownership with respect to the copyright, or any of the
exclusive rights under a copyright, shall be given effect under this title, except as
provided under title 11.
(Pub. L. 94–553, title I, §101, Oct. 19, 1976, 90 Stat. 2568; Pub. L. 95–598, title
III, §313, Nov. 6, 1978, 92 Stat. 2676.)

5.1.2
Aalmuhammed v. Lee

United States Court of Appeals for the Ninth Circuit

202 F.3d 1227
No. 99-55224
2000-02-04
202 F.3d 1227 (2000)
Jefri AALMUHAMMED, Plaintiff-Appellant,
v.
Spike LEE; Forty Acres and a Mule Filmworks, Inc.;
[…]
Submitted April 19, 1999. [ … ]
Filed February 4, 2000.
[…]
Before: CANBY, NOONAN, and KLEINFELD, Circuit Judges.
KLEINFELD, Circuit Judge:
This is a copyright case involving a claim of coauthorship of the movie Malcolm X.

We reject the "joint work" claim but remand for further proceedings on a quantum
meruit claim.
I. FACTS
In 1991, Warner Brothers contracted with Spike Lee and his production companies
to make the movie Malcolm X, to be based on the book, The Autobiography of
Malcolm X. Lee co-wrote the screenplay, directed, and co-produced the movie,
which starred Denzel Washington as Malcolm X. Washington asked Jefri
Aalmuhammed to assist him in his preparation for the starring role because
Aalmuhammed knew a great deal about Malcolm X and Islam. Aalmuhammed, a
ChapterNumber:
106
devout Muslim, was particularly knowledgeable about the life of Malcolm X,

having previously written, directed, and produced a documentary film about
Malcolm X.
Aalmuhammed joined Washington on the movie set. The movie was filmed in the
New York metropolitan area and Egypt. Aalmuhammed presented evidence that his
involvement in making the movie was very extensive. He reviewed the shooting
script for Spike Lee and Denzel [1230] Washington and suggested extensive script
revisions. Some of his script revisions were included in the released version of the
film; others were filmed but not included in the released version. Most of the
revisions Aalmuhammed made were to ensure the religious and historical accuracy
and authenticity of scenes depicting Malcolm X's religious conversion and
pilgrimage to Mecca.
Aalmuhammed submitted evidence that he directed Denzel Washington and other

actors while on the set, created at least two entire scenes with new characters,
translated Arabic into English for subtitles, supplied his own voice for voice-overs,
selected the proper prayers and religious practices for the characters, and edited
parts of the movie during post production. Washington testified in his deposition
that Aalmuhammed's contribution to the movie was "great" because he "helped to
rewrite, to make more authentic." Once production ended, Aalmuhammed met with
numerous Islamic organizations to persuade them that the movie was an accurate
depiction of Malcolm X's life.
Aalmuhammed never had a written contract with Warner Brothers, Lee, or Lee's
production companies, but he expected Lee to compensate him for his work. He did
not intend to work and bear his expenses in New York and Egypt gratuitously.
Aalmuhammed ultimately received a check for $25,000 from Lee, which he cashed,
and a check for $100,000 from Washington, which he did not cash.
During the summer before Malcolm X's November 1992 release, Aalmuhammed
asked for a writing credit as a co-writer of the film, but was turned down. When the
film was released, it credited Aalmuhammed only as an "Islamic Technical
Consultant," far down the list. In November 1995, Aalmuhammed applied for a
copyright with the U.S. Copyright Office, claiming he was a co-creator, co-writer,
and co-director of the movie. The Copyright Office issued him a "Certificate of
Registration," but advised him in a letter that his "claims conflict with previous
registrations" of the film.
On November 17, 1995, Aalmuhammed filed a complaint against Spike Lee, his
production companies, and Warner Brothers, (collectively "Lee"), as well as Largo
International, N.V., and Largo Entertainment, Inc. (collectively "Largo"), and
Victor Company of Japan and JVC Entertainment, Inc. (collectively "Victor"). The
suit sought declaratory relief and an accounting under the Copyright Act. In
addition, the complaint alleged breach of implied contract, quantum meruit, and
unjust enrichment, and federal (Lanham Act) and state unfair competition claims.
The district court dismissed some of the claims under Rule 12(b)(6) and the rest on
summary judgment.
II. ANALYSIS
107
A. Copyright claim
Aalmuhammed claimed that the movie Malcolm X was a "joint work" of which he
was an author, thus making him a co-owner of the copyright. [2] He sought a
declaratory judgment to that effect, and an accounting for profits. He is not
claiming copyright merely in what he wrote or contributed, but rather in the whole
work, as a co-author of a "joint work." [3] The district court granted defendants
summary judgment against Mr. Aalmuhammed's copyright claims. We review de
novo. [4]
Defendants argue that Aalmuhammed's claim that he is one of the authors of a joint
work is barred by the applicable statute of limitations. A claim of authorship of a
joint work must be brought within three years of when it accrues. [5] Because
creation rather than infringement [1231] is the gravamen of an authorship claim, the
claim accrues on account of creation, not subsequent infringement, and is barred
three years from "plain and express repudiation" of authorship. [ … ]
The movie credits plainly and expressly repudiated authorship, by listing

Aalmuhammed far below the more prominent names, as an "Islamic technical
consultant." That repudiation, though, was less than three years before the lawsuit
was filed. The record leaves open a genuine issue of fact as to whether authorship
was repudiated before that. Aalmuhammed testified in his deposition that he
discussed with an executive producer at Warner Brothers his claim to credit as one
of the screenwriters more than three years before he filed suit. Defendants argue
that this discussion was an express repudiation that bars the claim. It was not.
Aalmuhammed testified that the producer told him "there is nothing I can do for
you," but "[h]e said we would discuss it further at some point." A trier of fact could
construe that communication as leaving the question of authorship open for further
discussion. That leaves a genuine issue of fact as to whether the claim is barred by
limitations, so we must determine whether there is a genuine issue of fact as to
whether Aalmuhammed was an author of a "joint work."
Aalmuhammed argues that he established a genuine issue of fact as to whether he

was an author of a "joint work," Malcolm X. The Copyright Act does not define
"author," but it does define "joint work":
A "joint work" is a work prepared by two or more authors with the

intention that their contributions be merged into inseparable or
interdependent parts of a unitary whole. [7]
"When interpreting a statute, we look first to the language." [8] The statutory
language establishes that for a work to be a "joint work" there must be (1) a
copyrightable work, (2) two or more "authors," and (3) the authors must intend their
contributions be merged into inseparable or interdependent parts of a unitary whole.
A "joint work" in this circuit "requires each author to make an independently
copyrightable contribution" to the disputed work. [9] Malcolm X is a copyrightable
work, and it is undisputed that the movie was intended by everyone involved with it
to be a unitary whole. It is also undisputed that Aalmuhammed made substantial
and valuable contributions to the movie, including technical help, such as speaking
Arabic to the persons in charge of the mosque in Egypt, scholarly and creative help,
such as teaching the actors how to pray properly as Muslims, and script changes to
add verisimilitude to the religious aspects of the movie. Speaking Arabic to persons
in charge of the mosque, however, does not result in a copyrightable contribution to
ChapterNumber:
108
the motion picture. Coaching of actors, to be copyrightable, must be turned into an

expression in a form subject to copyright. [10] The same may be said for many of
Aalmuhammed's other activities. Aalmuhammed has, however, submitted evidence
that he rewrote several specific passages of dialogue that appeared in Malcolm X,
and that he wrote scenes relating to Malcolm X's Hajj pilgrimage that were enacted
in the movie. If Aalmuhammed's evidence is accepted, as it must be on summary
judgment, these items would have been independently copyrightable. [1232]
Aalmuhammed, therefore, has presented a genuine issue of fact as to whether he
made a copyrightable contribution. All persons involved intended that
Aalmuhammed's contributions would be merged into interdependent parts of the
movie as a unitary whole. Aalmuhammed maintains that he has shown a genuine
issue of fact for each element of a "joint work."
But there is another element to a "joint work." A "joint work" includes "two or
more authors." [11] Aalmuhammed established that he contributed substantially to the
film, but not that he was one of its "authors." We hold that authorship is required
under the statutory definition of a joint work, and that authorship is not the same
thing as making a valuable and copyrightable contribution. We recognize that a
contributor of an expression may be deemed to be the "author" of that expression
for purposes of determining whether it is independently copyrightable. The issue we
deal with is a different and larger one: is the contributor an author of the joint work
within the meaning of 17 U.S.C. § 101.
By statutory definition, a "joint work" requires "two or more authors." [12] The word
"author" is taken from the traditional activity of one person sitting at a desk with a
pen and writing something for publication. It is relatively easy to apply the word
"author" to a novel. It is also easy to apply the word to two people who work
together in a fairly traditional pen-and-ink way, like, perhaps, Gilbert and Sullivan.
In the song, "I Am the Very Model of a Modern Major General," Gilbert's words
and Sullivan's tune are inseparable, and anyone who has heard the song knows that
it owes its existence to both men, Sir William Gilbert and Sir Arthur Sullivan, as its
creative originator. But as the number of contributors grows and the work itself
becomes less the product of one or two individuals who create it without much
help, the word is harder to apply.
Who, in the absence of contract, can be considered an author of a movie? The word
is traditionally used to mean the originator or the person who causes something to
come into being, or even the first cause, as when Chaucer refers to the "Author of
Nature." For a movie, that might be the producer who raises the money. Eisenstein
thought the author of a movie was the editor. The "auteur" theory suggests that it
might be the director, at least if the director is able to impose his artistic judgments
on the film. Traditionally, by analogy to books, the author was regarded as the
person who writes the screenplay, but often a movie reflects the work of many
screenwriters. Grenier suggests that the person with creative control tends to be the
person in whose name the money is raised, perhaps a star, perhaps the director,
perhaps the producer, with control gravitating to the star as the financial investment
in scenes already shot grows. [13] Where the visual aspect of the movie is especially
important, the chief cinematographer might be regarded as the author. And for, say,
a Disney animated movie like "The Jungle Book," it might perhaps be the animators
and the composers of the music.
The Supreme Court dealt with the problem of defining "author" in new media in
Burrow-Giles Lithographic Co. v. Sarony. [14] The question there was, who is the
author of a photograph: the person who sets it up and snaps the shutter, or the
109
person who makes the lithograph from it. Oscar Wilde, the person whose picture
was at issue, doubtless offered some creative advice as well. The Court decided that
the photographer was the author, quoting various English authorities: "the person
who has superintended the arrangement, who has actually formed the picture by
[1233] putting the persons in position, and arranging the place where the people are
to be—the man who is the effective cause of that"; "àuthor' involves originating,
making, producing, as the inventive or master mind, the thing which is to be
protected"; "the man who really represents, creates, or gives effect to the idea,
fancy, or imagination." [15] The Court said that an "author," in the sense that the
Founding Fathers used the term in the Constitution, [16] was "`he to whom anything
owes its origin; originator; maker; one who completes a work of science or
literature.'" [17]
Answering a different question, what is a copyrightable "work," as opposed to who

is the "author," the Supreme Court held in Feist Publications that "some minimal
level of creativity" or "originality" suffices. [18] But that measure of a "work" would
be too broad and indeterminate to be useful if applied to determine who are
"authors" of a movie. So many people might qualify as an "author" if the question
were limited to whether they made a substantial creative contribution that that test
would not distinguish one from another. Everyone from the producer and director to
casting director, costumer, hairstylist, and "best boy" gets listed in the movie
credits because all of their creative contributions really do matter. It is striking in
Malcolm X how much the person who controlled the hue of the lighting contributed,
yet no one would use the word "author" to denote that individual's relationship to
the movie. A creative contribution does not suffice to establish authorship of the
movie.
Burrow-Giles, in defining "author," requires more than a minimal creative or

original contribution to the work. [19] Burrow-Giles is still good law, and was recently
reaffirmed in Feist Publications. [20] Burrow-Giles and Feist Publications answer two
distinct questions; who is an author, and what is a copyrightable work. [21] Burrow-
Giles defines author as the person to whom the work owes its origin and who
superintended the whole work, the "master mind." [22] In a movie this definition, in
the absence of a contract to the contrary, would generally limit authorship to
someone at the top of the screen credits, sometimes the producer, sometimes the
director, possibly the star, or the screenwriter—someone who has artistic control.
After all, in Burrow-Giles the lithographer made a substantial copyrightable
creative contribution, and so did the person who posed, Oscar Wilde, but the Court
held that the photographer was the author. [23]
The Second and Seventh Circuits have likewise concluded that contribution of
independently copyrightable material to a work intended to be an inseparable whole
will not suffice to establish authorship of a joint work. [24] Although the Second and
Seventh Circuits do not base their decisions on the word "authors" in the statute,
[1234] the practical results they reach are consistent with ours. These circuits have
held that a person claiming to be an author of a joint work must prove that both
parties intended each other to be joint authors. [25] In determining whether the parties
have the intent to be joint authors, the Second Circuit looks at who has decision
making authority, how the parties bill themselves, and other evidence. [26]
In Thomson v. Larson, an off-Broadway playwright had created a modern version of

La Boheme, and had been adamant throughout its creation on being the sole author.
[27]
He hired a drama professor for "dramaturgical assistance and research," agreeing
to credit her as "dramaturg" but not author, but saying nothing about "joint work" or
ChapterNumber:
110
copyright. [28] The playwright tragically died immediately after the final dress
rehearsal, just before his play became the tremendous Broadway hit, Rent. [29] The
dramaturg then sued his estate for a declaratory judgment that she was an author of
Rent as a "joint work," and for an accounting. [30] The Second Circuit noted that the
dramaturg had no decision making authority, had neither sought nor was billed as a
co-author, and that the defendant entered into contracts as the sole author. [31] On
this reasoning, the Second Circuit held that there was no intent to be joint authors
by the putative parties and therefore it was not a joint work. [32]
Considering Burrow-Giles, the recent cases on joint works [33] (especially the
thoughtful opinion in Thomson v. Larson [34] ), and the Gilbert and Sullivan example,
several factors suggest themselves as among the criteria for joint authorship, in the
absence of contract. First, an author "superintend[s]" [35] the work by exercising
control. [36] This will likely be a person "who has actually formed the picture by
putting the persons in position, and arranging the place where the people are to be-
the man who is the effective cause of that," [37] or "the inventive or master mind"
who "creates, or gives effect to the idea." [38] Second, putative coauthors make
objective manifestations of a shared intent to be coauthors, as by denoting the
authorship of The Pirates of Penzance as "Gilbert and Sullivan." [39] We say
objective manifestations because, were the mutual intent to be determined by
subjective intent, it could become an instrument of fraud, were one coauthor to hide
from the other an intention to take sole credit for the work. Third, the audience
appeal of the work turns on both contributions and "the share of each in its success
cannot be appraised." [40] Control in many cases will be the most important factor.
[1235] The best objective manifestation of a shared intent, of course, is a contract
saying that the parties intend to be or not to be co-authors. In the absence of a
contract, the inquiry must of necessity focus on the facts. The factors articulated in
this decision and the Second and Seventh Circuit decisions cannot be reduced to a
rigid formula, because the creative relationships to which they apply vary too much.
Different people do creative work together in different ways, and even among the
same people working together the relationship may change over time as the work
proceeds.
Aalmuhammed did not at any time have superintendence of the work. [41] Warner
Brothers and Spike Lee controlled it. Aalmuhammed was not the person "who has
actually formed the picture by putting the persons in position, and arranging the
place ...." [42] Spike Lee was, so far as we can tell from the record. Aalmuhammed,
like Larson's dramaturg, could make extremely helpful recommendations, but Spike
Lee was not bound to accept any of them, and the work would not benefit in the
slightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over
the work, and absence of control is strong evidence of the absence of co-authorship.
Also, neither Aalmuhammed, nor Spike Lee, nor Warner Brothers, made any
objective manifestations of an intent to be coauthors. Warner Brothers required
Spike Lee to sign a "work for hire" agreement, so that even Lee would not be a co-
author and co-owner with Warner Brothers. It would be illogical to conclude that
Warner Brothers, while not wanting to permit Lee to own the copyright, intended to
share ownership with individuals like Aalmuhammed who worked under Lee's
control, especially ones who at the time had made known no claim to the role of co-
author. No one, including Aalmuhammed, made any indication to anyone prior to
litigation that Aalmuhammed was intended to be a co-author and co-owner.
Aalmuhammed offered no evidence that he was the "inventive or master mind" of

the movie. He was the author of another less widely known documentary about
111
Malcolm X, but was not the master of this one. What Aalmuhammed's evidence
showed, and all it showed, was that, subject to Spike Lee's authority to accept them,
he made very valuable contributions to the movie. That is not enough for co-
authorship of a joint work.
The Constitution establishes the social policy that our construction of the statutory
term "authors" carries out. The Founding Fathers gave Congress the power to give
authors copyrights in order "[t]o promote the progress of Science and useful
arts."[43] Progress would be retarded rather than promoted, if an author could not
consult with others and adopt their useful suggestions without sacrificing sole
ownership of the work. Too open a definition of author would compel authors to
insulate themselves and maintain ignorance of the contributions others might make.
Spike Lee could not consult a scholarly Muslim to make a movie about a religious
conversion to Islam, and the arts would be the poorer for that.
The broader construction that Aalmuhammed proposes would extend joint

authorship to many "overreaching contributors," [44] like the dramaturg in Thomson,
and deny sole authors "exclusive authorship status simply because another person
render[ed] some form of assistance." [45] Claimjumping by research assistants,
editors, and former spouses, lovers and friends would endanger authors who talked
with people about what they were [1236] doing, if creative copyrightable
contribution were all that authorship required.
Aalmuhammed also argues that issuance of a copyright registration certificate to

him establishes a prima facie case for ownership. A prima facie case could not in
any event prevent summary judgment in the presence of all the evidence rebutting
his claim of ownership. "The presumptive validity of the certificate may be rebutted
and defeated on summary judgment." [46] The Copyright Office stated in its response
to Aalmuhammed's application for copyright (during the pendency of this litigation)
that his claims "conflict with previous registration claims," and therefore the
Copyright Office had "several questions" for him. One of the questions dealt with
the "intent" of "other authors," i.e., Warner Brothers. The evidence discussed above
establishes without genuine issue that the answers to these questions were that
Warner Brothers did not intend to share ownership with Aalmuhammed.
Because the record before the district court established no genuine issue of fact as
to Aalmuhammed's co-authorship of Malcolm X as a joint work, the district court
correctly granted summary judgment dismissing his claims for declaratory
judgment and an accounting resting on co-authorship.
B. Quantum meruit
Aalmuhammed alleged in his complaint that defendants accepted his services,
knowing that they were not being provided gratuitously, yet paid him neither the
fair value of his services nor even his full expenses. He wrote script material,
particularly for the important Islamic religious scenes, arranged with the Egyptians
in charge of the mosque for the movie to be shot inside (Aalmuhammed is a Muslim
and was the only Arabic-speaking person in the production crew), taught the actors
how to pray as Muslims and directed the prayer scenes, and talked to Islamic
authorities after the movie was made to assure their support when it was exhibited.
These services were very important. The movie would be a dark tale of hate, but for
the redemptive, uplifting Islamic religious scenes.
ChapterNumber:
112
All the services were performed in New York and in Egypt (where the Hajj scenes
were shot). Aalmuhammed's fifth, sixth and seventh claims articulated this claim
variously as quasicontract, quantum meruit, and unjust enrichment. These claims
are different from Aalmuhammed's claim to authorship of a joint work. Even
though he was not an author, it is undisputed that he made a substantial contribution
to the film. It may be that the producer or director, seeing that Aalmuhammed was
performing valuable and substantial services and expending substantial amounts for
travel and lodging, in the apparent expectation of reimbursement, had a duty to sign
him up as an employee or independent contractor, obtain his acknowledgment that
he was working gratuitously or perhaps for Denzel Washington, or eject him from
the set. [47] We need not decide that, because the question on review is limited to
which state's statute of limitations applies.
[…]
Because New York has the stronger interest and would suffer more damage than
California if its law were not applied, New York's six year statute of limitations
governs. The claims were brought within six years of when they accrued. We
therefore vacate the dismissal of Aalmuhammed's implied contract, quantum
meruit, and unjust enrichment claims and remand them for further proceedings.
[…]
AFFIRMED in part, REVERSED and REMANDED in part. Each party to bear its
own costs.
[1] The panel unanimously finds this case suitable for decision without oral
argument. See Fed. R.App. P. 34(a)(2). This dispute was originally submitted and
argued on May 5, 1998 as 97-55403. However, on October 29, 1998, that appeal
was dismissed for want of jurisdiction. The District Court had entered a judgment
that stated "The Court may amend or amplify this order with a more specific
statement of the grounds for its decision." National Distrib. Agency v. Nationwide
Mutual Ins. Co., 117 F.3d 432 (9th Cir.1997), held that the identical language
prevented review because "the court left open the possibility that the court might
change its ruling," so no final judgment was entered. On December 10, 1998, the
District Court amended its order by removing that one sentence, thus making its
order final. The parties then appealed the District Court's decision again. On April
19, 1999, this court granted appellant's motion to submit the case without oral
argument, to take judicial notice of the briefs and excerpts filed in 97-55403, and to
allow filing of letter briefs supplementing the earlier briefs.
[2] 17 U.S.C. §§ 101, 201(a).
[3] Cf. Thomson v. Larson, 147 F.3d 195, 206 (2nd Cir.1998).
[4] See Covey v. Hollydale Mobilehome Estates, 116 F.3d 830, 834 (9th Cir.1997),
amended by, 125 F.3d 1281 (1997).
[5] See 17 U.S.C. § 507(b)[ … ]
[6] Zuill, 80 F.3d at 1371.
[7] 17 U.S.C. § 101.

113
[8] Richardson v. United States, 526 U.S. 813, 119 S.Ct. 1707, 1710, 143 L.Ed.2d
985 (1999).
[9] Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990).
[10] See Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990).
[11] 17 U.S.C. § 101.
[12] 17 U.S.C. § 101.
[13] See Richard Grenier, Capturing the Culture, 206-07 (1991).
[14] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 61, 4 S.Ct. 279, 28
L.Ed. 349 (1884).
[15] Id. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B.D. 627 (1883)).
[16] U.S. Const. Art. 1, § 8, cl. 8.
[17] Burrow-Giles, 111 U.S. at 58, 4 S.Ct. 279 (quoting Worcester).
[18] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340,
345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
[19] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58, 4 S.Ct. 279, 28
L.Ed. 349 (1883).
[20] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340,
346, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
L.Ed. 349 (1884); Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499
U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
[22] Burrow-Giles, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11
Q.B.D. 627 (1883)).
[23] Id. at 61, 4 S.Ct. 279.
[24] Thomson v. Larson, 147 F.3d 195, (2nd Cir. 1998); Erickson v. Trinity Theatre,
Inc., 13 F.3d 1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2d Cir.1991).
[25] Thomson, 147 F.3d at 202-05.
[26] Id.
[27] Id. at 197.
[28] Id.
[29] Id. at 198.
[30] Id.
[31] Id. at 202-04.
[32] Id. at 202-24.

ChapterNumber:
114
[33] See Thomson v. Larson, 147 F.3d 195, (2nd Cir.1998); Erickson v. Trinity
Theatre, Inc., 13 F.3d 1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2nd
Cir.1991).
[34] Thomson v. Larson, 147 F.3d 195 (2nd Cir.1998).
[35] Burrow-Giles v. Sarony, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v.
Jackson, 11 Q.B. div. 627 (1883)).
[36] Thomson, 147 F.3d at 202.
[37] Burrow-Giles v. Sarony, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v.
Jackson, 11 Q.B. Div. 627 (1883)).
[38] Id.
[39] Cf. Thomson v. Larson, 147 F.3d 195, 202 (2nd Cir.1998).
[40] Edward B. Marks Music Corp. v. Jerry Vogel Music Co., Inc., 140 F.2d 266,
267 (2nd Cir. 1944) (Hand, J.) modified by, 140 F.2d 268 (1944).
[41] See Burrow-Giles v. Sarony, 111 U.S. 53, 61, 4 S.Ct. 279, 28 L.Ed. 349
(1883).
[42] Id.
[43] U.S. Const. Art. 1, § 8, cl. 8.
[44] Thomson, 147 F.3d at 200 (internal quotations omitted).
[45] Id. at 202 (citing Childress v. Taylor, 945 F.2d 500, 504 (1991)).
[46] S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086 (9th Cir.1989).
[47] See 2 George E. Palmer, Law of Restitution § 10.11, at 463 (1978) ("When the
plaintiff voluntarily submits an idea to the defendant which the defendant uses to
his economic advantage, without any express agreement to pay the plaintiff for such
use, ... the plaintiff will be able [in some circumstances] to recover the reasonable
value of the use of the idea in a contract action.").
[48] Waggoner v. Snow, Becker, Kroll, Klaris & Krauss, 991 F.2d 1501, 1507 (9th
Cir.1993) (citing Ledesma v. Jack Stewart Produce, Inc., 816 F.2d 482, 484 (9th
Cir.1987)).
[49] Waggoner v. Snow, Becker, Kroll, Klaris & Krauss, 991 F.2d 1501, 1507 (9th
Cir.1993) (citing Ledesma v. Jack Stewart Produce, Inc., 816 F.2d 482, 484 (9th
Cir.1987)).
[50] Id.
[51] Id.
[52] See Rosenthal v. Fonda, 862 F.2d 1398, 1403 (9th Cir.1988).
[53] 15 U.S.C. §§ 1117, 1125.
[54] Cal. Bus. & Prof.Code § 17203.
[55] See Cohen v. Stratosphere Corp., 115 F.3d 695, 700 (9th Cir.1997).
115
[56] See Campanelli v. Bockrath, 100 F.3d 1476, 1479 (9th Cir.1996).
[57] Smith v. Montoro, 648 F.2d 602, 607 (9th Cir.1981); See also Lamothe v.
Atlantic Recording Corp., 847 F.2d 1403, 1406-07 (9th Cir.1988).
[58] Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir.1994).
[59] See Subafilms, Ltd. v. MGM-Pathe Communications, 24 F.3d 1088, 1095-96

(9th Cir. 1994) (en banc).

5.1.3
Lindsay v. The Wrecked and Abandoned Vessel

R.M.S. Titanic

97 Civ. 9248 (HB)
ALEXANDER LINDSAY, Plaintiff

-against-
The Wrecked and Abandoned Vessel R.M.S.
TITANIC, HER ENGINES, TACKLE,
EQUIPMENT, FURNISHINGS, Located
Within One Nautical Mile of a Point Located
at 41°, 43'32" North Latitude and 49°, 56'49"
West, and ARTIFACTS, and VIDEO Located
at 17 Battery Place, New York, NY, in rem,
and R.M.S. TITANIC, INC.,TITANIC
VENTURES LIMITED PARTNERSHIP,
OCEANIC RESEARCH AND
EXPLORATION LIMITED, SUAREZ
CORPORATION INDUSTRIES, INC., and
DISCOVERY COMMUNICATIONS, INC.,
d.b.a. THE DISCOVERY CHANNEL, in
personam, Defendants. [1]
United States District Court Southern District of New York.
October 13, 1999.
[…]
HAROLD BAER, JR., District Judge:
[…]
ChapterNumber:
116
I. BACKGROUND
The plaintiff, a citizen of the United Kingdom and resident of the State of New
York, is an independent documentary film maker engaged in the business of
creating, producing, directing, and filming documentaries: (Amended Complaint
("Am. Compl.") ¶ 4.) Defendant R.M.S. Titanic, Inc. ("RMST") is a publicly traded
U.S. corporation, organized under the laws of the State of Florida, which conducts
business within and has its office and principal place of business in New York City.
(Am. Compl. ¶ 8.) Defendant George Tulloch ("Tulloch") is a shareholder,
president and member of the board of directors of RMST. (Am. Compl. ¶ 7.)
Defendant Titanic Ventures Limited Partnership ("TVLP") is a limited partnership
organized under the laws of Connecticut and currently doing business in the State
of New York. [3] (Am. Compl. ¶ 9.) Defendant Oceanic Research and [3] Exploration
Limited ("OREL") is a Delaware corporation and general partner of TVLP.
Defendant Tullqch is also the president and sole shareholder of OREL (defendants
RMST, Tulloc, TVLP and OREL collectively as "RMST"). Defendant Suarez
Corporation, Inc. ("SCI") is an Ohio corporation doing business in the State of New
York. Defendant Discovery Communications, Inc. ("DCI") is a Maryland
corporation doing business as "The Discovery Channel", and is engaged in the
business of making, financing and distributing documentary films. (Am. Compl. ¶
13.)
In 1993, RMST was awarded exclusive status as salvor-in-possession of the Titanic

wreck site and is therefore authorized to carry on salvage operations at the vessel's
wreck site. (Am. Compl. ¶¶ 8, 20.) As a condition of obtaining these rights, RMST
allegedly agreed to maintain all the artifacts it recovered during the salvage
operations for historical verification, scientific education, and public awareness.
(Am. Compl. ¶ 22.)
In 1994, the plaintiff, under contract with a British television company, filmed and
directed the British documentary film, "Explorers of the Titanic," a chronicle of
RMST's third salvage expedition of the Titanic. (Am. Compl. ¶ 25.) To film this
documentary, Lindsay sailed with RMST and the salvage expedition crew to the
wreck site and remained at sea for approximately one month. (Am. Compl. ¶ 27.)
The plaintiff alleges that during and after filming this documentary in 1994, he
conceived a new film project for the Titanic wreck using high illumination lighting
equipment. (Am. Compl. ¶ 28.)
The plaintiff later discussed his idea with defendant George Tulloch and, according
to the plaintiff, the two agreed to work together on the venture. (Am. Compl. ¶¶
29.) In March 1995, the plaintiff traveled to New York and developed a
comprehensive business plan for the new film project entitled, ''Titanic: A
Memorial Tribute." (Am. Compl ¶ 30.) Tulloch allegedly informed the [4] plaintiff
that he would agree to the plan — which purported to include provisions for
compensating Lindsay for his work on the project — but that Tulloch would have to
obtain approval from the RMST Board of Directors. (Am. Compl. ¶ 31.) The
plaintiff agreed to join RMST to raise money not only for the film project, but for
other aspects of the 1996 salvage operation as well. (Am. Compl. ¶ 32.)
Lindsay moved into an office at RMST in and around April 1995. Around this time,
tulloch repeatedly told Lindsay that he would obtain approval from RMSTs Board
of Directors for a contract for the plaintiff based upon the terms of Lindsay's film
plan. (Am. Compl. ¶ 33.) The contract was to include terms of Lindsay's
117
compensation, including sharing in the profits derived from any film, video and still
photographs obtained from the 1996 salvage operation. (Am. Compl. ¶ 36.) This
contract was never executed.
As part of his pre-production efforts, the plaintiff created various storyboards for
the film, a series of drawings which incorporated images of the Titanic by
identifying specific camera angles and shooting sequences "that reflect[ed]
Plaintiff's [sic] creative inspiration and force behind his concept for shooting the
Subject Work." (Am. Compl. ¶ 38.) The plaintiff also alleges that he, along with
members of his film team, designed the huge underwater light towers that were later
used to make the film. (Am. Compl. ¶ 43.) Lindsay also "personally constructed the
light towers" and thereafter "for approximately 3-4 weeks directed, produced, and
acted as the cinematographer of the Subject Work; underwater video taping of the
Titanic wreck site, and otherwise participated in the 1996 salvage operation." (Am.
Compl. ¶¶ 45-46.) He also directed the filming of the wreck site from on board the
salvage vessel "Ocean Voyager" after leading daily planning sessions with the crew
of the Nautile, the submarine used to transport the film equipment and
photographers to the underwater wreck site. (Am. Compl. ¶ 47.) The purpose of
these sessions was to provide the [5] photographers with "detailed instructions for
positioning and utilizing the light towers." Id.)
The plaintiff now alleges that he was never fully compensated for his services and
that, inter alia, the defendants are now "unlawfully profiting from the exploitation
of the" film project at issue. (Am. Compl. ¶¶ 57-60.)
[…]
The plaintiffs amended complaint now includes 13 causes of action, including those
based on copyright infringement, salvage claims, and state law causes of action for
fraud, breach of contract, and conversion. The defendants now move pursuant to
Rule 12(b)(6) of the Federal Rules of Civil Procedure to dismiss Lindsay's
copyright claims, and the plaintiff cross-moves for summary judgment on his
copyright and salvage claims.
[6] II. DISCUSSION
[…]
To withstand a motion to dismiss, a complaint based on copyright infringement

must allege: (1) which specific original works are the subject of the copyright
claim; (2) that the plaintiff owns the copyrights in those works; (3) that the
copyrights have been registered in accordance with the statute; and (4) "by what
acts during what time" the defendant infringed the copyright. Kelly v. L.L. Cool J.,
145 F.R.D. 32, 35 (1992), aff'd, 23 F.3d 398 (2d Cir.), cert. denied, 513 U.S. 950
(1994).
Although the complaint is not a model of clarity, it meets for the most part, these
standards. With regard to the first element, the complaint refers to the plaintiffs
copyright interest in the "Subject Work," and — as the defendants point out —
makes several different references to what [7] exactly this work constitutes (See
Am. Compl. ¶¶ 28, 76, 78.) [4] However, piecing together these various allegations,
ChapterNumber:
118
and drawing all reasonable inferences in the plaintiff's favor, it becomes clear for
purposes of this motion that the "Subject Work" consists of the illuminated
underwater footage that was filmed utilizing the large light towers that Lindsay
helped design and construct. (See Am. Compl. ¶ 46.) Regarding the second and
third elements, the plaintiff alleges that he owns these works, (Am. Compl. ¶ 55),
and that they were accepted and registered with the U.S. Register of Copyrights.
(Am. Compl. ¶ 78.)
As to the fourth element — how and when the defendants infringed the copyright
— the plaintiff has satisfied his burden as to all the defendants except SCI. With
respect to RMST, the complaint alleges that RMST "unlawfully enter[ed] into the
exclusive license agreement with DCI," (Am. Compl. ¶ 62), "enered [sic] into
contracts conveying video clips and still images . . . to various Titanic artifacts
exhibitions throughout the world," and "RMST displays images from the Subject
Work on its INTERNET web site." (Am. Compl. ¶ 63.) The complaint alleges that
DCI incorporated portions of the illuminated footage into three separate
documentaries that aired on certain dates in 1997. (Am. Compl.¶ 64.)
[…]
Authorship
The defendants first argue that the plaintiff cannot have any protectable right in the
illuminated footage since he did not dive to the ship and thus did not himself
actually photograph the wreckage. This argument, however, does not hold water.
The Copyright Act of 1976 provides that copyright ownership "vests initially in the
author or authors of the work." 17 U.S.C. §201(a). Generally speaking, the author
of a work is the person "who actually creates the work, that is, the person who
translates an idea into a fixed, tangible expression entitled to copyright protection."
Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989) (citing 17
U.S.C. §102). In the context of film footage and photography, it makes intuitive
sense that the "author" of a work is the individual or individuals who took the
pictures, i.e. the photographer. However, the concept is broader than as argued by
the defendants.
For over 100 years, the Supreme Court has recognized that photographs may
receive copyright protection in ''so far as they are representatives of original
intellectual conceptions of the author" Burrow-Giles Lithographic Co. v. Sarony,
111 U.S . 53, 58 (1884). An individual claiming to be an author for copyright
purposes must show "the existence of those facts of originality, of intellectual
production, of thought, and conception." Feist Publications. Inc. v. Rural Telephone
Service Company Inc., 499 U.S. 340, 346-347 (1991) (citing Burrow-Giles, 111
U.S. at 59-60). [9] Some elements of originality in a photograph includes "posing
the subjects, lighting, angle, selection of film and camera, evoking the desired
expression, and almost any variant involved." Rogers v. Koons, 960 F.2d 301, 307
(2d Cir.), cert. denied, 506 U.S. 934 (1992). Taken as true, the plaintiffs allegations
meet this standard. Lindsay's alleged storyboards and the specific directions he
provided to the film crew regarding the use of the lightowers and the angles from
which to shoot the wreck all indicate that the final footage would indeed be the
product of Lindsay's "original intellectual conceptions."
119
The fact that Lindsay did not literally perform the filming, i.e. by diving to the
wreck and operating the cameras, will not defeat his claims of having "authored"
the illuminated footage. The plaintiff alleges that as part of his pre-production
efforts, he created so-called "storyboards," a series of drawings which incorporated
images of the Titanic by identifying specific camera angles and shooting sequences.
(Am. Compl. ¶ 38.) During the expedition itself, Lindsay claims to have been "the
director, producer and cinematographer" of the underwater footage. (Am. Compl. ¶
46.) As part of this role, Lindsay alleges that he directed daily planning sessions
with the film crew to provide them with "detailed instructions for positioning and
utilizing the light towers." (Am. Compl. ¶ 47.) Moreover, the plaintiff actually
"directed the filming" of the Titanic from on board the Ocean Voyager, the salvage
vessel that held the crew and equipment. (Am. Compl. ¶ 47) Finally, Lindsay
screened the footage at the end of each day to "confirm that he had obtained the
images he wanted." (Am. Compl. ¶ 48.)
All else being equal, where a plaintiff alleges that he exercised such a high degree
of control over a film operation — including the type and amount of lighting used,
the specific camera angles to be employed, and other detail-intensive artistic
elements of a film — such that the final product [10] duplicates his conceptions and
visions of what the film should look like, the plaintiff may be said "author" within
the meaning of the Copyright Act.
Indeed, the instant case is analogous to Andrien v. Southern Ocean County

Chamber of Commerce, 927 F.2d 132 (3d Cir. 1991). There, the Third Circuit
recognized that "a party can be considered an author when his or her expression of
an idea is transposed by mechanical or rote transcription into tangible form under
the authority of the party." Id. at 135. The plaintiff in Andrien had received a
copyright for a map of Long Beach Island, New Jersey which was created from a
compilation of pre-existing maps and the plaintiffs personal survey of the island. To
transform his concepts and the information he had gathered into the final map, the
plaintiff hired a printing company to print the map in final form. The plaintiff
testified that the maps were made by the printer "with me at her elbow practically"
and that he spent time each day at the print shop during the weeks the map was
made, directing the map's preparation in specific detail. In reversing the lower
court's granting of summary judgment against the plaintiff, the court noted that the
printers had not "intellectually modified or technically enhanced the concept
articulated by Andrien," nor did they "change the substance of Andrien's original
expression." [ … ]It is too early to tell whether the allegations of the plaintiff here
satisfy the copyright laws, but crediting his story as I must, dismissal is
unwarranted at this stage of the litigation.
The defendants argue that Geshwind v. Garrick, 734 F.Supp. 644 (S.D.N.Y. 1990)
[ … ]mandates dismissal. That case, however, is inapposite. The plaintiff there, a
producer of computer graphics animation and special effects, had contracted to
produce a 15-second animation piece. The plaintiff hired Digital, a computer
graphics company to, in essence, produce the animated piece. The court in
Geshwind found that Digital, by its employee, was the "author" within the meaning
of the Copyright Act. In ruling that the plaintiff was not an "author," Judge
Patterson found that the plaintiff there had made only minimal contributions to the
final product and had only some, if any, of his "suggestions" incorporated into the
final product. Id. at 650. This is in stark contrast to the case at bar where Lindsay
alleges that his contributions — not suggestions — were anything but minimal, and
he describes himself as the driving force behind the final film product at issue here.
ChapterNumber:
120
[…] Joint-Authorship
In the alternative, the defendants argue that Lindsay is, at best, a joint author of the
underwater footage with RMST. This contention is based on the notion that
Christian Petron, the main photographer of the film, was at least a joint-author of
the footage with the plaintiff. Since Petron's participation was accomplished under
the auspices of a work for hire agreement with RMST, the defendants' argument
continues, any rights to authorship Petron may have received via his filming were
conferred upon RMST. As a joint author with the plaintiff then, RMST cannot be
liable for copyright infringement since each co-author acquires an undivided
interest in the entire work and has the right to use the work as he or she pleases.
Thomson v. Larson, 147 F .3d 195; 199 (2d Cir. 1998); [ … ] Similarly, any
copyright claim against DCI would fail since RMST, as a joint author, has the right
to license the joint work to third parties. Thomson, 147 F.3d at 199.
[12] A "joint work" under the Copyright Act is one "prepared by two or more
authors with the Intention that their contributions be merged into inseparable or
interdependent parts of a unitary whole." 17 U.S.C. §101. To prove co-authorship
status, it must be shown by the individual claiming co-authorship status that each of
the putative co-authors (1) fully intended to be co-authors, and (2) made
independently copyrightable contributions to the work. [ … ]
Drawing all inferences in favor of Lindsay, I conclude that no such status existed in
the case at bar. With regard to the intent prong of the analysis, "[a]n important
indicator of authorship is a contributor's decision making authority over what
changes are made and what is included in a work." [ … ]In other words, where one
contributor retains a so-called "veto" authority over what is included in a work,
such control is a strong indicator that he or she does not intend to be co-authors
with the other contributor. According to the pleadings, the plaintiff exercised
virtually total control over the content of the film as "the director, producer and
cinematographer" of the production. (Am. Compl. ¶ 46.) Additionally, he briefed
the photographers with regards to, inter alia, the specific camera angles they were
to employ, (Am. Compl. ¶ 47), and Lindsay screened the film each day to make
sure the proper footage was obtained. (Am. Compl. ¶ 48.) Based on these
allegations, and implicit in the notion that the film crew was simply "following
directions," [5] Lindsay retained what appeared to be exclusive authority [13] over
what was included in the footage. Assuming as I must at this stage of the litigation
that this is true, it can hardly be said that the plaintiff intended Petron — or any
other contributor — to be a coauthor. Accordingly, the claims by RMST that it —
by virtue of Petron's role as a photographer under a work-for-hire agreement — was
a joint-author within the meaning of the Copyright Act must fail.
[…] Accounting
Lindsay's fifth cause of action seeks an accounting by DCI, SCI, and RMST of
moneys these defendants received from their unauthorized use of the copyrighted
footage at issue. Regardless of whether this Court — or a jury — ultimately finds
that Lindsay and RMST are joint authors, with respect to DCI, the plaintiffs
complaint here sinks under its own weight.
121
The duty to provide an accounting from profits obtained runs only between co-
owners of a copyright. Margo v. Weiss, No. 96 Civ. 3842, 1998 WL 2558, at *9
(S.D.N.Y. Jan. 5, 1998) ("[T]he duty to account for profits presupposes a
relationship as co-owners of the copyright. . . ."); cf. Thomson, 147 F.3d at 199
("[E]ach joint author has the right to use or to license the work as he or she wishes,
subject only to the obligation to account to the other joint owner for any profits that
are made.") (emphasis added); Kaplan v. Vincent, 937 F.Supp. 307, 316 (S.D.N.Y.
1996) ("[E]ach author maintains the right to use or license the work, subject only to
an accounting to the other co-owner.") (emphasis added). Because DCI is only a
licensee of a putative joint owner of the copyright at issue here, Lindsay's claim for
an accounting fails as a matter of law and must be [14] dismissed. [6]
[…]
[1] Prior to the issuance of this opinion, the plaintiff dismissed from the case
defendant Ben Suarez, in his individual capacity as president of Suarez
Corporation, Inc., pursuant to Rule 41(a)(1) of the Fed. R. Civ. P.
[2] Although the Court has reviewed the voluminous supplementary submissions
provided with and after the filing of these motions, I am excluding this virtual sea
of materials and decline to convert the defendants' motions to dismiss to motions
for summary judgment. Accordingly, I base my ruling on these motions solely on
the pleadings. See Amaker v. Weiner, 179 F.3d 48, 51-52 (2d Cir. 1999) (finding
that the inclusion of affidavits or exhibits with a motion to dismiss does not require
conversion to a motion for summary judgment provided the court does not rely on
such submissions in deciding the motion to dismiss). In any event, a cursory review
of the documents submitted with these motions reveals that the factual waters of
this case are sufficiently muddied so as to warrant denial of summary judgment at
this juncture as well.
[3] In May 1993, RMST acquired all the assets and assumed the liabilities of TVLP,
a limited partnership that was formed in 1987 for purposes of exploring the Titanic
wreck site. (Am. Compl. ¶ 19.)
[4] Lindsay defines the "Subject Work" as: "a new film project for the Titanic
wreck using high illumination lighting equipment" (Am. Compl. ¶ 28); "the
documentary film Titanic: In a New Light" (Am. Compl., 76); and "the illuminated
underwater video footage." (Am. Compl. ¶ 78.)
[5] Along these lines, Lindsay's alleged control over the filming rendered the film
crew's role to one of no more than "rote or mechanical transcription that [did] not
require intellectual modification," Andrien, 927 F.2d at 135, a contribution that
would not be independently copyrightable. Id.; Thomson, 147 F.3d at 200. RMST's
claims of joint-authorship would thus fail on this prong as well.
[6] Because the plaintiff fails to state a cognizable copyright claim against
defendant SCI, as discussed herein, count five is also dismissed as to defendant
SCI.
[7] These causes of action are as follows: declaration of copyright ownership;

copyright infringement by RMST; copyright infringement by DCI; and an
accounting, with respect to RMST only.
ChapterNumber:
122
[8] These causes of action, not at issue in the instant motions to dismiss, inculude:
breach of contract; breach of implied covenant of good faith; quantum meruit;
conversion; "money lent"; fraud; fraudulent misrepresentation; declaration of co-
salvor status; and common law fraud and deceit.

5.1.4
Najma Heptulla v. Orient Longman Ltd. and others


5.2

Works for Hire

5.2.1
Community For Creative Non-Violence et el. v. Reid


490 U.S. 730, 104 L. Ed. 2d 811, 109 S. Ct. 2166,
1989 U.S. LEXIS 2727, SCDB 1988-100
No. 88-293
1989-06-05
490 U.S. 730 (1989)
COMMUNITY FOR CREATIVE NON-VIOLENCE
ET AL.
v.
REID
[…]
Decided June 5, 1989
[…]
JUSTICE MARSHALL delivered the opinion of the Court.

123
In this case, an artist and the organization that hired him to produce a sculpture
contest the ownership of the copyright in that work. To resolve this dispute, we
must construe the "work made for hire" provisions of the Copyright Act of 1976
(Act or 1976 Act), 17 U. S. C. §§ 101 and 201(b), and in particular, the provision in
§ 101, which defines as a "work made for hire" a "work prepared by an employee
within the scope of his or her employment" (hereinafter § 101(1)).
[733] I
Petitioners are the Community for Creative Non-Violence (CCNV), a nonprofit
unincorporated association dedicated to eliminating homelessness in America, and
Mitch Snyder, a member and trustee of CCNV. In the fall of 1985, CCNV decided
to participate in the annual Christmastime Pageant of Peace in Washington, D. C.,
by sponsoring a display to dramatize the plight of the homeless. As the District
Court recounted:
"Snyder and fellow CCNV members conceived the idea for the nature of
the display: a sculpture of a modern Nativity scene in which, in lieu of the
traditional Holy Family, the two adult figures and the infant would appear
as contemporary homeless people huddled on a streetside steam grate. The
family was to be black (most of the homeless in Washington being black);
the figures were to be life-sized, and the steam grate would be positioned
atop a platform 'pedestal,' or base, within which special-effects equipment
would be enclosed to emit simulated 'steam' through the grid to swirl
about the figures. They also settled upon a title for the work — 'Third
World America' — and a legend for the pedestal: 'and still there is no
room at the inn.'" 652 F. Supp. 1453, 1454 (DC 1987).
Snyder made inquiries to locate an artist to produce the sculpture. He was referred
to respondent James Earl Reid, a Baltimore, Maryland, sculptor. In the course of
two telephone calls, Reid agreed to sculpt the three human figures. CCNV agreed to
make the steam grate and pedestal for the statue. Reid proposed that the work be
cast in bronze, at a total cost of approximately $100,000 and taking six to eight
months to complete. Snyder rejected that proposal because CCNV did not have
sufficient funds, and because the statue had to be completed by December 12 to be
included in the pageant. Reid then suggested, and Snyder agreed, that the [734]
sculpture would be made of a material known as "Design Cast 62," a synthetic
substance that could meet CCNV's monetary and time constraints, could be tinted to
resemble bronze, and could withstand the elements. The parties agreed that the
project would cost no more than $15,000, not including Reid's services, which he
offered to donate. The parties did not sign a written agreement. Neither party
mentioned copyright.
After Reid received an advance of $3,000, he made several sketches of figures in

various poses. At Snyder's request, Reid sent CCNV a sketch of a proposed
sculpture showing the family in a crechelike setting: the mother seated, cradling a
baby in her lap; the father standing behind her, bending over her shoulder to touch
the baby's foot. Reid testified that Snyder asked for the sketch to use in raising
funds for the sculpture. Snyder testified that it was also for his approval. Reid
sought a black family to serve as a model for the sculpture. Upon Snyder's
suggestion, Reid visited a family living at CCNV's Washington shelter but decided
ChapterNumber:
124
that only their newly born child was a suitable model. While Reid was in
Washington, Snyder took him to see homeless people living on the streets. Snyder
pointed out that they tended to recline on steam grates, rather than sit or stand, in
order to warm their bodies. From that time on, Reid's sketches contained only
reclining figures.
Throughout November and the first two weeks of December 1985, Reid worked
exclusively on the statue, assisted at various times by a dozen different people who
were paid with funds provided in installments by CCNV. On a number of occasions,
CCNV members visited Reid to check on his progress and to coordinate CCNV's
construction of the base. CCNV rejected Reid's proposal to use suitcases or
shopping bags to hold the family's personal belongings, insisting instead on a
shopping cart. Reid and CCNV members did not discuss copyright ownership on
any of these visits.
[735] On December 24, 1985, 12 days after the agreed-upon date, Reid delivered
the completed statue to Washington. There it was joined to the steam grate and
pedestal prepared by CCNV and placed on display near the site of the pageant.
Snyder paid Reid the final installment of the $15,000. The statue remained on
display for a month. In late January 1986, CCNV members returned it to Reid's
studio in Baltimore for minor repairs. Several weeks later, Snyder began making
plans to take the statue on a tour of several cities to raise money for the homeless.
Reid objected, contending that the Design Cast 62 material was not strong enough
to withstand the ambitious itinerary. He urged CCNV to cast the statue in bronze at
a cost of $35,000, or to create a master mold at a cost of $5,000. Snyder declined to
spend more of CCNV's money on the project.
In March 1986, Snyder asked Reid to return the sculpture. Reid refused. He then
filed a certificate of copyright registration for "Third World America" in his name
and announced plans to take the sculpture on a more modest tour than the one
CCNV had proposed. Snyder, acting in his capacity as CCNV's trustee, immediately
filed a competing certificate of copyright registration.
Snyder and CCNV then commenced this action against Reid and his photographer,
Ronald Purtee, [1] seeking return of the sculpture and a determination of copyright
ownership. The District Court granted a preliminary injunction, ordering the
sculpture's return. After a 2-day bench trial, the District Court declared that "Third
World America" was a "work made for hire" under § 101 of the Copyright Act and
that Snyder, as trustee for CCNV, was the exclusive owner of the copyright in the
sculpture. 652 F. Supp., at 1457. The court reasoned that Reid had been an
"employee" of CCNV within the meaning of § 101(1) because CCNV was the
motivating force in the statue's production. Snyder and [736] other CCNV
members, the court explained, "conceived the idea of a contemporary Nativity scene
to contrast with the national celebration of the season," and "directed enough of
[Reid's] effort to assure that, in the end, he had produced what they, not he,
wanted." Id., at 1456.
The Court of Appeals for the District of Columbia Circuit reversed and remanded,
holding that Reid owned the copyright because "Third World America" was not a
work for hire. 270 U. S. App. D. C. 26, 35, 846 F. 2d 1485, 1494 (1988). Adopting
what it termed the "literal interpretation" of the Act as articulated by the Fifth
Circuit in Easter Seal Society for Crippled Children & Adults of Louisiana, Inc. v.
Playboy Enterprises, 815 F. 2d 323, 329 (1987), cert. denied, 485 U. S. 981 (1988),
the court read § 101 as creating "a simple dichotomy in fact between employees and
125
independent contractors." 270 U. S. App. D. C., at 33, 846 F. 2d, at 1492. Because,
under agency law, Reid was an independent contractor, the court concluded that the
work was not "prepared by an employee" under § 101(1). Id., at 35, 846 F. 2d, at
1494. Nor was the sculpture a "work made for hire" under the second subsection of
§ 101 (hereinafter § 101(2)): sculpture is not one of the nine categories of works
enumerated in that subsection, and the parties had not agreed in writing that the
sculpture would be a work for hire. Ibid. The court suggested that the sculpture
nevertheless may have been jointly authored by CCNV and Reid, id., at 36, 846 F.
2d, at 1495, and remanded for a determination whether the sculpture is indeed a
joint work under the Act, id., at 39-40, 846 F. 2d, at 1498-1499.
We granted certiorari to resolve a conflict among the Courts of Appeals over the
proper construction of the "work made for hire" provisions of the Act. [2] 488 U. S.
940 (1988). We now affirm.
[737] II
A
The Copyright Act of 1976 provides that copyright ownership "vests initially in the
author or authors of the work." 17 U. S. C. § 201(a). As a general rule, the author is
the party who actually creates the work, that is, the person who translates an idea
into a fixed, tangible expression entitled to copyright protection. § 102. The Act
carves out an important exception, however, for "works made for hire." [3] If the
work is for hire, "the employer or other person for whom the work was prepared is
considered the author" and owns the copyright, unless there is a written agreement
to the contrary. § 201(b). Classifying a work as "made for hire" determines not only
the initial ownership of its copyright, but also the copyright's duration, § 302(c),
and the owners' renewal rights, § 304(a), termination rights, § 203(a), and right to
import certain goods bearing the copyright, § 601(b)(1). [ … ]The contours of the
work for hire doctrine therefore carry profound significance for freelance creators
— including artists, writers, photographers, designers, composers, and computer
programmers — and for the publishing, advertising, music, and other industries
which commission their works. [4]
[738] Section 101 of the 1976 Act provides that a work is "for hire" under two sets
of circumstances:
"(1) a work prepared by an employee within the scope of his or her

employment; or
(2) a work specially ordered or commissioned for use as a contribution to

a collective work, as a part of a motion picture or other audiovisual work,
as a translation, as a supplementary work, as a compilation, as an
instructional text, as a test, as answer material for a test, or as an atlas, if
the parties expressly agree in a written instrument signed by them that the
work shall be considered a work made for hire." [5]
Petitioners do not claim that the statue satisfies the terms of § 101(2). Quite clearly,
it does not. Sculpture does not fit within any of the nine categories of "specially
ChapterNumber:
126
ordered or commissioned" works enumerated in that subsection, and no written

agreement between the parties establishes "Third World America" as a work for
hire.
The dispositive inquiry in this case therefore is whether "Third World America" is
"a work prepared by an employee within the scope of his or her employment" under
§ 101(1). The Act does not define these terms. In the absence of such guidance,
four interpretations have emerged. The first holds that a work is prepared by an
employee whenever the hiring party [6] retains the right to control the product. See
Peregrine v. Lauren Corp., 601 F. Supp. 828, 829 (Colo. 1985); Clarkstown v.
Reeder, 566 F. Supp. 137, 142 (SDNY [739] 1983). Petitioners take this view. Brief
for Petitioners 15; Tr. of Oral Arg. 12. A second, and closely related, view is that a
work is prepared by an employee under § 101(1) when the hiring party has actually
wielded control with respect to the creation of a particular work. This approach was
formulated by the Court of Appeals for the Second Circuit, Aldon Accessories Ltd.
v. Spiegel, Inc., 738 F. 2d 548, cert. denied, 469 U. S. 982 (1984), and adopted by
the Fourth Circuit, Brunswick Beacon, Inc. v. Schock-Hopchas Publishing Co., 810
F. 2d 410 (1987), the Seventh Circuit, Evans Newton, Inc. v. Chicago Systems
Software, 793 F. 2d 889, cert. denied, 479 U. S. 949 (1986), and, at times, by
petitioners, Brief for Petitioners 17. A third view is that the term "employee" within
§ 101(1) carries its common-law agency law meaning. This view was endorsed by
the Fifth Circuit in Easter Seal Society for Crippled Children & Adults of
Louisiana, Inc. v. Playboy Enterprises, 815 F. 2d 323 (1987), and by the Court of
Appeals below. Finally, respondent and numerous amici curiae contend that the
term "employee" only refers to "formal, salaried" employees. See, e. g., Brief for
Respondent 23-24; Brief for Register of Copyrights as Amicus Curiae 7. The Court
of Appeals for the Ninth Circuit recently adopted this view. See Dumas v.
Gommerman, 865 F. 2d 1093 (1989).
The starting point for our interpretation of a statute is always its language. [ … ]The
Act nowhere defines the terms "employee" or "scope of employment." It is,
however, well established that "[w]here Congress uses terms that have accumulated
settled meaning under . . . the common law, a court must infer, unless the statute
otherwise dictates, that Congress means to incorporate the established meaning of
these terms." [ … ] In the past, when Congress has used the term "employee"
without defining it, [740] we have concluded that Congress intended to describe the
conventional master-servant relationship as understood by common-law agency
doctrine. [ … ]Nothing in the text of the work for hire provisions indicates that
Congress used the words "employee" and "employment" to describe anything other
than " 'the conventional relation of employer and employe.' " [ … ] On the contrary,
Congress' intent to incorporate the agency law definition is suggested by § 101(1)'s
use of the term, "scope of employment," a widely used term of art in agency law.
See Restatement (Second) of Agency § 228 (1958) (hereinafter Restatement).
In past cases of statutory interpretation, when we have concluded that Congress

intended terms such as "employee," "employer," and "scope of employment" to be
understood in light of agency law, we have relied on the general common law of
agency, rather than on the law of any particular State, to give meaning to these
terms.[ … ]This practice reflects the fact that "federal statutes are generally
intended to have uniform nationwide application." [ … ]Establishment of a federal
rule of agency, rather than reliance on state agency law, is particularly appropriate
here given the Act's express objective of creating national, uniform copyright law
by broadly pre-empting state statutory and common-law copyright regulation. See
127
17 U. S. C. § 301(a). We thus [741] agree with the Court of Appeals that the term
"employee" should be understood in light of the general common law of agency.
In contrast, neither test proposed by petitioners is consistent with the text of the
Act. The exclusive focus of the right to control the product test on the relationship
between the hiring party and the product clashes with the language of § 101(1),
which focuses on the relationship between the hired and hiring parties. The right to
control the product test also would distort the meaning of the ensuing subsection, §
101(2). Section 101 plainly creates two distinct ways in which a work can be
deemed for hire: one for works prepared by employees, the other for those specially
ordered or commissioned works which fall within one of the nine enumerated
categories and are the subject of a written agreement. The right to control the
product test ignores this dichotomy by transforming into a work for hire under §
101(1) any "specially ordered or commissioned" work that is subject to the
supervision and control of the hiring party. Because a party who hires a "specially
ordered or commissioned" work by definition has a right to specify the
characteristics of the product desired, at the time the commission is accepted, and
frequently until it is completed, the right to control the product test would mean
that many works that could satisfy § 101(2) would already have been deemed works
for hire under § 101(1). Petitioners' interpretation is particularly hard to square with
§ 101(2)'s enumeration of the nine specific categories of specially ordered or
commissioned works eligible to be works for hire, e. g., "a contribution to a
collective work," "a part of a motion picture," and "answer material for a test." The
unifying feature of these works is that they are usually prepared at the instance,
direction, and risk of a publisher or producer. [7] By their very nature, therefore,
these types of [742] works would be works by an employee under petitioners' right
to control the product test.
The actual control test, articulated by the Second Circuit in Aldon Accessories,
fares only marginally better when measured against the language and structure of §
101. Under this test, independent contractors who are so controlled and supervised
in the creation of a particular work are deemed "employees" under § 101(1). Thus
work for hire status under § 101(1) depends on a hiring party's actual control of,
rather than right to control, the product. [ … ]Under the actual control test, a work
for hire could arise under § 101(2), but not under § 101(1), where a party
commissions, but does not actually control, a product which falls into one of the
nine enumerated categories. Nonetheless, we agree with the Court of Appeals for
the Fifth Circuit that "[t]here is simply no way to milk the 'actual control' test of
Aldon Accessories from the language of the statute."[ … ]Section 101 clearly
delineates between works prepared by an employee and commissioned works.
Sound though other distinctions might be as a matter of copyright policy, there is
no statutory support for an additional dichotomy between commissioned works that
are actually controlled and supervised by the hiring party and those that are not.
We therefore conclude that the language and structure of § 101 of the Act do not
support either the right to control the product or the actual control approaches. [8]
The structure of [743] § 101 indicates that a work for hire can arise through one of
two mutually exclusive means, one for employees and one for independent
contractors, and ordinary cannons of statutory interpretation indicate that the
classification of a particular hired party should be made with reference to agency
law.
This reading of the undefined statutory terms finds considerable support in the Act's
legislative history. [ … ]
ChapterNumber:
128
Finally, petitioners' construction of the work for hire provisions would impede
Congress' paramount goal in revising the 1976 Act of enhancing predictability and
certainty of copyright ownership. [ … ] In a "copyright marketplace," the parties
negotiate with an expectation that one of them will own the copyright in the
completed work.[ … ]With that expectation, the parties at the outset can settle on
relevant contractual terms, such as the price for the work and the ownership of
reproduction rights.
To the extent that petitioners endorse an actual control test, [17] CCNV's construction
of the work for hire provisions prevents such planning. Because that test turns on
whether the hiring party has closely monitored the production process, the parties
would not know until late in the process, if not until the work is completed, whether
a work will ultimately fall within § 101(1). Under petitioners' approach, therefore,
parties would have to predict in advance whether the hiring party will sufficiently
control a given work to make it the author. "If they guess incorrectly, their reliance
on 'work for hire' or an assignment may give them a copyright interest that they did
not bargain for." [ … ]This understanding of the work for hire provisions clearly
thwarts Congress' goal of ensuring predictability through advance planning.
Moreover, petitioners' interpretation "leaves the door open for hiring parties, who
have failed to get a full assignment of copyright rights from independent
contractors falling outside the subdivision (2) guidelines, to unilaterally obtain
work-made-for-hire rights years after the work has been completed as long as they
directed or supervised the work, a standard that is hard not to meet when one is a
hiring party." [ … ]
In sum, we must reject petitioners' argument. Transforming a commissioned work

into a work by an employee on the basis of the hiring party's right to control, or
actual control of, the work is inconsistent with the language, structure, and
legislative history of the work for hire provisions. To [751] determine whether a
work is for hire under the Act, a court first should ascertain, using principles of
general common law of agency, whether the work was prepared by an employee or
an independent contractor. After making this determination, the court can apply the
appropriate subsection of § 101.
B
We turn, finally, to an application of § 101 to Reid's production of "Third World
America." In determining whether a hired party is an employee under the general
common law of agency, we consider the hiring party's right to control the manner
and means by which the product is accomplished. [18] Among the other factors
relevant to this inquiry are the skill required; [19] the source of the instrumentalities
and tools; [20] the location of the work; [21] the duration of the relationship between the
parties;[22] whether the hiring party has the right to assign additional projects to the
hired party; [23] the extent of the hired party's discretion over when and how long to
work; [24] the method of payment; [25] the hired party's role in hiring and [752] paying
assistants; [26] whether the work is part of the regular business of the hiring party; [27]
whether the hiring party is in business; [28] the provision of employee benefits; [29] and
the tax treatment of the hired party. [30] See Restatement § 220(2) (setting forth a
nonexhaustive list of factors relevant to determining whether a hired party is an
employee). [31] No one of these factors is determinative.[ … ]
129
Examining the circumstances of this case in light of these factors, we agree with the
Court of Appeals that Reid was not an employee of CCNV but an independent
contractor.[ … ] True, CCNV members directed enough of Reid's work to ensure
that he produced a sculpture that met their specifications. [ … ] But the extent of
control the hiring party exercises over the details of the product is not dispositive.
Indeed, all the other circumstances weigh heavily against finding an employment
relationship. Reid is a sculptor, a skilled occupation. Reid supplied his own tools.
He worked in his own studio in Baltimore, making daily supervision of his
activities from Washington practicably impossible. Reid was retained for less than
two months, a relatively [753] short period of time. During and after this time,
CCNV had no right to assign additional projects to Reid. Apart from the deadline
for completing the sculpture, Reid had absolute freedom to decide when and how
long to work. CCNV paid Reid $15,000, a sum dependent on "completion of a
specific job, a method by which independent contractors are often compensated."
[ … ]Reid had total discretion in hiring and paying assistants. "Creating sculptures
was hardly 'regular business' for CCNV." [ … ] Indeed, CCNV is not a business at
all. Finally, CCNV did not pay payroll or Social Security taxes, provide any
employee benefits, or contribute to unemployment insurance or workers'
compensation funds.
Because Reid was an independent contractor, whether "Third World America" is a

work for hire depends on whether it satisfies the terms of § 101(2). This petitioners
concede it cannot do. Thus, CCNV is not the author of "Third World America" by
virtue of the work for hire provisions of the Act. However, as the Court of Appeals
made clear, CCNV nevertheless may be a joint author of the sculpture if, on
remand, the District Court determines that CCNV and Reid prepared the work "with
the intention that their contributions be merged into inseparable or interdependent
parts of a unitary whole." 17 U. S. C. § 101. [32] In that case, CCNV and Reid would
be co-owners of the copyright in the work. See § 201(a).
For the aforestated reasons, we affirm the judgment of the Court of Appeals for the
District of Columbia Circuit.
It is so ordered.
[…]
[3] We use the phrase "work for hire" interchangeably with the more cumbersome
statutory phrase "work made for hire."
[4] As of 1955, approximately 40 percent of all copyright registrations were for

works for hire, according to a Copyright Office study. See Varmer, Works Made for
Hire and On Commission, in Studies Prepared for the Subcommittee on Patents,
Trademarks, and Copyrights of the Senate Committee on the Judiciary, Study No.
13, 86th Cong., 2d Sess., 139, n. 49 (Comm. Print 1960) (hereinafter Varmer,
Works Made for Hire). The Copyright Office does not keep more recent statistics
on the number of work for hire registrations.
[…]

ChapterNumber:
130
5.2.2
Avtec Systems, Inc. v. Peiffer,

21 F.3d 568
[…]
AVTEC SYSTEMS, INCORPORATED,

Plaintiff-Appellant,
v.
Jeffrey G. PEIFFER [ … ]
United States Court of Appeals, Fourth Circuit.

Argued June 7, 1993.
Decided April 6, 1994.
[…]
OPINION
PHILLIPS, Circuit Judge:
In these consolidated appeals, we consider a number of copyright and state-law

claims arising from the parties' failure to memorialize their intentions regarding
ownership of a computer program. We affirm in part, vacate in part, and remand for
further proceedings.
I
The facts, as described by the district court, Avtec Systems, Inc. v. Peiffer, 805
F.Supp. 1312, 1315-17 (E.D.Va.1992), are as follows. Avtec Systems, Inc. (Avtec)
markets space-related computer services and products to the federal government. Its
services include computerized simulations of satellite orbital patterns. Jeffrey G.
Peiffer began working part-time for Avtec while in college and became the
company's fifth full-time employee upon his graduation in 1984. During his career
with Avtec, his job description included "implement[ing] computer simulation" and,
specifically, simulating "satellite orbits." J.A. 232-33.
In 1984, Avtec purchased a Macintosh computer at Peiffer's suggestion. After

Peiffer demonstrated the computer's abilities to Avtec President Ronald Hirsch and
other employees, it became apparent that the company's orbital simulations would
be enhanced in several respects by using a Macintosh. It is disputed whether that
idea originated with Peiffer alone or in discussions with other Avtec personnel; it
also is disputed whether Avtec authorized Peiffer to begin developing a computer
program for that purpose ("the Program") as he did in 1985. Peiffer demonstrated
131
the Program--called "the .309 version"--to Hirsch and others at Avtec that same
year, and again during his 1988 performance [570] appraisal as evidence of his
initiative on the job.
At that point, Hirsch and another Avtec employee suggested several modifications
to enhance the Program's utility as a marketing tool for the company. Peiffer
charged time to an Avtec account for making those enhancements. Peiffer also
received a $5,000 bonus in early 1989 for helping to land a contract by
demonstrating the Program as a unique Avtec service. He performed similar
demonstrations for other clients as well. Later that year, Avtec issued a written
policy, of which Peiffer was aware, binding employees to duties of confidentiality
and nondisclosure respecting the company's proprietary information and trade
secrets.
In early 1990, another Avtec employee found some bugs in the Program. After
Peiffer fixed them, that other employee presented the corrected version to a client.
In 1991, Avtec labeled the Program as a trademark and advertised it as unique to
Avtec. J.A. 331. At no time before his eventual departure from Avtec did Peiffer
represent to his employer or to its potential clients that he had an ownership interest
in the Program.
In 1992, however, when Peiffer was asked to demonstrate the Program to NASA as
part of a contract bid, he used the old, uncorrected .309 version without informing
anyone at Avtec or NASA of that fact. Peiffer concedes that Avtec did not win that
contract in part because he showed the outdated version. Shortly there after, when
Peiffer was again asked to demonstrate the program, he refused and said that he
didn't have a copy of it at the office.
Unbeknownst to Avtec, Peiffer had met Paul F. Kisak early in 1989 and granted
Kisak's company, Kisak-Kisak, Inc. (KKI) an exclusive license to market the
Program. Sales generated $197,000 in gross revenues for KKI, of which Peiffer
received approximately half.
Avtec registered for a copyright in the .309 version of the Program on March 27,
1992. Six days later, Avtec commenced this action against Peiffer, Kisak, and KKI
(collectively, "defendants") charging copyright infringement, misappropriation of
trade secrets, and breach of fiduciary duty. [1] Avtec also sought imposition of a
constructive trust. On April 9, Peiffer registered his copyright claim in the .309
version, which he called MacOrbit, and another copyright claim in the 2.05 version,
which he called the Orbit Program and identified as derivative of the .309 version.
J.A. 1924-25. Defendants then counterclaimed for copyright infringement.
After a three-day bench trial, the court found that Peiffer owned copyright in the
later version of the Program, reasoning that he had not created it within the scope of
his employment as is required by 17 U.S.C.A. Sec. 201(b) (West 1977 &
Supp.1993) in order for copyright to vest in an employer. Avtec, 805 F.Supp. at
1317-19. On that basis, the court denied Avtec relief on Count I and--pursuant to
defendants' counterclaim--ordered Avtec to withdraw its registration of copyright. [2]
Id. at 1319, 1323.
Avtec prevailed on its state-law claims, however. The court held that, through its
contributions to and use of the .309 version, Avtec had a trade secret in the use of
that version as a demonstration and marketing device similar to "shop rights" that
may arise in an employee's patented invention. The court also found that Peiffer and
KKI had misappropriated that trade secret. [3] Id. at 1320-21. Upon finding
ChapterNumber:
132
additionally that Peiffer breached fiduciary duties owed to Avtec, the court imposed
a constructive trust. The terms required Peiffer and KKI: (1) to grant Avtec a
perpetual license (as long as defendants had a copyright interest) to use the Program
"for the same purposes as a purchaser might lawfully utilize it"; (2) to pay Avtec
15% of gross revenues received from the Program in perpetuity from March [571]
1, 1989; and (3) to give Avtec all current and forthcoming versions, enhancements,
and upgrades of the Program before making them commercially available. Id. at
1322-23.
Avtec's appeal and the defendants' cross-appeal from unfavorable portions of the
judgment followed and were consolidated for hearing and disposition in this court.
We discuss in order the issue of copyright ownership as it bears upon the

conflicting claims of copyright infringement in Avtec's principal claim and the
defendants' counterclaim, the disposition of Avtec's pendent state law claims for
misappropriation of trade secrets and breach of fiduciary duty, and the imposition
of a constructive trust in favor of Avtec.
To recover on its copyright claim, Avtec had to show that it owned a valid
copyright in the Program and that defendants encroached upon one of the exclusive
rights it conferred. [ … ]Those rights include the control of reproduction,
distribution, and performance or display of the original, as well as the production of
derivative works. [4] 17 U.S.C. Sec. 106.
These rights presumptively vest in the author--the one who translates an original
idea into a fixed, tangible means of expression. [5] Id. Sec. 102(a). The presumption
of authorial ownership falls, however, if the work is made "for hire," such as one
"prepared by an employee within the scope of his or her employment." Community
for Creative Non-Violence v. Reid, 490 U.S. 730,[ … ] (quoting 17 U.S.C. Secs.
101(1), 201(b)). Under those circumstances, copyright vests in the employer for
whom the work was prepared. [ … ] This exception is overridden only by a clear
writing reserving authorship rights to the employee, 17 U.S.C. Sec. 201(b), which
concededly did not exist in this case.
It is essentially undisputed that Peiffer was Avtec's employee at the time of the
Program's inception. The contested issue throughout has been whether Peiffer
created the Program within the scope of his employment. Reid instructs that
common-law agency principles govern resolution of that question. 490 U.S. at 739-
40, 109 S.Ct. at 2172-73 (citing Restatement (Second) of Agency Sec. 228 (1958)).
As expressed in Section 228 of the Restatement, the key principle is that a servant's
conduct is within the scope of employment "only if: (a) it is of the kind he is
employed to perform; (b) it occurs substantially within the authorized time and
space limits; [and] (c) it is actuated, at least in part, by a purpose to serve the
master."
We agree with the district court that creation of the Program was "of the kind" of
work Peiffer was employed to perform. [ … ] When that element of the Restatement
test is met, courts have tended not to grant employees authorship rights solely on
the basis that the work was done at home on off-hours. [ … ]
On the other hand, copyright does not vest in the employer solely because "the
subject matter of the work ... bears upon or arises out of the employee's activities
for his employer." [ … ]Thus, Avtec had to show that Peiffer was at least
"appreciabl[y]" motivated by a desire to further its corporate goals in order to
satisfy the third element of the work-for-hire test. Restatement (Second) of Agency
133
Sec. 236 cmt. b; id. Sec. 235 (act falls beyond scope of employment if "done with
no intention" to serve master) (emphasis added).
The district court found that Peiffer had not developed version 2.05 of the Program
"within Avtec authorized time and space limits ... [and] was [not] motivated, at
least in part, by a purpose to serve Avtec." 805 F.Supp. at 1318-19. On this basis,
the court held that copyright vested in Peiffer, not in Avtec, and accordingly
rendered judgment in favor of defendants on Avtec's claim and on their
counterclaim.
Avtec contends that the district court should have applied the scope-of-employment
test more flexibly in light of its finding on the pendent state-law claims that Peiffer
breached duties that he owed to Avtec as its employee. [ … ] Defendants rightly
question whether the outcome of pendent state-law claims may drive the analysis of
the federal claim upon which jurisdiction is based. But we conclude that the court
did err, however, by injecting into the analysis of copyright ownership an element
contemplated neither by the Restatement's scope-of-employment test nor by the law
of copyright generally--i.e., the court's preliminary finding that the .309 version of
the Program differed materially from the 2.05 version in terms of the use to which it
was put in the marketplace.
To reiterate, copyright protects not original ideas but their incarnation in a tangible
means of expression. See generally Feist Publications, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). It appears undisputed that
the original expression at issue here is embodied in the source code for the .309
version of the Program. [7] The commercial use to which that work is put does not
alter the owner's exclusive rights to copy it and to prepare derivative works based
upon it. [8] [ … ]
Instead of focusing upon the question whether the .309 version was created within
the scope of Peiffer's employment, however, the district court made a preliminary
finding that Avtec used the original version solely as "a demonstration and
marketing device," while the later 2.05 version was a " 'stand-alone' software
package that could be marketed commercially," which Avtec neither [573] could
nor would have developed. [9] 805 F.Supp. at 1316. Relying on this utilitarian
distinction between two versions of the program, the court expressly confined its
decision on the question of copyright ownership to "the current 2.05 version" of the
Program. Id. at 1318-19. Finding dispositive the facts that Peiffer worked on the
Program at home, on his own equipment and time, as a "personal hobby, and not to
satisfy specific work obligations for Avtec," the court reasoned that "while Peiffer
allowed earlier versions of the Orbit Program to be used by Avtec for various client
demonstrations, Avtec did not ... persuade the Court that Peiffer's development of
the 2.05 version ... was actuated by his desire to serve Avtec" and held that Avtec
could not "claim complete or joint ownership of the 2.05 version." [ … ]
[…]
These factors call into question both the court's assessment of the evidence before it
and its application of the law to the facts of the case. Anticipating our de novo
review of the legal component of the scope-of-employment issue, the parties
emphasize conflicting evidence supporting their respective positions on that issue.
Avtec points to evidence that it authorized Peiffer to work on the project at home
during off-hours and contends that Peiffer's resulting behavior compels the
inference that he intended the work, at least in part, to contribute to Avtec's
ChapterNumber:
134
successful pursuit of its business objectives. [10] Defendants counter with the
evidence relied upon by the district court that Peiffer developed the Program as a
hobby and that Avtec failed to exercise significant control or supervision over the
project. [11]
As indicated, we have concluded that the district court's resolution of the scope-of-
employment issue was flawed by a misapprehension of the controlling legal
principles. We are not in a position to resolve that heavily fact-laden issue in the
first instance; among other reasons, credibility could be decisive. Though we regret
the necessity, [574] we must instead vacate those portions of the judgment
respecting the claim and counterclaim for copyright infringement and remand those
claims for reconsideration, in light of this opinion, of the dispositive common issue
whether the original Program was created within the scope of Peiffer's employment.
If upon that reconsideration the court again concludes that it was not so created, the
court should of course again give judgment in favor of defendants on Avtec's
copyright claim, and must of course then also reconsider the effect of such a finding
upon defendants' counterclaim for copyright infringement. [12] Should the court
conclude instead that Peiffer created the .309 version within the scope of his
employment with Avtec, it must then determine whether defendants infringed the
copyright (for example, by preparing unauthorized derivative works [13] ); whether
Kisak and KKI are liable for such infringement; and any statutory remedies that
may be warranted by wrongful copying of protected material. [14] 17 U.S.C. Secs.
502-505.
II
On their cross-appeal from the judgment against them on Avtec's claim for
misappropriation of trade secrets, the defendants raise two major issues. Apparently
for the first time on appeal, they contend that the trade secrets claim is preempted
by the federal provision of a cause of action for copyright infringement. See
generally Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11
L.Ed.2d 661 (1964). Because Avtec did not treat the issue as waived, and because
we find it necessary to vacate the judgment and remand for reconsideration of the
trade secrets claim, we note that the defense must fail under this circuit's recent
decision in Trandes Corp., 996 F.2d at 660.
The Trandes court considered whether the Copyright Act preempted an action
brought under Maryland's trade secrets statute which, like the Virginia law at issue
here, closely tracks the Uniform Trade Secrets Act. [ … ]We rejected the
preemption defense on the basis that recovery for trade secret misappropriation
requires proof of breach of confidence--an element of proof additional to those
necessary for recovery in an action for copyright infringement. [ … ]The same
result follows here.
Defendants argue alternatively that the trade secrets claim fails on the merits. In
Virginia, a trade secret is information such as "a formula, pattern, compilation,
program, [575] device, method, technique, or process" that has independent
economic value due to its secrecy and that is subject to reasonable attempts to keep
it secret. Va.Code Ann. Sec. 59.1-336. Misappropriation is the improper acquisition
or disclosure of a trade secret by one who "knew or had reason to know" that
acquisition occurred "under circumstances giving rise to a duty" to maintain
135
confidentiality. Id. Thus, the hallmark of a trade secret is not its novelty but its
secrecy. [ … ]
The court found that Avtec had an interest--described variously as a "trade secret,"
a "license," and a "right" akin to the equitable "shop rights" of patent law--in the
"use of the .309 version ... as a demonstration and marketing device." [ … ]There is
no difficulty in finding the existence of a trade secret in the source or object codes
to computer programs where question of copyright ownership is not in issue,
[ … ]or, even more clearly, where the owner of the alleged trade secret also owns
copyright in the material sought to be protected. [ … ]Of course, a plaintiff "may not
obtain a double recovery where the damages for copyright infringement and trade
secret misappropriation are coextensive." [ … ]
But defendants rightly question a judgment that, in effect, imposes liability upon a
copyright owner for "misappropriating" his own work. [16] As discussed above, the
court made no express finding that Peiffer owns copyright in the .309 version of the
Program, and that question has been remanded for resolution by the district court.
Expressing no opinion upon it, we do note a critical consequence of a ruling upon it
in Peiffer's favor in regard to Avtec's trade secret claim. It would mean that from
the moment of the Program's inception, Peiffer has owned the exclusive right to
license performances of the original and of any derivative works. And as discussed
above, absent a written agreement regarding Avtec's use of the Program, any use
license held by Avtec would be implied and therefore nonexclusive. S[ … ]Avtec
offers no authority, and we have found none, for the proposition that the alleged
"owner" of a trade secret,[ … ] could maintain the secrecy of material that is subject
under federal law to publication at the will of another. We do not believe that a
nonexclusive use license in copyrighted material can support the reasonable
expectation or right of secrecy necessary to predicate a claim that the identical
material is a trade secret protectible under Virginia law. [17] See Restatement (First)
of Torts Sec. 757 cmt. b (1939) (trade secret must have "a substantial element of
secrecy ... so that, except by the use of improper means, there would be difficulty in
acquiring the information"; one factor in determining trade secrecy is the ease or
difficulty with which the information could be properly acquired by others)
(emphasis added).
For the above reasons, we must vacate the portion of the judgment in favor of Avtec
on its trade-secret claim, and remand it for reconsideration in light of this opinion.
[576]
III
Peiffer argues that the district court erred as a matter of law in concluding that he
bore any fiduciary duties toward Avtec and that he breached those duties. We have
considered his arguments, and reject them. "A fiduciary relationship exists in all
cases when special confidence has been reposed in one who in equity and good
conscience is bound to act in good faith and with due regard for the interests of the
one reposing the confidence."[ … ] Employees owe their employers the duty to "be
candid ... and [to] withhold no information which would be useful to the employer
in the protection and pursuit of its interests." [ … ] The district court rightly found
that Peiffer breached those duties through his nondisclosure of his business
relationship with Avtec's competitor KKI and by demonstrating the outdated
version of the Program to Avtec's detriment and without its knowledge.
ChapterNumber:
136
IV
In view of our disposition of the various claims, the remedial portion of the district
court's judgment, including the constructive trust it imposed, must be vacated, with
appropriate remedy to abide results on remand. If the court were to conclude that
Avtec does hold copyright in the .309 version and all derivatives, any infringement
of its exclusive rights may be remedied as provided under the statute. 17 U.S.C.
Secs. 502-505. Specifically, Avtec would be entitled to all revenues generated
through the infringement, and not merely a percentage of profits as was awarded
under the constructive trust, and Avtec need only show, as it has, defendants' gross
profits from the Program. Id. Sec. 504(b). If Avtec were to prevail on the
reconsidered trade secret claim, the court should award such damages, not
coextensive with any awarded for copyright infringement as could be shown. [ … ]
Conversely, if the court finds against Avtec on the issue of copyright ownership, its
damages would be limited to those flowing from the breach of fiduciary duty whose
finding by the district court we have affirmed, while the defendants' recovery on
their counterclaim would be limited to such statutory damages as they could prove
entitlement to.
V
To summarize. We vacate those portions of the judgment which pertain to Avtec's
claim and the defendants' counterclaim for copyright infringement, and remand for
further proceedings consistent with this opinion. We vacate that portion of the
judgment finding defendants liable to Avtec on the latter's claim for
misappropriation of trade secrets, and remand that claim for further proceedings
consistent with this opinion. We affirm that portion of the judgment determining
that Peiffer breached fiduciary duties owed to Avtec. We vacate the entire remedial
portion of the judgment to abide the determination of liability on the various claims
upon remand.
SO ORDERED.
[1] A claim for misappropriation of business opportunity was later withdrawn.
[2] The court found that defendants-counterclaimants failed to prove damages from
the "alleged" violation of Peiffer's copyright, and denied all parties costs and fees.
805 F.Supp. at 1323.
[3] Kisak had by then been dismissed as a defendant from all but the copyright
infringement claim.
[4] A "derivative work" is a work based upon one or more preexisting works, such
as a translation ... 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 an original work of authorship, is a
"derivative work."
To "perform" a work means to recite [or] render ... it, either directly or by means of
any device or process....
17 U.S.C. Sec. 101.

137
[5] The protected material in this case consists of the Program's source and object
codes. Human beings write source codes, but computers can't read them until they
are mechanically translated by compiling programs into object codes, which tell
computers how to process data. Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d
693, 698 (2d Cir.1992). The parties have not raised, and we do not address, the
issue of the potentially separate copyrightability of any screen displays arising from
the Program's operation. See id. at 703.
[6] Because Avtec does not raise the issue, we do not address the court's rejection
of the alternative contention that Avtec's copyright in the Program arose from its
joint authorship of the work with Peiffer. See 805 F.Supp. at 1319.
[7] Thus, we reject as meritless defendants' contention that Avtec seeks copyright
on ideas, not expression. See Appellee Br. 27-28.
[8] Certain types of noncommercial use may, of course, provide a "fair use" defense
to a claim of copyright infringement, 17 U.S.C. Sec. 107, but there is no contention
that the defense is applicable in this case.
We also note, for clarity's sake, a matter addressed by neither party: Publication of
works prior to March 1, 1989 without notice of copyright ownership risks forfeiture
of the Copyright Act's protections. 17 U.S.C. Secs. 401, 405; Michael D. Scott,
Scott on Computer Law Sec. 3.37 (1991). Publication occurs upon "the distribution
of copies ... by sale or other transfer of ownership" and by "offering to distribute
copies ... for purposes of further distribution, public performance, or public
display." 17 U.S.C. Sec. 101. "A public performance or display of a work does not
of itself constitute publication," however, id., and it is generally agreed that
"publication does not include the distribution of copies under an obligation of
confidence." Scott Sec. 3.37 at 3-134.
[9] The court's analysis illustrates the tension between copyright law's competing
policies of rewarding individual initiative and creativity versus promoting broad
public access to original works, Twentieth Century Music Corp. v. Aiken, 422 U.S.
151, 156, 95 S.Ct. 2040, 2044, 45 L.Ed.2d 84 (1975), and implies an intention to
resolve that conflict, at least with respect to computer programs having a relatively
short market life, in favor of broad access. See Matthew R. Harris, Note, Copyright,
Computer Software, and Work Made for Hire, 89 Mich.L.Rev. 661 (1990).
To the extent that any functional difference between the versions resulted from
revisions of the original, the matter properly is addressed through derivative-works
analysis undertaken after resolution of the copyright-ownership issue. See generally
Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990).
[10] It is uncontested that Peiffer invoked the .309 version to show his initiative at
Avtec; that he made changes suggested by Avtec managers; that he demonstrated
the Program at their request; that he was rewarded for doing so with a sizeable cash
bonus; that he modified the Program at the suggestion and with the aid of other
Avtec employees, billing the time to a specified Avtec account on at least one
occasion; and that he failed at any relevant time to allege any proprietary interest in
the Program. See 805 F.Supp. at 1315-16.
[11] The district court rightly questioned the extent to which an employer's control
over a work remains a dispositive factor in "work for hire" analysis following the
Supreme Court's qualified rejection of such analyses in Reid, 490 U.S. at 738-39,
109 S.Ct. at 2171-72. See 805 F.Supp. at 1318.
ChapterNumber:
138
[12] As to that possibility, we offer these observations for such guidance as they
may provide the court upon any reconsideration of the counterclaim. While, as the
district court properly found, assuming Peiffer owned copyright, any infringement
that occurred caused defendants no actual damage, Appellee Br. 47, defendants
rightly contend that 17 U.S.C. Sec. 504(c) mandates consideration of statutory
damages in lieu of actual damages, with modifications for instances of "innocent
infringement." On this issue, we note that the court found implied in Peiffer's
conduct a grant to Avtec of a limited use license in the Program. 805 F.Supp. at
1320. Expressing no view on the factual basis for that holding, which is not now in
issue, we further note that such an implied license is necessarily nonexclusive and
revocable absent consideration. See MacLean Assocs., Inc. v. Wm. M. Mercer-
Meidinger-Hansen, Inc., 952 F.2d 769, 778-79 (3d Cir.1991); 3 Nimmer Sec.
10.02[B]. Thus, while an implied license may fail to vest a proprietary interest in
the licensee that is enforceable against other licensees, it may provide a defense--
properly pled by Avtec, J.A. 85--to the counterclaim. See MacLean Assoc., 952
F.2d at 779.
[13] Peiffer and KKI concede that "all versions of the Orbit Program" are "to some
extent" derivative of the original .309 version, Appellee Br. 29. See Stewart, 495
U.S. at 223-24, 234-36, 110 S.Ct. at 1761-62, 1767-68.
[14] The parties concede that it is within the district court's discretion to award or
deny attorneys' fees as part of the costs of the action. 17 U.S.C. Sec. 505.
[15] Although Avtec alleged in its complaint that defendants misappropriated its
trade secrets in "the Program," in its client lists, and in its marketing techniques,
J.A. 22-23, on appeal it focuses argument exclusively on the alleged trade secret in
the Program, Appellant Reply Br. 21-26, and we confine our decision accordingly.
[16] With respect to whether copyright ownership may provide a defense to a claim
for misappropriation of trade secrets, the defense cannot be overcome by invoking
patent-law "shop rights." Congress expressly declined to incorporate such rights
into copyright law. See 1 Nimmer Sec. 5.03[C] (citing H.Rep. No. 1476, supra, at
121, reprinted in 1976 U.S.C.C.A.N. at 5736-37).
[17] We reject defendants' argument that, even if Avtec had a trade secret, secrecy
was lost when the company demonstrated the Program to clients. Trandes, 996 F.2d
at 663-64. We do not address the alternative contention that Avtec failed to take
reasonable steps to protect the secrecy of the source code because we anticipate
reconsideration of the evidence on remand, noting only a tension between the
district court's finding that Avtec did take such precautions, 805 F.Supp. at 1320,
and the court's prior observation that "[t]he evidence is far from convincing that
Avtec ever continuously possessed the software." Id. at 1319.

5.2.3
V.T. Thomas v. Malayala Manorama Co. Ltd.


139

5.2.4
Indian Performing Rights Society v. Eastern India

Motion Pictures Association


5.2.5
IPRS v. Entertainment Network (India) Ltd (Delhi

HC, 2021)

https://indiankanoon.org/doc/164962814/

141
6
Week 6

ChapterNumber:
142

6.1

Copyright and Parentalism

6.1.1
Stewart v. Abend

495 U.S. 207
[…]
James STEWART, et al., Petitioners

v.
Sheldon ABEND, DBA Authors Research

Company.
[…]
Decided April 24, 1990.
S[ … ]
O'CONNOR, J., delivered the opinion of the Court, in which BRENNAN,

MARSHALL, BLACKMUN, and KENNEDY, JJ., joined. WHITE, J., filed an
opinion concurring in the judgment, post, p. 238. STEVENS, J., filed a dissenting
opinion, in which REHNQUIST, C.J., and SCALIA, J., joined, post, p. 239.
[…]
Justice O'CONNOR delivered the opinion of the Court.
The author of a pre-existing work may assign to another the right to use it in a
derivative work. In this case the author of a pre-existing work agreed to assign the
rights in his renewal copyright term to the owner of a derivative work, but died
before the commencement of the renewal period. The question presented is whether
the owner of the derivative work infringed the rights of the successor owner of the
pre-existing work by continued distribution and publication of the derivative work
during the renewal term of the pre-existing work.
143
I
Cornell Woolrich authored the story "It Had to Be Murder," which was first
published in February 1942 in Dime Detective Magazine. The magazine's publisher,
Popular Publications, Inc., obtained the rights to magazine publication of the story
and Woolrich retained all other rights. Popular Publications obtained a blanket
copyright for the issue of Dime Detective Magazine in which "It Had to Be Murder"
was published.
[212] The Copyright Act of 1909, 35 Stat. 1075, 17 U.S.C. § 1 et seq. (1976 ed.)
(1909 Act), provided authors a 28-year initial term of copyright protection plus a
28-year renewal term. See 17 U.S.C. § 24 (1976 ed.). In 1945, Woolrich agreed to
assign the rights to make motion picture versions of six of his stories, including "It
Had to Be Murder," to B.G. De Sylva Productions for $9,250. He also agreed to
renew the copyrights in the stories at the appropriate time and to assign the same
motion picture rights to De Sylva Productions for the 28-year renewal term. In
1953, actor Jimmy Stewart and director Alfred Hitchcock formed a production
company, Patron, Inc., which obtained the motion picture rights in "It Had to Be
Murder" from De Sylva's successors in interest for $10,000.
In 1954, Patron, Inc., along with Paramount Pictures, produced and distributed
"Rear Window," the motion picture version of Woolrich's story "It Had to Be
Murder." Woolrich died in 1968 before he could obtain the rights in the renewal
term for petitioners as promised and without a surviving spouse or child. He left his
property to a trust administered by his executor, Chase Manhattan Bank, for the
benefit of Columbia University. On December 29, 1969, Chase Manhattan Bank
renewed the copyright in the "It Had to Be Murder" story pursuant to 17 U.S.C. §
24 (1976 ed.). Chase Manhattan assigned the renewal rights to respondent Abend
for $650 plus 10% of all proceeds from exploitation of the story.
"Rear Window" was broadcast on the ABC television network in 1971. Respondent
then notified petitioners Hitchcock (now represented by cotrustees of his will),
Stewart, and MCA Inc., the owners of the "Rear Window" motion picture and
renewal rights in the motion picture, that he owned the renewal rights in the
copyright and that their distribution of the motion picture without his permission
infringed his copyright in the story. Hitchcock, Stewart, and MCA nonetheless
entered into a second license with ABC to [213] rebroadcast the motion picture. In
1974, respondent filed suit against these same petitioners, and others, in the United
States District Court for the Southern District of New York, alleging copyright
infringement. Respondent dismissed his complaint in return for $25,000.
Three years later, the United States Court of Appeals for the Second Circuit decided
Rohauer v. Killiam Shows, Inc., 551 F.2d 484, cert. denied, 431 U.S. 949, 97 S.Ct.
2666, 53 L.Ed.2d 266 (1977), in which it held that the owner of the copyright in a
derivative work [1] may continue to use the existing derivative work according to the
original grant from the author of the pre-existing work even if the grant of rights in
the pre-existing work lapsed. 551 F.2d, at 494. Several years later, apparently in
reliance on Rohauer, petitioners re-released the motion picture in a variety of
media, including new 35 and 16 millimeter prints for theatrical exhibition in the
United States, videocassettes, and videodiscs. They also publicly exhibited the
motion picture in theaters, over cable television, and through videodisc and
videocassette rentals and sales.
ChapterNumber:
144
Respondent then brought the instant suit in the United States District Court for the
Central District of California against Hitchcock, Stewart, MCA, and Universal Film
Exchanges, a subsidiary of MCA and the distributor of the motion picture.
Respondent's complaint alleges that the re-release of the motion picture infringes
his copyright in the story because petitioners' right to use the story during the
renewal term lapsed when Woolrich died before he could register for the renewal
term and transfer his renewal rights to them. Respondent also contends that
petitioners have interfered with his rights in the renewal term of the story in other
ways. He alleges that he sought to contract with Home Box [214] Office (HBO) to
produce a play and television version of the story, but that petitioners wrote to him
and HBO stating that neither he nor HBO could use either the title, "Rear Window"
or "It Had to Be Murder." Respondent also alleges that petitioners further interfered
with the renewal copyright in the story by attempting to sell the right to make a
television sequel and that the re-release of the original motion picture itself
interfered with his ability to produce other derivative works.
Petitioners filed motions for summary judgment, one based on the decision in
Rohauer, supra, and the other based on alleged defects in the story's copyright.
Respondent moved for summary judgment on the ground that petitioners' use of the
motion picture constituted copyright infringement. Petitioners responded with a
third motion for summary judgment based on a "fair use" defense. The District
Court granted petitioners' motions for summary judgment based on Rohauer and the
fair use defense and denied respondent's motion for summary judgment, as well as
petitioners' motion for summary judgment alleging defects in the story's copyright.
Respondent appealed to the United States Court of Appeals for the Ninth Circuit
and petitioners cross-appealed.
The Court of Appeals reversed, holding that respondent's copyright in the renewal
term of the story was not defective, Abend v. MCA, Inc., 863 F.2d 1465, 1472
(1988). The issue before the court, therefore, was whether petitioners were entitled
to distribute and exhibit the motion picture without respondent's permission despite
respondent's valid copyright in the pre-existing story. Relying on the renewal
provision of the 1909 Act, 17 U.S.C. § 24 (1976 ed.), respondent argued before the
Court of Appeals that because he obtained from Chase Manhattan Bank, the
statutory successor, the renewal right free and clear of any purported assignments
of any interest in the renewal copyright, petitioners' distribution and publication of
"Rear Window" without authorization infringed his renewal copyright. Petitioners
responded that [215] they had the right to continue to exploit "Rear Window"
during the 28-year renewal period because Woolrich had agreed to assign to
petitioners' predecessor in interest the motion picture rights in the story for the
renewal period.
Petitioners also relied, as did the District Court, on the decision in Rohauer v.
Killiam Shows, Inc., supra. In Rohauer, the Court of Appeals for the Second Circuit
held that statutory successors to the renewal copyright in a pre-existing work under
§ 24 could not "depriv[e] the proprietor of the derivative copyright of a right . . . to
use so much of the underlying copyrighted work as already has been embodied in
the copyrighted derivative work, as a matter of copyright law." Id., at 492. The
Court of Appeals in the instant case rejected this reasoning, concluding that even if
the pre-existing work had been incorporated into a derivative work, use of the pre-
existing work was infringing unless the owner of the derivative work held a valid
grant of rights in the renewal term.
145
The court relied on Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373,
80 S.Ct. 792, 4 L.Ed.2d 804 (1960), in which we held that assignment of renewal
rights by an author before the time for renewal arrives cannot defeat the right of the
author's statutory successor to the renewal rights if the author dies before the right
to renewal accrues. An assignee of the renewal rights takes only an expectancy:
"Until [the time for registration of renewal rights] arrives, assignees of renewal
rights take the risk that the rights acquired may never vest in their assignors. A
purchaser of such an interest is deprived of nothing. Like all purchasers of
contingent interests, he takes subject to the possibility that the contingency may not
occur." Id., at 378, 80 S.Ct., at 796. The Court of Appeals reasoned that "[i]f Miller
Music makes assignment of the full renewal rights in the underlying copyright
unenforceable when the author dies before effecting renewal of the copyright, then,
a fortiori, an assignment of part of the rights in the underlying work, the right to
produce a movie version, must [216] also be unenforceable if the author dies before
effecting renewal of the underlying copyright." 863 F.2d, at 1476. Finding further
support in the legislative history of the 1909 Act and rejecting the Rohauer court's
reliance on the equities and the termination provisions of the 1976 Act, 17 U.S.C.
§§ 203(b)(1), 304(c)(6)(A) the Court of Appeals concluded that petitioners received
from Woolrich only an expectancy in the renewal rights that never matured; upon
Woolrich's death, Woolrich's statutory successor, Chase Manhattan Bank, became
"entitled to a renewal and extension of the copyright," which Chase Manhattan
secured "within one year prior to the expiration of the original term of copyright."
17 U.S.C. § 24 (1976 ed.). Chase Manhattan then assigned the existing rights in the
copyright to respondent.
The Court of Appeals also addressed at length the proper remedy, an issue not
relevant to the issue on which we granted certiorari. We granted certiorari to
resolve the conflict between the decision in Rohauer, supra, and the decision
below. 493 U.S. 807, 110 S.Ct. 47, 107 L.Ed.2d 16 (1989). Petitioners do not
challenge the Court of Appeals' determination that respondent's copyright in the
renewal term is valid, and we express no opinion regarding the Court of Appeals'
decision on this point.
II
A.
Petitioners would have us read into the Copyright Act a limitation on the statutorily
created rights of the owner of an underlying work. They argue in essence that the
rights of the owner of the copyright in the derivative use of the pre-existing work
are extinguished once it is incorporated into the derivative work, assuming the
author of the pre-existing work has agreed to assign his renewal rights. Because we
find no support for such a curtailment of rights in either the 1909 Act or the 1976
Act, or in the legislative history of either, we affirm the judgment of the Court of
Appeals.
[217] Petitioners and amicus Register of Copyrights assert, as the Court of Appeals
assumed, that § 23 of the 1909 Act, and the case law interpreting that provision,
directly control the disposition of this case. Respondent counters that the provisions
of the 1976 Act control, but that the 1976 Act reenacted § 24 in § 304 and,
ChapterNumber:
146
therefore, the language and judicial interpretation of § 24 are relevant to our

consideration of this case. Under either theory, we must look to the language of and
case law interpreting § 24.
The right of renewal found in § 24 provides authors a second opportunity to obtain

remuneration for their works. Section 24 provides:
"[T]he author of [a copyrighted] work, if still living, or the widow,

widower, or children of the author, if the author be not living, or if such
author, widow, widower, or children be not living, then the author's
executors, or in the absence of a will, his next of kin shall be entitled to a
renewal and extension of the copyright in such work for a further term of
twenty-eight years when application for such renewal and extension shall
have been made to the copyright office and duly registered therein within
one year prior to the expiration of the original term of copyright." 17
U.S.C. § 24 (1976 ed.)
Since the earliest copyright statute in this country, the copyright term of ownership
has been split between an original term and a renewal term. Originally, the renewal
was intended merely to serve as an extension of the original term; at the end of the
original term, the renewal could be effected and claimed by the author, if living, or
by the author's executors, administrators, or assigns. See Copyright Act of May 31,
1790, ch. XV, § 1, 1 Stat. 124. In 1831, Congress altered the provision so that the
author could assign his contingent interest in the renewal term, but could not,
through his assignment, divest the rights of his widow or children in the renewal
term. See Copyright Act of February 3, 1831, ch. XVI, 4 Stat. 436; see also G.
Curtis, Law of Copyright 235 [218] (1847). The 1831 renewal provisions created
"an entirely new policy, completely dissevering the title, breaking up the
continuance . . . and vesting an absolutely new title eo nomine in the persons
designated." White-Smith Music Publishing Co. v. Goff, 187 F. 247, 250 (CA1
1911). In this way, Congress attempted to give the author a second chance to
control and benefit from his work. Congress also intended to secure to the author's
family the opportunity to exploit the work if the author died before he could
register for the renewal term. See Bricker, Renewal and Extension of Copyright, 29
S.Cal.L.Rev. 23, 27 (1955) ("The renewal term of copyright is the law's second
chance to the author and his family to profit from his mental labors"). "The evident
purpose of [the renewal provision] is to provide for the family of the author after
his death. Since the author cannot assign his family's renewal rights, [it] takes the
form of a compulsory bequest of the copyright to the designated persons." De Sylva
v. Ballentine, 351 U.S. 570, 582, 76 S.Ct. 974, 981, 100 L.Ed. 1415 (1956). See
Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643, 651, 63 S.Ct. 773,
776, 87 L.Ed. 1055 (1943) (if at the end of the original copyright period, the author
is not living, "his family stand[s] in more need of the only means of subsistence
ordinarily left to them" (citation omitted)).
In its debates leading up to the Copyright Act of 1909, Congress elaborated upon
the policy underlying a system comprised of an original term and a completely
separate renewal term. See G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d
469, 471 (CA2) (the renewal right "creates a new estate, and the . . . cases which
have dealt with the subject assert that the new estate is clear of all rights, interests
or licenses granted under the original copyright"), cert. denied, 342 U.S. 849, 72
S.Ct. 77, 96 L.Ed. 641 (1951). "It not infrequently happens that the author sells his
copyright outright to a publisher for a comparatively small sum." H.R.Rep. No.
147
2222, 60th Cong., 2d Sess., 14 (1909). The renewal term permits the author,
originally in a poor bargaining position, to renegoti [219] ate the terms of the grant
once the value of the work has been tested. "[U]nlike real property and other forms
of personal property, [a copyright] is by its very nature incapable of accurate
monetary evaluation prior to its exploitation." 2 M. Nimmer & D. Nimmer, Nimmer
on Copyright § 9.02, p. 9-23 (1989) (hereinafter Nimmer). "If the work proves to be
a great success and lives beyond the term of twenty-eight years, . . . it should be the
exclusive right of the author to take the renewal term, and the law should be framed
. . . so that [the author] could not be deprived of that right." H.R.Rep. No. 2222,
supra, at 14. With these purposes in mind, Congress enacted the renewal provision
of the Copyright Act of 1909, 17 U.S.C. § 24 (1976 ed.). With respect to works in
their original or renewal term as of January 1, 1978, Congress retained the two-term
system of copyright protection in the 1976 Act. See 17 U.S.C. §§ 304(a) and (b)
(1988 ed.) (incorporating language of 17 U.S.C. § 24 (1976 ed.)).
Applying these principles in Miller Music Corp. v. Charles N. Daniels, Inc., 362
U.S. 373, 80 S.Ct. 792, 4 L.Ed.2d 804 (1960), this Court held that when an author
dies before the renewal period arrives, his executor is entitled to the renewal rights,
even though the author previously assigned his renewal rights to another party. "An
assignment by an author of his 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. [Fred] Fisher Co. v. [M.] Witmark & Sons, 318 U.S. 643 [63 S.Ct.
773], so holds." Id., 362 U.S., at 375, 80 S.Ct., at 794. If the author dies before that
time, the "next of kin obtain the renewal copyright free of any claim founded upon
an assignment made by the author in his lifetime. These results follow not because
the author's assignment is invalid but because he had only an expectancy to assign;
and his death, prior to the renewal period, terminates his interest in the renewal
which by § 24 vests in the named classes." Ibid. The legislative history of the 1909
Act echoes this view: "The right of renewal is contingent. It does not vest until the
end [of the original term].
[220] If [the author] is alive at the time of renewal, then the original contract may
pass it, but his widow or children or other persons entitled would not be bound by
that contract." 5 Legislative History of the 1909 Copyright Act, Part K, p. 77 (E.
Brylawski & A. Goldman eds. 1976) (statement of Mr. Hale). [2] Thus, the renewal
provisions were intended to give the author a second chance to obtain fair
remuneration for his creative efforts and to provide the author's family a "new
estate" if the author died before the renewal period arrived.
An author holds a bundle of exclusive rights in the copyrighted work, among them
the right to copy and the right to incorporate the work into derivative works. [3] By
assigning the renewal copyright in the work without limitation, as in Miller Music,
the author assigns all of these rights. After Miller Music, if the author dies before
the commencement of the renewal period, the assignee holds nothing. If the
assignee of all of the renewal rights holds nothing upon the death of the assignor
before arrival of the renewal period, [221] then, a fortiori, the assignee of a portion
of the renewal rights, e.g., the right to produce a derivative work, must also hold
nothing. See also Brief for Register of Copyrights as Amicus Curiae 22 ("[A]ny
assignment of renewal rights made during the original term is void if the author dies
before the renewal period"). Therefore, if the author dies before the renewal period,
then the assignee may continue to use the original work only if the author's
successor transfers the renewal rights to the assignee. This is the rule adopted by
the Court of Appeals below and advocated by the Register of Copyrights. See 863
ChapterNumber:
148
F.2d, at 1478; Brief for Register of Copyrights as Amicus Curiae 22. Application of
this rule to this case should end the inquiry. Woolrich died before the
commencement of the renewal period in the story, and, therefore, petitioners hold
only an unfulfilled expectancy. Petitioners have been "deprived of nothing. Like all
purchasers of contingent interests, [they took] subject to the possibility that the
contingency may not occur." Miller Music, supra, 362 U.S., at 378, 80 S.Ct., at
796.
B
The reason that our inquiry does not end here, and that we granted certiorari, is that
the Court of Appeals for the Second Circuit reached a contrary result in Rohauer v.
Killiam Shows, Inc., 551 F.2d 484 (1977). Petitioners' theory is drawn largely from
Rohauer. The Court of Appeals in Rohauer attempted to craft a "proper
reconciliation" between the owner of the pre-existing work, who held the right to
the work pursuant to Miller Music, and the owner of the derivative work, who had a
great deal to lose if the work could not be published or distributed. 551 F.2d, at
490. Addressing a case factually similar to this case, the court concluded that even
if the death of the author caused the renewal rights in the pre-existing work to
revert to the statutory successor, the owner of the derivative work could continue to
exploit that work. The court reasoned that the 1976 Act and the relevant precedents
did not preclude such a re [222] sult and that it was necessitated by a balancing of
the equities:
"[T]he equities lie preponderantly in favor of the proprietor of the

derivative copyright. In contrast to the situation where an assignee or
licensee has done nothing more than print, publicize and distribute a
copyrighted story or novel, a person who with the consent of the author
has created an opera or a motion picture film will often have made
contributions literary, musical and economic, as great as or greater than
the original author. . . . [T]he purchaser of derivative rights has no truly
effective way to protect himself against the eventuality of the author's
death before the renewal period since there is no way of telling who will
be the surviving widow, children or next of kin or the executor until that
date arrives." Id., at 493.
The Court of Appeals for the Second Circuit thereby shifted the focus from the
right to use the pre-existing work in a derivative work to a right inhering in the
created derivative work itself. By rendering the renewal right to use the original
work irrelevant, the court created an exception to our ruling in Miller Music and, as
petitioners concede, created an "intrusion" on the statutorily created rights of the
owner of the pre-existing work in the renewal term. Brief for Petitioners 33.
Though petitioners do not, indeed could not, argue that its language expressly
supports the theory they draw from Rohauer, they implicitly rely on § 6 of the 1909
Act, 17 U.S.C. § 7 (1976 ed.), which states that "dramatizations . . . of copyrighted
works when produced with the consent of the proprietor of the copyright in such
works . . . shall be regarded as new works subject to copyright under the provisions
of this title." Petitioners maintain that the creation of the "new," i.e., derivative,
work extinguishes any right the owner of rights in the pre-existing work might have
had to sue for infringement that occurs during the renewal term.
149
[223] We think, as stated in Nimmer, that "[t]his conclusion is neither warranted by

any express provision of the Copyright Act, nor by the rationale as to the scope of
protection achieved in a derivative work. It is moreover contrary to the axiomatic
copyright principle that a person may exploit only such copyrighted literary
material as he either owns or is licensed to use." 1 Nimmer § 3.07[A], pp. 3-23 to 3-
24 (footnotes omitted). The aspects of a derivative work added by the derivative
author are that author's property, but the element drawn from the pre-existing work
remains on grant from the owner of the pre-existing work. See Russell v. Price, 612
F.2d 1123, 1128 (CA9 1979) (reaffirming "well-established doctrine that a
derivative copyright protects only the new material contained in the derivative
work, not the matter derived from the underlying work"), cert. denied, 446 U.S.
952, 100 S.Ct. 2919, 64 L.Ed.2d 809 (1980); see also Harper & Row, Publishers,
Inc. v. Nation Enterprises, 471 U.S. 539, 547, 105 S.Ct. 2218, 2223, 85 L.Ed.2d
588 (1985) ("The copyright is limited to those aspects of the work termed
'expression'—that display the stamp of the author's originality"). So long as the pre-
existing work remains out of the public domain, its use is infringing if one who
employs the work does not have a valid license or assignment for use of the pre-
existing work. Russell v. Price, supra, at 1128 ("[E]stablished doctrine prevents
unauthorized copying or other infringing use of the underlying work or any part of
that work contained in the derivative product so long as the underlying work itself
remains copyrighted"). It is irrelevant whether the pre-existing work is inseparably
intertwined with the derivative work. See Gilliam v. American Broadcasting Cos.,
538 F.2d 14, 20 (CA2 1976) ("[C]opyright in the underlying script survives intact
despite the incorporation of that work into a derivative work"). Indeed, the plain
language of § 7 supports the view that the full force of the copyright in the pre-
existing work is preserved despite incorporation into the derivative work. See 17
U.S.C. § 7 (1976 ed.) (publication of the derivative work "shall not affect the force
or validity of [224] any subsisting copyright upon the matter employed"); see also
17 U.S.C. § 3 (1976 ed.) (copyright protection of a work extends to "all matter
therein in which copyright is already subsisting, but without extending the duration
or scope of such copyright"). This well-settled rule also was made explicit in the
1976 Act:
"The copyright in a compilation or derivative work extends only to the

material contributed by the author of such work, as distinguished from the
exclusive right in the preexisting material. The copyright in such work is
independent of, and does not affect or enlarge the scope, duration,
ownership, or subsistence of, any copyright protection in the pre-existing
material." 17 U.S.C. § 103(b).
See also B. Ringer, Renewal of Copyright (1960), reprinted as Copyright Law

Revision Study No. 31, prepared for the Senate Committee on the Judiciary, 86th
Cong., 2d. Sess., 169-170 (1961) ("[O]n the basis of judicial authority, legislative
history, and the opinions of the commentators, . . . someone cannot avoid his
obligations to the owner of a renewal copyright merely because he created and
copyrighted a 'new version' under a license or assignment which terminated at the
end of the first term") (footnotes omitted).
Properly conceding there is no explicit support for their theory in the 1909 Act, its
legislative history, or the case law, petitioners contend, as did the court in Rohauer,
that the termination provisions of the 1976 Act, while not controlling, support their
theory of the case. For works existing in their original or renewal terms as of
ChapterNumber:
150
January 1, 1978, the 1976 Act added 19 years to the 1909 Act's provision of 28
years of initial copyright protection and 28 years of renewal protection. See 17
U.S.C. §§ 304(a) and (b). For those works, the author has the power to terminate
the grant of rights at the end of the renewal term and, therefore, to gain the benefit
of that additional 19 years of protection. See [225] § 304(c). In effect, the 1976 Act
provides a third opportunity for the author to benefit from a work in its original or
renewal term as of January 1, 1978. Congress, however, created one exception to
the author's right to terminate: The author may not, at the end of the renewal term,
terminate the right to use a derivative work for which the owner of the derivative
work has held valid rights in the original and renewal terms. See § 304(c)(6)(A).
The author, however, may terminate the right to create new derivative works. Ibid.
For example, if petitioners held a valid copyright in the story throughout the
original and renewal terms, and the renewal term in "Rear Window" were about to
expire, petitioners could continue to distribute the motion picture even if
respondent terminated the grant of rights, but could not create a new motion picture
version of the story. Both the court in Rohauer and petitioners infer from this
exception to the right to terminate an intent by Congress to prevent authors of pre-
existing works from blocking distribution of derivative works. In other words,
because Congress decided not to permit authors to exercise a third opportunity to
benefit from a work incorporated into a derivative work, the Act expresses a
general policy of undermining the author's second opportunity. We disagree.
The process of compromise between competing special interests leading to the

enactment of the 1976 Act undermines any such attempt to draw an overarching
policy out of § 304(c)(6)(A), which only prevents termination with respect to works
in their original or renewal copyright terms as of January 1, 1978, and only at the
end of the renewal period. See Ringer, First Thoughts on the Copyright Act of
1976, 13 Copyright 187, 188-189 (1977) (each provision of 1976 Act was drafted
through series of compromises between interested parties). More specifically, §
304(c)
"was part of a compromise package involving the controversial and

intertwined issues of initial ownership, duration of copyright, and
reversion of rights. The Regis [226] ter, convinced that the opposition . . .
would scuttle the proposed legislation, drafted a number of alternative
proposals. . . .
"Finally, the Copyright Office succeeded in urging negotiations among

representatives of authors, composers, book and music publishers, and
motion picture studios that produced a compromise on the substance and
language of several provisions.
.....
"Because the controversy surrounding the provisions disappeared once the

parties reached a compromise, however, Congress gave the provisions
little or no detailed consideration. . . . Thus, there is no evidence
whatsoever of what members of Congress believed the language to mean."
Litman, Copyright, Compromise, and Legislative History, 72 Cornell L.
Rev. 857, 865-868 (1987) (footnotes omitted).
In fact, if the 1976 Act's termination provisions provide any guidance at all in this
case, they tilt against petitioners' theory. The plain language of the termination
151
provision itself indicates that Congress assumed that the owner of the pre-existing
work possessed the right to sue for infringement even after incorporation of the pre-
existing work in the derivative work.
"A derivative work prepared under authority of the grant before its
termination may continue to be utilized under the terms of the grant after
its termination, but this privilege does not extend to the preparation after
the termination of other derivative works based upon the copyrighted work
covered by the terminated grant." § 304(c)(6)(A) (emphasis added).
Congress would not have stated explicitly in § 304(c)(6)(A) that, at the end of the
renewal term, the owner of the rights in the pre-existing work may not terminate
use rights in existing derivative works unless Congress had assumed that [227] the
owner continued to hold the right to sue for infringement even after incorporation
of the pre-existing work into the derivative work. Cf. Mills Music, Inc. v. Snyder,
469 U.S. 153, 164, 105 S.Ct. 638, 645, 83 L.Ed.2d 556 (1985) (§ 304(c)(6)(A)
"carves out an exception from the reversion of rights that takes place when an
author exercises his right to termination").
Accordingly, we conclude that neither the 1909 Act nor the 1976 Act provides
support for the theory set forth in Rohauer. And even if the theory found some
support in the statute or the legislative history, the approach set forth in Rohauer is
problematic. Petitioners characterize the result in Rohauer as a bright-line "rule."
The Court of Appeals in Rohauer, however, expressly implemented policy
considerations as a means of reconciling what it viewed as the competing interests
in that case. See 551 F.2d, at 493-494. While the result in Rohauer might make
some sense in some contexts, it makes no sense in others. In the case of a
condensed book, for example, the contribution by the derivative author may be
little, while the contribution by the original author is great. Yet, under the Rohauer
"rule," publication of the condensed book would not infringe the pre-existing work
even though the derivative author has no license or valid grant of rights in the pre-
existing work. See Brief for Committee for Literary Property Studies as Amicus
Curiae 29-31; see also Brief for Songwriters Guild of America as Amicus Curiae
11-12 (policy reasons set forth in Rohauer make little sense when applied to
musical compositions). Thus, even if the Rohauer "rule" made sense in terms of
policy in that case, it makes little sense when it is applied across the derivative
works spectrum. Indeed, in the view of the commentators, Rohauer did not
announce a "rule," but rather an "interest-balancing approach." See Jaszi, When
Works Collide: Derivative Motion Pictures, Underlying Rights, and the Public
Interest, 28 UCLA L.Rev. 715, 758-761 (1981); Note, Derivative Copyright and the
1909 [228] Act—New Clarity or Confusion?, 44 Brooklyn L.Rev. 905, 926-927
(1978).
Finally, petitioners urge us to consider the policies underlying the Copyright Act.
They argue that the rule announced by the Court of Appeals will undermine one of
the policies of the Act—the dissemination of creative works—by leading to many
fewer works reaching the public. Amicus Columbia Pictures asserts that "[s]ome
owners of underlying work renewal copyrights may refuse to negotiate, preferring
instead to retire their copyrighted works, and all derivative works based thereon,
from public use. Others may make demands—like respondent's demand for 50% of
petitioners' future gross proceeds in excess of advertising expenses . . . which are so
exorbitant that a negotiated economic accommodation will be impossible." Brief for
ChapterNumber:
152
Columbia Pictures et al. as Amici Curiae 21. These arguments are better addressed
by Congress than the courts.
In any event, the complaint that respondent's monetary request in this case is so
high as to preclude agreement fails to acknowledge that an initially high asking
price does not preclude bargaining. Presumably, respondent is asking for a share in
the proceeds because he wants to profit from the distribution of the work, not
because he seeks suppression of it.
Moreover, although dissemination of creative works is a goal of the Copyright Act,

the Act creates a balance between the artist's right to control the work during the
term of the copyright protection and the public's need for access to creative works.
The copyright term is limited so that the public will not be permanently deprived of
the fruits of an artist's labors. See Sony Corp. of America v. Universal City Studios,
Inc., 464 U.S. 417, 429, 104 S.Ct. 774, 782, 78 L.Ed.2d 574 (1984) (the limited
monopoly conferred by the Copyright Act "is intended to motivate creative activity
of authors and inventors by the provision of a special reward, and to allow the
public access to the products of their genius after the limited period of exclusive
control has expired"). But nothing in the copyright statutes would [229] prevent an
author from hoarding all of his works during the term of the copyright. In fact, this
Court has held that a copyright owner has the capacity arbitrarily to refuse to
license one who seeks to exploit the work. See Fox Film Corp. v. Doyal, 286 U.S.
123, 127, 52 S.Ct. 546, 547, 76 L.Ed. 1010 (1932).
The limited monopoly granted to the artist is intended to provide the necessary
bargaining capital to garner a fair price for the value of the works passing into
public use. See Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S., at
546, 105 S.Ct., at 2223 ("The rights conferred by copyright are designed to assure
contributors to the store of knowledge a fair return for their labors"); Register of
Copyrights, Copyright Law Revision, 87th Cong., 1st Sess., 6 (Comm.Print 1961)
("While some limitations and conditions on copyright are essential in the public
interest, they should not be so burdensome and strict as to deprive authors of their
just reward. . . . [T]heir rights should be broad enough to give them a fair share of
the revenue to be derived from the market for their works"). When an author
produces a work which later commands a higher price in the market than the
original bargain provided, the copyright statute is designed to provide the author the
power to negotiate for the realized value of the work. That is how the separate
renewal term was intended to operate. See Ringer, Renewal of Copyright (1960),
reprinted as Copyright Law Revision Study No. 31, prepared for the Senate
Committee on the Judiciary, 86th Cong., 2d. Sess., 125 (1961) ("Congress wanted
to give [the author] an opportunity to benefit from the success of his work and to
renegotiate disadvantageous bargains . . . made at a time when the value of the
work [wa]s unknown or conjectural and the author . . . necessarily in a poor
bargaining position"). At heart, petitioners' true complaint is that they will have to
pay more for the use of works they have employed in creating their own works. But
such a result was contemplated by Congress and is consistent with the goals of the
Copyright Act.
[230] With the Copyright Act of 1790, Congress provided an initial term of
protection plus a renewal term that did not survive the author. In the Copyright Act
of 1831, Congress devised a completely separate renewal term that survived the
death of the author so as to create a "new estate" and to benefit the author's family,
and, with the passage of the 1909 Act, his executors. See supra, at 217-219. The
1976 Copyright Act provides a single, fixed term, but provides an inalienable
153
termination right. See 17 U.S.C. §§ 203, 302. This evolution of the duration of
copyright protection tellingly illustrates the difficulties Congress faces in
attempting to "secur[e] for limited Times to Authors . . . the exclusive Right to their
respective Writings." U.S. Const., Art. I, § 8, cl. 8. Absent an explicit statement of
congressional intent that the rights in the renewal term of an owner of a pre-existing
work are extinguished upon incorporation of his work into another work, it is not
our role to alter the delicate balance Congress has labored to achieve.
[…]
III
Petitioners assert that even if their use of "It Had to Be Murder" is unauthorized, it
is a fair use and, therefore, not infringing. At common law, "the property of the
author . . . in his intellectual creation [was] absolute until he voluntarily part[ed]
with the same." American Tobacco Co. v. Werckmeister, 207 U.S. 284, 299, 28
S.Ct. 72, 77, 52 L.Ed. 208 (1907). The fair use doctrine, which is incorporated into
the 1976 Act, evolved in response to this absolute rule. See Harper & Row, 471
U.S., at 549-551, 105 S.Ct., at 2224-2226. The doctrine is an " 'equitable rule of
reason,' " Sony Corp. of America v. Universal City Studios, Inc., 464 U.S., at 448,
104 S.Ct., at 792, which "permits courts to avoid rigid application of the copyright
statute when, on occasion, it would stifle the very creativity which that law is
designed to foster." Iowa State University Research Foundation, Inc. v. American
Broadcasting Cos., 621 F.2d 57, 60 (CA2 1980). Petitioners contend that the fair
use doctrine should be employed in this case to "avoid [a] rigid applicatio[n] of the
Copyright Act." Brief for Petitioners 42.
In 17 U.S.C. § 107, Congress provided examples of fair use, e.g., copying "for
purposes such as criticism, comment, news reporting, teaching (including multiple
copies for classroom use), scholarship, or research," and listed four [237]
nonexclusive factors that a court must consider in determining whether an
unauthorized use is not infringing:
"(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."
The Court of Appeals determined that the use of Woolrich's story in petitioners'
motion picture was not fair use. We agree. The motion picture neither falls into any
of the categories enumerated in § 107 nor meets the four criteria set forth in § 107.
"[E]very [unauthorized] commercial use of copyrighted material is presumptively
an unfair exploitation of the monopoly privilege that belongs to the owner of the
copyright." Sony Corp. of America v. Universal Studios, Inc., supra, 464 U.S., at
ChapterNumber:
154
451, 104 S.Ct., at 793. Petitioners received $12 million from the re-release of the
motion picture during the renewal term. 863 F.2d, at 1468. Petitioners asserted
before the Court of Appeals that their use was educational rather than commercial.
The Court of Appeals found nothing in the record to support this assertion, nor do
we.
Applying the second factor, the Court of Appeals pointed out that "[a] use is less
likely to be deemed fair when the copyrighted work is a creative product." 863
F.2d, at 1481 (citing Brewer v. Hustler Magazine, Inc., 749 F.2d 527, 529 (CA9
1984)). In general, fair use is more likely to be found in factual works than in
fictional works. See 3 Nimmer § 13.05[A], pp. 13-77 to 13-78 ("[A]pplication of
the fair use defense [is] greater . . . in the case of factual works than in the case of
works of fiction or fantasy"); cf. Harper & Row, 471 U.S., at 563, 105 S.Ct., at
2232 ("The law generally recognizes a greater need to disseminate factual works
than works of fiction or fan tasy").
[238] A motion picture based on a fictional short story obviously falls into the latter
category.
Examining the third factor, the Court of Appeals determined that the story was a
substantial portion of the motion picture. See 471 U.S., at 564-565, 105 S.Ct., at
2232-2233 (finding unfair use where quotation from book " 'took what was
essentially the heart of the book' "). The motion picture expressly uses the story's
unique setting, characters, plot, and sequence of events. Petitioners argue that the
story constituted only 20% of the motion picture's story line, Brief for Petitioners
40, n. 69, but that does not mean that a substantial portion of the story was not used
in the motion picture. "[A] taking may not be excused merely because it is
insubstantial with respect to the infringing work." Harper & Row, supra, at 565,
105 S.Ct., at 2233.
The fourth factor is the "most important, and indeed, central fair use factor." 3
Nimmer § 13.05[A], p. 13-81. The record supports the Court of Appeals' conclusion
that re-release of the film impinged on the ability to market new versions of the
story. Common sense would yield the same conclusion. Thus, all four factors point
to unfair use. "This case presents a classic example of an unfair use: a commercial
use of a fictional story that adversely affects the story owner's adaptation rights."
863 F.2d, at 1482.
For the foregoing reasons, the judgment of the Court of Appeals is affirmed, and
the case is remanded for further proceedings consistent with this opinion.
It is so ordered.
[…]
[1] The Copyright Act of 1976 (1976 Act), 17 U.S.C. § 101 et seq. (1988 ed.),
codified the definition of a " 'derivative work,' " as "a work based upon one or more
preexisting works, such as a translation, musical arrangement, dramatization,
fictionalization, motion picture version . . . or any other form in which a work may
be recast, transformed, or adapted." § 101.
[2] Neither Miller Music nor Fred Fisher decided the question of when the renewal
rights vest, i.e., whether the renewal rights vest upon commencement of the
registration period, registration, or the date on which the original term expires and
the renewal term begins. We have no occasion to address the issue here.
155
[3] Title 17 U.S.C. § 106 (1988 ed.) codifies the various rights a copyright holder
possesses: "[T]he owner of copyright under this title has the exclusive rights to do
and to authorize any of the following:
"(1) to reproduce the copyrighted work in copies or phonorecords;
"(2) to prepare derivative works based upon the copyrighted work;
"(3) to distribute copies or phonorecords of the copyrighted work to the

public by sale or other transfer of ownership, or by rental, lease, or
lending;
"(4) in the case of literary, musical, dramatic, and choreographic works,

pantomimes, and motion pictures and other audiovisual works, to perform
the copyrighted work publicly; and
"(5) in the case of literary, musical, dramatic, and choreographic works,

pantomimes, and pictorial, graphic, or sculptural works, including the
individual images of a motion picture or other audiovisual work, to
display the copyrighted work publicly."
__________
[1] Although the Court of Appeals determined the rights of the parties by looking to
the 1909 Act, respondent now argues that the 1976 Act is applicable. At the time
petitioners secured their copyright in the film in 1954, and respondent renewed his
copyright in the short story in 1969, the Copyright Act of 1909 was in effect. There
is no evidence that Congress in the Copyright Act of 1976 intended to abrogate
rights created under the previous Act. I therefore take it as evident that while the
cause of action under which respondent sues may have been created by the 1976
Act, the respective property rights of the parties are determined by the statutory
grant under the 1909 Act. See Roth v. Pritikin, 710 F.2d 934, 938 (CA2), cert.
denied, 464 U.S. 961, 104 S.Ct. 394, 78 L.Ed.2d 337 (1983); International Film
Exchange, Ltd. v. Corinth Films, Inc., 621 F.Supp. 631 (SDNY 1985); Jaszi, When
Works Collide: Derivative Motion Pictures, Underlying Rights, and the Public
Interest, 28 UCLA L.Rev. 715, 746-747 (1981) (hereinafter Jaszi). Cf. 1 M.
Nimmer & D. Nimmer, Nimmer on Copyright § 1.11, p. 1-96 (1989) (hereinafter
Nimmer) (no explicit statement of a legislative intent to apply the current Act
retroactively).
[2] Section 1 of the 1909 Act, 35 Stat. 1075, provides in pertinent part:
"That any person entitled thereto, upon complying with the provisions of
this Act, shall have the exclusive right:
"(a) To print, reprint, publish, copy, and vend the copyrighted work;
.....
"(d) To perform or represent the copyrighted work publicly if it be a

drama . . .; and to exhibit, perform, represent, produce, or reproduce it in
any manner or by any method whatsoever."
ChapterNumber:
156
In its response to this dissent, the Court completely ignores the plain language of §
1.
[3] The Court states that this reading of § 7 is "creative," has not been adopted by
any Court of Appeals in the history of the 1909 Act, and has not been argued by
petitioners. Ante, at 230. Although I am flattered by this comment, I must
acknowledge that the credit belongs elsewhere. In their briefs to this Court,
petitioners and their amici argue that § 7 created an independent but limited
copyright in the entire derivative work entitled to equal treatment with original
works under the renewal and duration provisions of § 24. Brief for Petitioners 14-
15, 17, 21, 29-30; Brief for Columbia Pictures Industries, Inc., et al., as Amici
Curiae 11, 13, 15. That was also the central argument of Judge Friendly in his
opinion for the Court of Appeals for the Second Circuit, see Rohauer v. Killiam
Shows, Inc., 551 F.2d 484, 487-488, 489-490, 493-494, cert. denied, 431 U.S. 949,
97 S.Ct. 2666, 53 L.Ed.2d 266 (1977), and Judge Thompson dissenting from the
panel decision below, see Abend v. MCA, Inc., 863 F.2d 1465, 1484-1487 (CA9
1988). Indeed, Judge Friendly only addressed the equities with great reservation,
551 F.2d, at 493, after "a close reading of the language of what is now § 7." Id., at
489.
[4] The drafters of the 1909 Act were well aware of the difficulty of contacting
distant authors who no longer wished to enforce their copyright rights. In § 24,
for example, Congress provided that a proprietor could secure and renew copyright
on a composite work when the individual contributions were not separately
registered. The provision was apparently addressed to the difficulties such
proprietors had previously faced in locating and obtaining the consent of authors at
the time of renewal. See H.R.Rep. No. 2222, 60th Cong., 2d Sess., 15 (1909); 1
Legislative History of the 1909 Copyright Act, Part C, p. 56 (E. Brylawski & A.
Goldman eds. 1976) (statement of Mr. Elder) (hereinafter Brylawski & Goldman); 5
id., Part K pp. 18-19 (statement of Mr. Putnam); id., at K77 (statement of Mr.
Hale). See also Elder, Duration of Copyright, 14 Yale L.J. 417, 418 (1905). The
effect of the § 7 consent requirement under the Court's reading should not only be
to forbid the author of the derivative work to "employ a copyrighted work without
the author's permission," ante, at 232, but also to penalize him by depriving him
both of the right to use his own new material and, in theory, of the right to protect
that new material against use by the public. It is most unlikely that a Congress
which intended to promote the creation of literary works would have conditioned
the protection of new material in an otherwise original work on "consent" of an
original author who did not express the desire to protect his own work.
The Court of Appeals thought that the failure of Congress to grant an "exemption"
to derivative works similar to that it granted composite works demonstrated its
intention that derivative works lapse upon termination of the underlying author's
copyright interest. 863 F.2d, at 1476. Section 24, however, does not exempt
composite works from the renewal provision, but merely provides for their renewal
by the proprietor alone when the individual contributions are not separately
copyrighted. See 2 Nimmer § 9.03[B], p. 9-36. Moreover, the "author," entitled to
renewal under § 24, refers back to the author of the original work and the derivative
work. Congress did not need to make special provision for the derivative work in §
24 because it already did so in § 7, making it a new work "subject to copyright
under the provisions of this title." 17 U.S.C. § 7 (1976 ed.).
157
[5] It is instructive to compare the language of § 7 to that used by Congress in 1976

to indicate that copyright in a derivative work under the new Act attached only to
the new material:
"The copyright in a compilation or derivative work extends only to the

material contributed by the author of such work, as distinguished from the
exclusive right in the preexisting material. The copyright in such work is
independent of, and does not affect or enlarge the scope, duration,
ownership, or subsistence of, any copyright protection in the preexisting
material." 17 U.S.C. § 103(b) (1988 ed.).
[6] I thus agree with the Court that publication of a derivative work cannot extend
the scope or duration of the copyright in the original work, ante, at 234-235, and
that the underlying work's copyright term exists independently of the derivative
work's term. Ante, at 231-232, 235. As much is clear from the language of § 7,
which extends the copyright to the entire work, but then limits the effect of that
copyright. I further agree that the original author's right to "consent" to the
copyright of a derivative work terminates when the statutory term of the copyright
in the underlying work expires. Ante, at 235. As I explain, infra at 251-253, that
result follows from the language of § 24. I do not agree, however, that the statutory
right to distribute and publicly perform a derivative work that has been copyrighted
with the original author's consent during the original term of the underlying work is
limited by the validity and scope of the original copyright. Ante, at 235. Section 7,
in conjunction with § 24, gives the derivative author two full terms of copyright in
the entire derivative work both when the original work is used with the consent of
the original author and when the original work is in the public domain. My
conclusion thus rests upon the language of the statute. The Court's contrary
assertion, that if the right to publish the derivative work extended beyond the
original term of the underlying work it would "nulli[fy] the 'force' of the copyright
in the 'matter employed,' " ante, at 236, simply begs the question of the extent of
the original author's statutory rights. Even after the derivative work has been
copyrighted, the original author retains all of his statutory rights, including the right
to consent to the creation of additional derivative works during both the original
and renewal terms. Moreover, even if the derivative work did derogate from the
force of the original work, the provision to which the Court apparently refers states
only that "publication " of a derivative work—and not consent to its creation—shall
not affect the force of the copyright in the matter employed. The Court can avoid
making § 7 complete surplus (and allow it to limit the rights of both the original
and the derivative author) only by distorting the plain language of that provision.
[7] See, e.g., Gray v. Russell, 10 F.Cas. 1035, 1037-1038 (No. 5,728) (CC
Mass.1839); Emerson v. Davies, 8 F.Cas. 615, 618-619 (No. 4,436) (CC
Mass.1845); Shook v. Rankin, 21 F.Cas. 1335, 1336 (No. 12,804) (CC
N.D.Ill.1875). The Court's difficulty in explaining away the language of § 7 is not
surprising. The authority upon whom it almost exclusively relies, see ante, at 223,
had the same difficulty, stating at one point that "[t]he statutory text was somewhat
ambiguous," 1 Nimmer, p. 3-22.2, and admitting at another that under his reading
of the Copyright Act the provision was largely irrelevant. See id., at 3-29, n. 17
("[I]t is consent referred to in Sec. 7, but which would have efficacy as a matter of
contract law even without Sec. 7"). At least in the Copyright Act of 1909, however,
Congress knew exactly what it was doing.
ChapterNumber:
158
[8] The Act of 1790, passed by the First Congress, provided "the sole right and
liberty of printing, reprinting, publishing and vending" the copyrighted work. § 1, 1
Stat. 124. Its successor, the Act of 1831, repeated the language that the author of a
copyrighted work "shall have the sole right and liberty of printing, reprinting,
publishing, and vending" the work. Ch. 16, § 1, 4 Stat. 436. Benjamin Kaplan has
written that the Act of 1870 constituted an "enlargement of the monopoly to cover
the conversion of a work from one to another artistic medium." An Unhurried View
of Copyright 32 (1967) (hereinafter Kaplan).
[9]
"By the publication of Mrs. Stowe's book, the creations of the genius and
imagination of the author have become as much public property as those
of Homer or Cervantes. . . . All her conceptions and inventions may be
used and abused by imitators, play-rights and poetasters [They are no
longer her own—those who have purchased her book, may clothe them in
English doggerel, in German or Chinese prose. Her absolute dominion and
property in the creations of her genius and imagination have been
voluntarily relinquished.] All that now remains is the copyright of her
book; the exclusive right to print, reprint and vend it, and those only can
be called infringers of her rights, or pirates of her property, who are guilty
of printing, publishing, importing or vending without her license, 'copies
of her book.' " Stowe v. Thomas, 23 F.Cas., at 208 (footnote omitted).
It appears that at least as late as 1902, English copyright law also did not recognize
that a dramatization could infringe an author's rights in a book. See E.
MacGillivray, A Treatise Upon The Law of Copyright 114 (1902); see also Reade v.
Conquist, 9 C.B.N.S. 755, 142 Eng.Rep. 297 (C.P.1861); Coleman v. Wathen, 5
T.R. 245, 101 Eng.Rep. 137 (K.B.1793). Even after the passage of the Act of 1870,
one American commentator flatly declared: "Even if the public recitation of a book,
in which copyright exists, is not made from memory, but takes the form of a public
reading, from the work itself, of the whole or portions of it, this would not amount
to an infringement of the author's copyright." 2 J. Morgan, Law of Literature 700-
701 (1875).
[10]
"The American cases reflect no recognition that unauthorized

dramatization could infringe rights in a nondramatic work until the 1870
copyright revision provided authors with the same option to reserve
dramatization rights that they were afforded with respect to translation. By
then, dramatizations like other derivative works—already had enjoyed
almost a century of substantial independence. During this period, courts
construing federal copyright statutes were willing to extend protection to
them, but were reluctant to interfere with their unauthorized production."
Jaszi 783.
See also Goldstein, Derivative Rights and Derivative Works in Copyright, 30 J.

Copyright Society 209, 211-215 (1983).
[11] The history of the Copyright Act of 1909 is recounted in Justice Frankfurter's
opinion for the Court in Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S.
643, 652, 63 S.Ct. 773, 777, 87 L.Ed. 1055 (1943).
159
[12] The first draft of the copyright bill considered in 1905 provided that if the
author or his assigns did not make or authorize to be made a dramatization within
10 years of the date of registration, the work could be used for dramatization by
other authors. 2 Brylawski & Goldman, Part D, p. LXV. A similar provision
appeared in the third draft of the bill considered by the Conference the following
year, 3 id., Part E, p. XL, and in the bill submitted by the Register of Copyrights to
Congress. 1 id., Part B, pp. 37-38. The provision was eventually dropped during
hearings in Congress and was never adopted into law.
[13] The first draft provided identical terms for both original works of authorship
and derivative works, 2 id., Part D, pp. XXXVII-XXXVIII. Successive drafts gave
the copyright in the original work to the author for his life plus 50 years, but limited
the copyright in a derivative work to 50 years. 3 id., Part E, pp. LIII-LIV; 1 id., Part
B, pp. 34-35. The single term was rejected at a late date by Congress and the final
Act eventually provided the same two-term copyright for original and derivative
works. See generally B. Ringer, Renewal of Copyright (1960), reprinted as
Copyright Law Revision Study No. 31, prepared for the Senate Committee on the
Judiciary, 86th Cong., 2d Sess., 115-121 (1961).
[14] The amendment apparently emerged from dialogue between Mr. W.B. Hale,
representative of the American Law Book Company, and Senator Smoot:
"Mr. Hale: 'There is another verbal criticism I should like to make in

section 6 of the Kittredge bill, which also relates to compilations,
abridgments, etc.'
"The Chairman [Senator Smoot]. 'I think it is the same in the other bills.'
"Mr. Hale. 'Yes; it is the same in all the bills. I heartily agree with and am
in favor of that section; but in line 12, in lieu of the words "but no such
copyright shall effect the force or validity," etc., I would prefer to
substitute these words: "and the publication of any such new work shall
not affect the copyright," etc. . . . Under the act, as it stands now, it says
the copyright shall not affect it. I would like to meet the case of a new
compiled work, within the meaning of this clause, that is not copyrighted,
or where, by reason of some accident the copyright fails. That should not
affect the original copyrights in the works that have entered into and
formed a part of this new compiled work. It does not change the intent of
this section in any way.' " 5, Brylawski & Goldman, Part K, p. 78.
[15] In Ricordi, the author of the derivative work not only produced a new
derivative work, but also breached his covenant not to distribute the work, after the
first term of the underlying copyright. As Justice WHITE has explained, "Ricordi
merely held that the licensee of a copyright holder may not prepare a new
derivative work based upon the copyrighted work after termination of the grant."
Mills Music, Inc. v. Snyder, 469 U.S. 153, 183, n. 7, 105 S.Ct. 638, 655, n. 7, 83
L.Ed.2d 556 (1985) (dissenting opinion).
[16] The result follows as well from the "force and validity" clause of § 7.
[17] Congress was primarily concerned with the ability of the author to exploit his
own work of authorship:
ChapterNumber:
160
"Your committee, after full consideration, decided that it was distinctly to

the advantage of the author to preserve the renewal period. It not
infrequently happens that the author sells his copyright outright to a
publisher for a comparatively small sum. If the work proves to be a great
success and lives beyond the term of twenty-eight years, your committee
felt that it should be the exclusive right of the author to take the renewal
term, and the law should be framed as is the existing law, so that he could
not be deprived of that right." H.R.Rep. No. 2222, 60th Cong., 2d Sess., at
14.
[18] The creation of a derivative work often is in the best interests of both the
original author and his statutory successors. As one commentator has noted:
"The movie Rear Window became a selling point for anthologies

containing the Woolrich story. The musical play Cats no doubt sent many
people who dimly remembered the Love Song of J. Alfred Prufrock as the
chief, if not the only oeuvre of T.S. Eliot to the bookstore for Old
Possum's Book of Practical Cats."
Weinreb, Fair's Fair: A Comment on the Fair Use Doctrine, 103 Harv.L.Rev. 1137,
1147 (1990).
[19] See 17 U.S.C. § 24 (1976 ed.) ("[I]n the case of . . . any work copyrighted
by . . . an employer for whom such work is made for hire, the proprietor of such
copyright shall be entitled to a renewal and extension of the copyright in such work
for the further term of twenty-eight years"). See also Ellingson, Copyright
Exception for Derivative Works and the Scope of Utilization, 56 Ind.L.J. 1, 11
(1980-1981).
[20] See Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406 (CA2
1946); Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266 (CA2
1944). In the "12th Street Rag" case, Shapiro, Bernstein & Co. v. Jerry Vogel Music
Co., 221 F.2d 569 (CA2 1955), the Court of Appeals held that a work of music,
intended originally to stand on its own as an instrumental, could become a joint
work when it was later sold to a publisher who commissioned lyrics to be written
for it. The decision, which would give the creator of the derivative work and the
underlying author a joint interest in the derivative work, accomplishes the same
result that I believe § 7 does expressly.
[21]
"The effect of the Fred Fisher [, 318 U.S. 643, 63 S.Ct. 773, 87 L.Ed.
1055 (1943),] case and other authorities is that if the author is dead when
the twenty-eighth year comes round, the renewal reverts, free and clear, to
his widow, children, and so forth in a fixed order of precedency; but if the
author is alive in that year, the original sale holds and there is no
reversion. The distinction is hard to defend and may operate in a
peculiarly perverse way where on the faith of a transfer from the now-
deceased author, the transferee has created a 'derivative work,' say a
movie based on the original novel." Kaplan 112.
[22]
161
"To such extent as it may be permissible to consider policy considerations,

the equities lie preponderantly in favor of the proprietor of the derivative
copyright. In contrast to the situation where an assignee or licensee has
done nothing more than print, publicize and distribute a copyrighted story
or novel, a person who with the consent of the author has created an opera
or a motion picture film will often have made contributions literary,
musical and economic, as great as or greater than the original author. As
pointed out in the Bricker article [Bricker, Renewal and Extension of
Copyright, 29 S.Cal.L.Rev. 23, 33 (1955) ], the purchaser of derivative
rights has no truly effective way to protect himself against the eventuality
of the author's death before the renewal period since there is no way of
telling who will be the surviving widow, children or next of kin or the
executor until that date arrives. To be sure, this problem exists in equal
degree with respect to assignments or licenses of underlying copyright,
but in such cases there is not the countervailing consideration that large
and independently copyrightable contributions will have been made by the
transferee." Rohauer v. Killiam Shows, Inc., 551 F.2d 484, 493 (CA2),
cert. denied, 431 U.S. 949, 97 S.Ct. 2666, 53 L.Ed.2d 266 (1977).

6.1.2
New York Times Co. v. Tasini

533 U.S. 483 (2001)
NEW YORK TIMES CO., INC., et al.

v.
TASINI et al.
[…]
United States Supreme Court.
Argued March 28, 2001.
Decided June 25, 2001[ … ]

]
Justice Ginsburg, delivered the opinion of the Court.
This copyright case concerns the rights of freelance authors and a presumptive
privilege of their publishers. The litigation was initiated by six freelance authors
and relates to articles they contributed to three print periodicals (two newspapers
and one magazine). Under agreements with the periodicals' publishers, but without
the freelancers' consent, two computer database companies placed copies of the
freelancers' articles—along with all other articles from the periodicals in which the
freelancers' work appeared—into three databases. Whether written by a freelancer
ChapterNumber:
162
or staff member, each article is presented to, and retrievable by, the user in
isolation, clear of the context the original print publication presented.
The freelance authors' complaint alleged that their copyrights had been infringed by
the inclusion of their articles in the databases. The publishers, in response, relied on
the [488] privilege of reproduction and distribution accorded them by § 201(c) of
the Copyright Act, which provides:
"Copyright in each separate contribution to a collective work is distinct

from copyright in the collective work as a whole, and vests initially in the
author of the contribution. In the absence of an express transfer of the
copyright or of any rights under it, the owner of copyright in the collective
work is presumed to have acquired only the privilege of reproducing and
distributing the contribution as part of that particular collective work, any
revision of that collective work, and any later collective work in the same
series." 17 U. S. C. § 201(c).
Specifically, the publishers maintained that, as copyright owners of collective

works, i. e., the original print publications, they had merely exercised "the
privilege" § 201(c) accords them to "reproduc[e] and distribut[e]" the author's
discretely copyrighted contribution.
In agreement with the Second Circuit, we hold that § 201(c) does not authorize the
copying at issue here. The publishers are not sheltered by § 201(c), we conclude,
because the databases reproduce and distribute articles standing alone and not in
context, not "as part of that particular collective work" to which the author
contributed, "as part of . . . any revision" thereof, or "as part of . . . any later
collective work in the same series." Both the print publishers and the electronic
publishers, we rule, have infringed the copyrights of the freelance authors.
A
Respondents Jonathan Tasini, Mary Kay Blakely, Barbara Garson, Margot Mifflin,
Sonia Jaffe Robbins, and David S. Whitford are authors (Authors). Between 1990
and 1993, they wrote the 21 articles (Articles) on which this dispute centers. Tasini,
Mifflin, and Blakely contributed 12 Articles to The New York Times, the daily
newspaper published by [489] petitioner The New York Times Company (Times).
Tasini, Garson, Robbins, and Whitford wrote eight Articles for Newsday, another
New York daily paper, published by petitioner Newsday, Inc. (Newsday). Whitford
also contributed one Article to Sports Illustrated, a weekly magazine published by
petitioner Time, Inc. (Time). The Authors registered copyrights in each of the
Articles. The Times, Newsday, and Time (Print Publishers) registered collective
work copyrights in each periodical edition in which an Article originally appeared.
The Print Publishers engaged the Authors as independent contractors (freelancers)
under contracts that in no instance secured consent from an Author to placement of
an Article in an electronic database. [1]
163
At the time the Articles were published, all three Print Publishers had agreements
with petitioner LEXIS/NEXIS (formerly Mead Data Central Corp.), owner and
operator of NEXIS, a computerized database that stores information in a text-only
format. NEXIS contains articles from hundreds of journals (newspapers and
periodicals) spanning many years. The Print Publishers have licensed to LEXIS/
NEXIS the text of articles appearing in the three periodicals. The licenses authorize
LEXIS/NEXIS to copy and sell any portion of those texts.
Pursuant to the licensing agreements, the Print Publishers regularly provide

LEXIS/NEXIS with a batch of all the articles published in each periodical edition.
The Print Publisher codes each article to facilitate computerized retrieval, then
transmits it in a separate file. After further coding, LEXIS/NEXIS places the article
in the central discs of its database.
[490] Subscribers to NEXIS, accessing the system through a computer, may search
for articles by author, subject, date, publication, headline, key term, words in text,
or other criteria. Responding to a search command, NEXIS scans the database and
informs the user of the number of articles meeting the user's search criteria. The
user then may view, print, or download each of the articles yielded by the search.
The display of each article includes the print publication (e. g., The New York
Times), date (September 23, 1990), section (Magazine), initial page number (26),
headline or title ("Remembering Jane"), and author (Mary Kay Blakely). Each
article appears as a separate, isolated "story"—without any visible link to the other
stories originally published in the same newspaper or magazine edition. NEXIS
does not contain pictures or advertisements, and it does not reproduce the original
print publication's formatting features such as headline size, page placement ( e. g.,
above or below the fold for newspapers), or location of continuation pages.
The Times (but not Newsday or Time) also has licensing agreements with petitioner
University Microfilms International (UMI). The agreements authorize reproduction
of Times materials on two CD—ROM products, the New York Times OnDisc
(NYTO) and General Periodicals OnDisc (GPO).
Like NEXIS, NYTO is a text-only system. Unlike NEXIS, NYTO, as its name
suggests, contains only the Times. Pursuant to a three-way agreement, LEXIS/
NEXIS provides UMI with computer files containing each article as transmitted by
the Times to LEXIS/NEXIS. Like LEXIS/NEXIS, UMI marks each article with
special codes. UMI also provides an index of all the articles in NYTO. Articles
appear in NYTO in essentially the same way they appear in NEXIS, i. e., with
identifying information (author, title, etc.), but without original formatting or
accompanying images.
[491] GPO contains articles from approximately 200 publications or sections of

publications. Unlike NEXIS and NYTO, GPO is an image-based, rather than a text-
based, system. The Times has licensed GPO to provide a facsimile of the Times'
Sunday Book Review and Magazine. UMI "burns" images of each page of these
sections onto CD—ROMs. The CD— ROMs show each article exactly as it
appeared on printed pages, complete with photographs, captions, advertisements,
and other surrounding materials. UMI provides an index and abstracts of all the
articles in GPO.
Articles are accessed through NYTO and GPO much as they are accessed through
NEXIS. The user enters a search query using similar criteria (e. g., author, headline,
date). The computer program searches available indexes and abstracts, and retrieves
ChapterNumber:
164
a list of results matching the query. The user then may view each article within the
search result, and may print the article or download it to a disc. The display of each
article provides no links to articles appearing on other pages of the original print
publications. [2]
B
On December 16, 1993, the Authors filed this civil action in the United States
District Court for the Southern District of New York. The Authors alleged that their
copyrights were infringed when, as permitted and facilitated by the Print
Publishers, LEXIS/NEXIS and UMI (Electronic Publishers) placed the Articles in
the NEXIS, NYTO, and GPO databases (Databases). The Authors sought
declaratory [492] and injunctive relief, and damages. In response to the Authors'
complaint, the Print and Electronic Publishers raised the reproduction and
distribution privilege accorded collective work copyright owners by 17 U. S. C. §
201(c). After discovery, both sides moved for summary judgment.
The District Court granted summary judgment for the Publishers, holding that §
201(c) shielded the Database reproductions. 972 F. Supp. 804, 806 (1997). The
privilege conferred by § 201(c) is transferable, the court first concluded, and
therefore could be conveyed from the original Print Publishers to the Electronic
Publishers. Id., at 816. Next, the court determined, the Databases reproduced and
distributed the Authors' works, in § 201(c)'s words, "as part of . . . [a] revision of
that collective work" to which the Authors had first contributed. To qualify as
"revisions," according to the court, works need only "preserve some significant
original aspect of [collective works]—whether an original selection or an original
arrangement." Id., at 821. This criterion was met, in the District Court's view,
because the Databases preserved the Print Publishers' "selection of articles" by
copying all of the articles originally assembled in the periodicals' daily or weekly
issues. Id., at 823. The Databases "highlight[ed]" the connection between the
articles and the print periodicals, the court observed, by showing for each article
not only the author and periodical, but also the print publication's particular issue
and page numbers.[ … ].
The Authors appealed, and the Second Circuit reversed. 206 F. 3d 161 (1999). The
Court of Appeals granted summary judgment for the Authors on the ground that the
Databases were not among the collective works covered by § 201(c), and
specifically, were not "revisions" of the periodicals in which the Articles first
appeared. Id., at 167-170. Just as § 201(c) does not "permit a Publisher to sell a
hard [493] copy of an Author's article directly to the public even if the Publisher
also offered for individual sale all of the other articles from the particular edition,"
the court reasoned, so § 201(c) does not allow a Publisher to "achieve the same goal
indirectly" through computer databases. Id., at 168. In the Second Circuit's view,
the Databases effectively achieved this result by providing multitudes of
"individually retrievable" articles. Ibid. As stated by the Court of Appeals, the
Databases might fairly be described as containing "new antholog[ies] of
innumerable" editions or publications, but they do not qualify as "revisions" of
particular editions of periodicals in the Databases. Id., at 169. Having concluded
that § 201(c) "does not permit the Publishers," acting without the author's consent,
"to license individually copyrighted works for inclusion in the electronic
165
databases," the court did not reach the question whether the § 201(c) privilege is
transferable. Id., at 165, and n. 2.
We granted certiorari to determine whether the copying of the Authors' Articles in

the Databases is privileged by 17 U. S. C. § 201(c). 531 U. S. 978 (2000). Like the
Court of Appeals, we conclude that the § 201(c) privilege does not override the
Authors' copyrights, for the Databases do not reproduce and distribute the Articles
as part of a collective work privileged by § 201(c). Accordingly, and again like the
Court of Appeals, we find it unnecessary to determine whether the privilege is
transferable.
II
Under the Copyright Act, as amended in 1976, "[c]opyright protection subsists . . .
in original works of authorship fixed in any tangible medium of expression .. . from
which they can be perceived, reproduced, or otherwise communicated." 17 U. S. C.
§ 102(a). When, as in this case, a freelance author has contributed an article to a
"collective work" such as a newspaper or magazine, see § 101 (defining "collective
work"), the statute recognizes two distinct copyrighted works: "Copyright in each
separate contribution to a collec[494]tive work is distinct from copyright in the
collective work as a whole . . . ." § 201(c) (emphasis added). Copyright in the
separate contribution "vests initially in the author of the contribution" (here, the
freelancer). Ibid. Copyright in the collective work vests in the collective author
(here, the newspaper or magazine publisher) and extends only to the creative
material contributed by that author, not to "the preexisting material employed in the
work," § 103(b). See also Feist Publications, Inc. v. Rural Telephone Service Co.,
499 U. S. 340, 358 (1991) (copyright in "compilation"—a term that includes
"collective works," 17 U. S. C. § 101—is limited to the compiler's original
"selection, coordination, and arrangement").
Prior to the 1976 revision, as the courts below recognized, see 206 F. 3d, at 168;
972 F. Supp., at 815, authors risked losing their rights when they placed an article
in a collective work. Pre-1976 copyright law recognized a freelance author's
copyright in a published article only when the article was printed with a copyright
notice in the author's name. See Copyright Act of 1909, § 18, 35 Stat. 1079. When
publishers, exercising their superior bargaining power over authors, declined to
print notices in each contributor's name, the author's copyright was put in jeopardy. [
… ]. The author did not have the option to assign only the right of publication in
the periodical; such a partial assignment was blocked by the doctrine of copyright
"indivisibility." See id., at 11. Thus, when a copyright notice appeared only in the
publisher's name, the author's work would fall into the public domain, unless the
author's copyright, in its entirety, had passed to the publisher. See id., at 18. Such
complete transfer might be accomplished by a contract, perhaps one with a
provision, not easily enforced, for later retransfer of rights back to the author. See
id., at 20-22. Or, absent a specific contract, a court might find that an author had
tacitly [495] transferred the entire copyright to a publisher, in turn deemed to hold
the copyright in "trust" for the author's benefit.[ … ].
In the 1976 revision, Congress acted to "clarify and improve [this] confused and
frequently unfair legal situation with respect to rights in contributions." H. R. Rep.
No. 94— 1476, p. 122 (1976) (hereinafter H. R. Rep.). [3] The 1976 Act rejected the
doctrine of indivisibility, recasting the copyright as a bundle of discrete "exclusive
ChapterNumber:
166
rights," 17 U. S. C. § 106 (1994 ed. and Supp. V), [4] each of which "may be
transferred [496] . . . and owned separately," § 201(d)(2). [5] Congress also provided,
in § 404(a), that "a single notice applicable to the collective work as a whole is
sufficient" to protect the rights of freelance contributors. And in § 201(c), Congress
codified the discrete domains of "[c]opyright in each separate contribution to a
collective work" and "copyright in the collective work as a whole." Together, §
404(a) and § 201(c) "preserve the author's copyright in a contribution even if the
contribution does not bear a separate notice in the author's name, and without
requiring any unqualified transfer of rights to the owner of the collective work." H.
R. Rep. 122.
Section 201(c) both describes and circumscribes the "privilege" a publisher acquires
regarding an author's contribution to a collective work:
"In the absence of an express transfer of the copyright or of any rights

under it, the owner of copyright in the collective work is presumed to have
acquired only the privilege of reproducing and distributing the
contribution as part of that particular collective work, any revision of that
collective work, and any later collective work in the same series."
(Emphasis added.)
A newspaper or magazine publisher is thus privileged to reproduce or distribute an

article contributed by a freelance author, absent a contract otherwise providing,
only "as part of" any (or all) of three categories of collective works: (a) "that
collective work" to which the author contributed her work, (b) "any revision of that
collective work," or (c) "any later collective work in the same series." In accord
with Congress' prescription, a "publishing company could reprint [497] a
contribution from one issue in a later issue of its magazine, and could reprint an
article from a 1980 edition of an encyclopedia in a 1990 revision of it; the publisher
could not revise the contribution itself or include it in a new anthology or an
entirely different magazine or other collective work." H. R. Rep. 122-123.
Essentially, § 201(c) adjusts a publisher's copyright in its collective work to

accommodate a freelancer's copyright in her contribution. If there is demand for a
freelance article standing alone or in a new collection, the Copyright Act allows the
freelancer to benefit from that demand; after authorizing initial publication, the
freelancer may also sell the article to others. Cf. Stewart v. Abend, 495 U. S. 207,
229 (1990) ("[w]hen an author produces a work which later commands a higher
price in the market than the original bargain provided, the copyright statute [i. e.,
the separate renewal term of former 17 U. S. C. § 24] is designed to provide the
author the power to negotiate for the realized value of the work"); id., at 230
(noting author's "inalienable termination right" under current 17 U. S. C. §§ 203,
302 (1994 ed. and Supp. V)). It would scarcely "preserve the author's copyright in a
contribution" as contemplated by Congress, H. R. Rep. 122, if a newspaper or
magazine publisher were permitted to reproduce or distribute copies of the author's
contribution in isolation or within new collective works.[ … ]]
III
In the instant case, the Authors wrote several Articles and gave the Print Publishers
permission to publish the Articles in certain newspapers and magazines. It is
167
undisputed that the Authors hold copyrights and, therefore, exclusive rights in the
Articles. [7] It is clear, moreover, that the Print and Electronic Publishers have
exercised at least some rights that § 106 initially assigns exclusively to the Authors:
LEXIS/NEXIS' central discs and UMI's CD—ROMs "reproduce . . . copies" of the
Articles, § 106(1); UMI, by selling those CD—ROMs, and LEXIS/NEXIS, by
selling copies of the Articles through the NEXIS Database, "distribute copies" of
the Articles "to the public by sale," § 106(3); and the Print Publishers, through
contracts licensing the production of copies in the Databases, "authorize"
reproduction and distribution of the Articles, § 106. [8]
[499] Against the Authors' charge of infringement, the Publishers do not here
contend the Authors entered into an agreement authorizing reproduction of the
Articles in the Databases. See supra, at 489, n. 1. Nor do they assert that the copies
in the Databases represent "fair use" of the Authors' Articles.[ … ]. Instead, the
Publishers rest entirely on the privilege described in § 201(c). Each discrete edition
of the periodicals in which the Articles appeared is a "collective work," the
Publishers agree. They contend, however, that reproduction and distribution of each
Article by the Databases lie within the "privilege of reproducing and distributing
the [Articles] as part of . . . [a] revision of that collective work," § 201(c). The
Publishers' encompassing construction of the § 201(c) privilege is unacceptable, we
conclude, for it would diminish the Authors' exclusive rights in the Articles.
In determining whether the Articles have been reproduced and distributed "as part
of" a "revision" of the collective works in issue, we focus on the Articles as
presented to, and perceptible by, the user of the Databases. See § 102 (copyright
protection subsists in original works fixed in any medium "from which they can be
perceived, reproduced, or otherwise communicated"); see also § 101 (1994 ed.,
Supp. V) (definitions of "copies" and "fixed"); Haemmerli, Commentary: Tasini v.
New York Times Co., 22 Colum.-VLA. J. L. & Arts 129, 142-143 (1998). In this
case, the three Databases present articles to users clear of the context provided
either by the original periodical editions or by any revision of those editions. The
Databases first prompt users to search the universe of their contents: thousands or
millions of files containing [500] individual articles from thousands of collective
works (i. e., editions), either in one series (the Times, in NYTO) or in scores of
series (the sundry titles in NEXIS and GPO). When the user conducts a search, each
article appears as a separate item within the search result. In NEXIS and NYTO, an
article appears to a user without the graphics, formatting, or other articles with
which the article was initially published. In GPO, the article appears with the other
materials published on the same page or pages, but without any material published
on other pages of the original periodical. In either circumstance, we cannot see how
the Database perceptibly reproduces and distributes the article "as part of" either
the original edition or a "revision" of that edition.
One might view the articles as parts of a new compendium—namely, the entirety of
works in the Database. In that compendium, each edition of each periodical
represents only a miniscule fraction of the ever-expanding Database. The Database
no more constitutes a "revision" of each constituent edition than a 400-page novel
quoting a sonnet in passing would represent a "revision" of that poem. "Revision"
denotes a new "version," and a version is, in this setting, a "distinct form of
something regarded by its creator or others as one work." Webster's Third New
International Dictionary 1944, 2545 (1976). The massive whole of the Database is
not recognizable as a new version of its every small part.
ChapterNumber:
168
Alternatively, one could view the Articles in the Databases "as part of" no larger
work at all, but simply as individual articles presented individually. That each
article bears marks of its origin in a particular periodical (less vivid marks in
NEXIS and NYTO, more vivid marks in GPO) suggests the article was previously
part of that periodical. But the markings do not mean the article is currently
reproduced or distributed as part of the periodical. The Databases' reproduction and
distribution of individual Articles—simply as [501] individual Articles—would
invade the core of the Authors' exclusive rights under § 106. [9]
The Publishers press an analogy between the Databases, on the one hand, and
microfilm and microfiche, on the other. We find the analogy wanting. Microforms
typically contain continuous photographic reproductions of a periodical in the
medium of miniaturized film. Accordingly, articles appear on the microforms, writ
very small, in precisely the position in which the articles appeared in the
newspaper. The Times, for example, printed the beginning of Blakely's
"Remembering Jane" Article on page 26 of the Magazine in the September 23,
1990, edition; the microfilm version of the Times reproduces that same Article on
film in the very same position, within a film reproduction of the entire Magazine, in
turn within a reproduction of the entire September 23, 1990, edition. True, the
microfilm roll contains multiple editions, and the microfilm user can adjust the
machine lens to focus only on the Article, to the exclusion of surrounding material.
Nonetheless, the user first encounters the Article in context. In the Databases, by
contrast, the Articles appear disconnected from their original context. In NEXIS
and NYTO, the user sees the "Jane" Article apart even from the remainder of page
26. In GPO, the user sees the Article within the context of page 26, but clear of the
context of page 25 or page 27, the rest of the Magazine, or the remainder of the
day's newspaper. In short, unlike microforms, the Databases do not perceptibly
reproduce articles as part of the [502] collective work to which the author
contributed or as part of any "revision" thereof. [10]
Invoking the concept of "media neutrality," the Publishers urge that the "transfer of
a work between media" does not "alte[r] the character of" that work for copyright
purposes. Brief for Petitioners 23. That is indeed true. See 17 U. S. C. § 102(a)
(copyright protection subsists in original works "fixed in any tangible medium of
expression"). But unlike the conversion of newsprint to microfilm, the transfer of
articles to the Databases does not represent a mere conversion of intact periodicals
(or revisions of periodicals) from one medium to another. The Databases offer users
individual articles, not intact periodicals. In this case, media neutrality should
protect the Authors' rights in the individual Articles to the extent those Articles are
now presented individually, outside the collective work context, within the
Databases' new media. [11]
For the purpose at hand—determining whether the Authors' copyrights have been
infringed—an analogy to an [503] imaginary library may be instructive. [12] Rather
than maintaining intact editions of periodicals, the library would contain separate
copies of each article. Perhaps these copies would exactly reproduce the periodical
pages from which the articles derive (if the model is GPO); perhaps the copies
would contain only typescript characters, but still indicate the original periodical's
name and date, as well as the article's headline and page number (if the model is
NEXIS or NYTO). The library would store the folders containing the articles in a
file room, indexed based on diverse criteria, and containing articles from vast
numbers of editions. In response to patron requests, an inhumanly speedy librarian
169
would search the room and provide copies of the articles matching patron-specified
criteria.
Viewing this strange library, one could not, consistent with ordinary English usage,
characterize the articles "as part of" a "revision" of the editions in which the articles
first appeared. In substance, however, the Databases differ from the file room only
to the extent they aggregate articles in electronic packages (the LEXIS/NEXIS
central discs or UMI CD—ROMs), while the file room stores articles in spatially
separate files. The crucial fact is that the Databases, like the hypothetical library,
store and retrieve articles separately within a vast domain of diverse texts. Such a
storage and retrieval system effectively overrides the Authors' exclusive [504] right
to control the individual reproduction and distribution of each Article, 17 U. S. C.
§§ 106(1), (3). Cf. Ryan v. Carl Corp., 23 F. Supp. 2d 1146 (ND Cal. 1998)
(holding copy shop in violation of § 201(c)).
The Publishers claim the protection of § 201(c) because users can manipulate the
Databases to generate search results consisting entirely of articles from a particular
periodical edition. By this logic, § 201(c) would cover the hypothetical library if, in
response to a request, that library's expert staff assembled all of the articles from a
particular periodical edition. However, the fact that a third party can manipulate a
database to produce a noninfringing document does not mean the database is not
infringing. Under § 201(c), the question is not whether a user can generate a
revision of a collective work from a database, but whether the database itself
perceptibly presents the author's contribution as part of a revision of the collective
work. That result is not accomplished by these Databases.
The Publishers finally invoke Sony Corp. of America v. Universal City Studios,
Inc., 464 U. S. 417 (1984). That decision, however, does not genuinely aid their
argument. Sony held that the "sale of copying equipment" does not constitute
contributory infringement if the equipment is "capable of substantial noninfringing
uses." Id., at 442. The Publishers suggest that their Databases could be liable only
under a theory of contributory infringement, based on enduser conduct, which the
Authors did not plead. The Electronic Publishers, however, are not merely selling
"equipment"; they are selling copies of the Articles. And, as we have explained, it
is the copies themselves, without any manipulation by users, that fall outside the
scope of the § 201(c) privilege.
IV
The Publishers warn that a ruling for the Authors will have "devastating"
consequences. Brief for Petitioners 49. The Databases, the Publishers note, provide
easy access to [505] complete newspaper texts going back decades. A ruling for the
Authors, the Publishers suggest, will punch gaping holes in the electronic record of
history. The Publishers' concerns are echoed by several historians, [ … ], but
discounted by several other historians,[ … ].
Notwithstanding the dire predictions from some quarters, see also post, at 520
(Stevens, J., dissenting), it hardly follows from today's decision that an injunction
against the inclusion of these Articles in the Databases (much less all freelance
articles in any databases) must issue. See 17 U. S. C. § 502(a) (court "may" enjoin
infringement); Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, 578, n. 10 (1994)
(goals of copyright law are "not always best served by automatically granting
ChapterNumber:
170
injunctive relief"). The parties (Authors and Publishers) may enter into an
agreement allowing continued electronic reproduction of the Authors' works; they,
and if necessary the courts and Congress, may draw on numerous models for
distributing copyrighted works and remunerating authors for their distribution. See,
e. g., 17 U. S. C. § 118(b); Broadcast Music, Inc. v. Columbia Broadcasting
System, Inc., 441 U. S. 1, 4-6, 10-12 (1979) (recounting history of blanket music
licensing regimes and consent decrees governing their operation). [13] In any event,
speculation about [506] future harms is no basis for this Court to shrink authorial
rights Congress established in § 201(c). Agreeing with the Court of Appeals that the
Publishers are liable for infringement, we leave remedial issues open for initial
airing and decision in the District Court.
***
We conclude that the Electronic Publishers infringed the Authors' copyrights by
reproducing and distributing the Articles in a manner not authorized by the Authors
and not privileged by § 201(c). We further conclude that the Print Publishers
infringed the Authors' copyrights by authorizing the Electronic Publishers to place
the Articles in the Databases and by aiding the Electronic Publishers in that
endeavor. We therefore affirm the judgment of the Court of Appeals[ … ]
.

6.2

The Boundary between

Copyright and the Public
Domain

6.2.1
Eldred v. Ashcroft


537 U.S. 186, 123 S. Ct. 769, 154 L. Ed. 2d 683,
SCDB 2002-015, 2003 U.S. LEXIS 751
No. 01-618
2003-01-15
537 U.S. 186
171
ELDRED ET AL.
v.
ASHCROFT, ATTORNEY GENERAL
[…]
Supreme Court of United States.
Argued October 9, 2002.
Decided January 15, 2003.
[…]
GINSBURG, J., delivered the opinion of the Court, in which REHNQUIST, C. J.,
and O'CONNOR, SCALIA, KENNEDY, SOUTER, and THOMAS, JJ., joined.
STEVENS, J., post, p. 222, and BREYER, J., post, p. 242, filed dissenting opinions.
[…]
Lawrence Lessig argued the cause for petitioners. With him on the briefs were
Kathleen M. Sullivan, Alan B. Morrison, Edward Lee, Charles Fried, Geoffrey S.
Stewart, Donald B. Ayer, Robert P. Ducatman, Daniel H. Bromberg, Charles R.
Nesson, and Jonathan L. Zittrain.
Solicitor General Olson argued the cause for respondent. With him on the brief
were Assistant Attorney General McCallum, Deputy Solicitor General Wallace,
Jeffrey A. Lamken, William Kanter, and John S. Koppel. [*]
[ … ]JUSTICE GINSBURG delivered the opinion of the Court.
This case concerns the authority the Constitution assigns to Congress to prescribe
the duration of copyrights. The Copyright and Patent Clause of the Constitution,
Art. I, § 8, cl. 8, provides as to copyrights: "Congress shall have [537 U.S. 193]
Power ... [t]o promote the Progress of Science ... by securing [to Authors] for
limited Times ... the exclusive Right to their . . . Writings." In 1998, in the measure
here under inspection, Congress enlarged the duration of copyrights by 20 years.
Copyright Term Extension Act (CTEA), Pub. L. 105-298, §§ 102(b) and (d), 112
Stat. 2827-2828 (amending 17 U.S.C. §§ 302, 304). As in the case of prior
extensions, principally in 1831, 1909, and 1976, Congress provided for application
of the enlarged terms to existing and future copyrights alike.
Petitioners are individuals and businesses whose products or services build on

copyrighted works that have gone into the public domain. They seek a
determination that the CTEA fails constitutional review under both the Copyright
Clause's "limited Times" prescription and the First Amendment's free speech
guarantee. Under the 1976 Copyright Act, copyright protection generally lasted
from the work's creation until 50 years after the author's death. [ … ] Under the
CTEA, most copyrights now run from creation until 70 years after the author's
death. [ … ]Petitioners do not challenge the "life-plus-70-years" timespan itself.
"Whether 50 years is enough, or 70 years too much," they acknowledge, "is not a
judgment meet for this Court."[ … ] [1] Congress went awry, petitioners maintain,
not with respect to newly created works, but in enlarging the term for published
works with existing copyrights. The "limited Tim[e]" in effect when a copyright is
secured, petitioners urge, becomes the constitutional boundary, a clear line beyond
ChapterNumber:
172
the power of Congress to extend. [ … ]As to the First Amendment, petitioners

contend that the CTEA is a content-neutral regulation of speech that fails inspection
[537 U.S. 194] under the heightened judicial scrutiny appropriate for such
regulations.
In accord with the District Court and the Court of Appeals, we reject petitioners'
challenges to the CTEA. In that 1998 legislation, as in all previous copyright term
extensions, Congress placed existing and future copyrights in parity. In prescribing
that alignment, we hold, Congress acted within its authority and did not transgress
constitutional limitations.
A
We evaluate petitioners' challenge to the constitutionality of the CTEA against the
backdrop of Congress' previous exercises of its authority under the Copyright
Clause. The Nation's first copyright statute, enacted in 1790, provided a federal
copyright term of 14 years from the date of publication, renewable for an additional
14 years if the author survived the first term. [ … ]The 1790 Act's renewable 14-
year term applied to existing works (i. e., works already published and works
created but not yet published) and future works alike. [ … ] Congress expanded the
federal copyright term to 42 years in 1831 (28 years from publication, renewable
for an additional 14 years), and to 56 years in 1909 (28 years from publication,
renewable for an additional 28 years). [ … ] Both times, Congress applied the new
copyright term to existing and future works[ … ]; to qualify for the 1831 extension,
an existing work had to be in its initial copyright term at the time the Act became
effective[ … ].
In 1976, Congress altered the method for computing federal copyright terms. [ … ]
For works created [537 U.S. 195] by identified natural persons, the 1976 Act
provided that federal copyright protection would run from the work's creation, not
—as in the 1790, 1831, and 1909 Acts—its publication; protection would last until
50 years after the author's death. § 302(a). In these respects, the 1976 Act aligned
United States copyright terms with the then-dominant international standard
adopted under the Berne Convention for the Protection of Literary and Artistic
Works. [ … ] For anonymous works, pseudonymous works, and works made for
hire, the 1976 Act provided a term of 75 years from publication or 100 years from
creation, whichever expired first. § 302(c).
These new copyright terms, the 1976 Act instructed, governed all works not
published by its effective date of January 1, 1978, regardless of when the works
were created. §§ 302-303. For published works with existing copyrights as of that
date, the 1976 Act granted a copyright term of 75 years from the date of
publication, §§ 304(a) and (b), a 19-year increase over the 56-year term applicable
under the 1909 Act.
The measure at issue here, the CTEA, installed the fourth major duration extension
of federal copyrights. [2] Retaining the general structure of the 1976 Act, the CTEA
enlarges the terms of all existing and future copyrights by 20 years. For works
173
created by identified natural persons, the term now lasts from creation until 70
years after the author's [537 U.S. 196] death. 17 U.S.C. § 302(a). This standard
harmonizes the baseline United States copyright term with the term adopted by the
European Union in 1993. [ … ] For anonymous works, pseudonymous works, and
works made for hire, the term is 95 years from publication or 120 years from
creation, whichever expires first. 17 U.S.C. § 302(c).
Paralleling the 1976 Act, the CTEA applies these new terms to all works not
published by January 1, 1978. §§ 302(a), 303(a). For works published before 1978
with existing copyrights as of the CTEA's effective date, the CTEA extends the
term to 95 years from publication. §§ 304(a) and (b). Thus, in common with the
1831, 1909, and 1976 Acts, the CTEA's new terms apply to both future and existing
copyrights. [3]
B
Petitioners' suit challenges the CTEA's constitutionality under both the Copyright
Clause and the First Amendment. On cross-motions for judgment on the pleadings,
the District Court entered judgment for the Attorney General (respondent here). [ …
]
The Court of Appeals for the District of Columbia Circuit affirmed. [ … ]
We granted certiorari to address two questions: whether the CTEA's extension of

existing copyrights exceeds Congress' power under the Copyright Clause; and
whether the CTEA's extension of existing and future copyrights violates the First
Amendment. 534 U.S. 1126 and 1160 (2002). We now answer those two questions
in the negative and affirm.
[537 U.S. 199] II
A
We address first the determination of the courts below that Congress has authority
under the Copyright Clause to extend the terms of existing copyrights. Text,
history, and precedent, we conclude, confirm that the Copyright Clause empowers
Congress to prescribe "limited Times" for copyright protection and to secure the
same level and duration of protection for all copyright holders, present and future.
The CTEA's baseline term of life plus 70 years, petitioners concede, qualifies as a
"limited Tim[e]" as applied to future copyrights. [4] Petitioners contend, however,
that existing copyrights extended to endure for that same term are not "limited."
Petitioners' argument essentially reads into the text of the Copyright Clause the
command that a time prescription, once set, becomes forever "fixed" or
"inalterable." The word "limited," however, does not convey a meaning so
constricted. At the time of the Framing, that word meant what it means today:
"confine[d] within certain bounds," "restrain[ed]," or "circumscribe[d]." S. Johnson,
A Dictionary of the English Language (7th ed. 1785); see T. Sheridan, A Complete
Dictionary of the English Language (6th ed. 1796) ("confine[d] within certain
ChapterNumber:
174
bounds"); Webster's Third New International Dictionary 1312 (1976) ("confined

within limits"; "restricted in extent, number, or duration"). Thus understood, a
timespan appropriately "limited" as applied to future copyrights does not
automatically cease to be "limited" when applied to existing copyrights. And as we
observe, infra, at 209-210, there is no cause to suspect that a [537 U.S. 200]
purpose to evade the "limited Times" prescription prompted Congress to adopt the
CTEA.
To comprehend the scope of Congress' power under the Copyright Clause, "a page
of history is worth a volume of logic." New York Trust Co. v. Eisner, 256 U.S. 345,
349 (1921) (Holmes, J.). History reveals an unbroken congressional practice of
granting to authors of works with existing copyrights the benefit of term extensions
so that all under copyright protection will be governed evenhandedly under the
same regime. As earlier recounted, [ … ]the First Congress accorded the protections
of the Nation's first federal copyright statute to existing and future works alike.
1790 Act § 1. [5] Since then, Congress has regularly applied [537 U.S. 201] duration
extensions to both existing and future copyrights. 1831 Act §§ 1, 16; 1909 Act §§
23-24; 1976 Act §§ 302-303; 17 U.S.C. §§ 302-304. [6]
Because the Clause empowering Congress to confer copyrights also authorizes

patents, congressional practice with respect to patents informs our inquiry. We
count it significant that early Congresses extended the duration of numerous
individual patents as well as copyrights. [ … ] The courts saw no "limited Times"
impediment to such extensions; renewed or extended terms were upheld in the early
days, for example, by Chief Justice Marshall and Justice Story sitting as circuit
justices. [ … ]
Further, although prior to the instant case this Court did not have occasion to decide
whether extending the duration of existing copyrights complies with the "limited
Times" prescription, the Court has found no constitutional barrier to the legislative
expansion of existing patents. [ … ] McClurg v. [537 U.S. 203] Kingsland, 1 How.
202 (1843), is the pathsetting precedent. The patentee in that case was unprotected
under the law in force when the patent issued because he had allowed his employer
briefly to practice the invention before he obtained the patent. Only upon
enactment, two years later, of an exemption for such allowances did the patent
become valid, retroactive to the time it issued. McClurg upheld retroactive
application of the new law. The Court explained that the legal regime governing a
particular patent "depend[s] on the law as it stood at the emanation of the patent,
together with such changes as have been since made; for though they may be
retrospective in their operation, that is not a sound objection to their validity." Id.,
at 206. [ … ] Neither is it a sound [537 U.S. 204] objection to the validity of a
copyright term extension, enacted pursuant to the same constitutional grant of
authority, that the enlarged term covers existing copyrights.
Congress' consistent historical practice of applying newly enacted copyright terms

to future and existing copyrights reflects a judgment stated concisely by
Representative Huntington at the time of the 1831 Act: "[J]ustice, policy, and
equity alike forb[id]" that an "author who had sold his [work] a week ago, be placed
in a worse situation than the author who should sell his work the day after the
passing of [the] act." [ … ] The CTEA follows this historical practice by keeping
the duration provisions of the 1976 Act largely in place and simply adding 20 years
to each of them. Guided by text, history, and precedent, we cannot agree with
petitioners' submission that extending the duration of existing copyrights is
categorically beyond Congress' authority under the Copyright Clause.
175
Satisfied that the CTEA complies with the "limited Times" prescription, we turn
now to whether it is a rational exercise of the legislative authority conferred by the
Copyright Clause. On that point, we defer substantially to Congress. [537 U.S. 205]
Sony, 464 U.S., at 429 ("[I]t is Congress that has been assigned the task of defining
the scope of the limited monopoly that should be granted to authors ... in order to
give the public appropriate access to their work product."). [10]
The CTEA reflects judgments of a kind Congress typically makes, judgments we

cannot dismiss as outside the Legislature's domain. As respondent describes, [ … ]a
key factor in the CTEA's passage was a 1993 European Union (EU) directive
instructing EU members to establish a copyright term of life plus 70 years. [ … ]
Consistent with the Berne Convention, the EU directed its members to deny this
longer term to the works of any non-EU country whose laws did not secure the
same extended term. [ … ] By extending the baseline United States copyright term
to life plus 70 years, Congress sought to ensure that American authors would
receive [537 U.S. 206] the same copyright protection in Europe as their European
counterparts. [ … ] The CTEA may also provide greater incentive for American and
other authors to create and disseminate their work in the United States. [ … ]
In addition to international concerns, [ … ] Congress passed the CTEA in light of

demographic, economic, and technological [537 U.S. 207] changes,[ … ] [14] and
rationally credited projections that longer terms would encourage copyright holders
to invest in the restoration and public distribution of their works[ … ].[15]
[537 U.S. 208] In sum, we find that the CTEA is a rational enactment; we are not at
liberty to second-guess congressional determinations and policy judgments of this
order, however debatable or arguably unwise they may be. Accordingly, we cannot
conclude that the CTEA — which continues the unbroken congressional practice of
treating future and existing copyrights in parity for term extension purposes — is an
impermissible exercise of Congress' power under the Copyright Clause.
B
Petitioners' Copyright Clause arguments rely on several novel readings of the
Clause. We next address these arguments and explain why we find them
unpersuasive.
1
Petitioners contend that even if the CTEA's 20-year term extension is literally a
"limited Tim[e]," permitting Congress to extend existing copyrights allows it to
evade the "limited Times" constraint by creating effectively perpetual copyrights
through repeated extensions. We disagree.
[537 U.S. 209] As the Court of Appeals observed, a regime of perpetual copyrights
"clearly is not the situation before us." [ … ] Nothing before this Court warrants
construction of the CTEA's 20-year term extension as a congressional attempt to
evade or override the "limited Times" constraint. [ … ] Critically, we again emphasize,
petitioners fail to [537 U.S. 210] show how the CTEA crosses a constitutionally
significant threshold with respect to "limited Times" that the 1831, 1909, and 1976
ChapterNumber:
176
Acts did not. [ … ] Those earlier Acts did not create perpetual copyrights, and
neither does the CTEA. [ … ]
2
Petitioners dominantly advance a series of arguments all premised on the
proposition that Congress may not extend an existing copyright absent new
consideration from the author. They pursue this main theme under three headings.
Petitioners contend that the CTEA's extension of existing copyrights (1) overlooks
the requirement of "originality," (2) fails to "promote the Progress of Science," and
(3) ignores copyright's quid pro quo.
[537 U.S. 211] Petitioners' "originality" argument draws on Feist Publications, Inc.
v. Rural Telephone Service Co., 499 U.S. 340 (1991). In Feist, we observed that
"[t]he sine qua non of copyright is originality," [ … ] and held that copyright
protection is unavailable to "a narrow category of works in which the creative spark
is utterly lacking or so trivial as to be virtually nonexistent," id., at 359. Relying on
Feist, petitioners urge that even if a work is sufficiently "original" to qualify for
copyright protection in the first instance, any extension of the copyright's duration
is impermissible because, once published, a work is no longer original.
Feist, however, did not touch on the duration of copyright protection. Rather, the
decision addressed the core question of copyrightability, i. e., the "creative spark" a
work must have to be eligible for copyright protection at all. Explaining the
originality requirement, Feist trained on the Copyright Clause words "Authors" and
"Writings." [ … ] The decision did not construe the "limited Times" for which a
work may be protected, and the originality requirement has no bearing on that
prescription.
More forcibly, petitioners contend that the CTEA's extension of existing copyrights
does not "promote the Progress of Science" as contemplated by the preambular
language of the Copyright Clause. Art. I, § 8, cl. 8. To sustain this objection,
petitioners do not argue that the Clause's preamble is an independently enforceable
limit on Congress' power. [ … ] Rather, they maintain that the preambular language
identifies the sole end to which Congress may legislate; accordingly, they conclude,
the meaning of "limited Times" must be "determined in light of that specified end."
[ … ] The CTEA's extension of existing copyrights categorically fails to "promote
the Progress of Science," petitioners argue, because it does not stimulate the [537
U.S. 212] creation of new works but merely adds value to works already created.
As petitioners point out, we have described the Copyright Clause as "both a grant of
power and a limitation," Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5
(1966), and have said that "[t]he primary objective of copyright" is "[t]o promote
the Progress of Science," Feist, 499 U.S., at 349. The "constitutional command," we
have recognized, is that Congress, to the extent it enacts copyright laws at all,
create a "system" that "promote[s] the Progress of Science." Graham, 383 U.S., at
6. [18]
We have also stressed, however, that it is generally for Congress, not the courts, to
decide how best to pursue the Copyright Clause's objectives. [ … ] The
justifications we earlier set out for Congress' enactment of the CTEA[ … ] provide
177
a rational basis for the conclusion that the CTEA "promote[s] the Progress of
Science."
On the issue of copyright duration, Congress, from the start, has routinely applied
new definitions or adjustments of the copyright term to both future works and
existing works not yet in the public domain. [ … ] Such consistent congressional
practice is entitled to "very great weight, and when it is remembered that the rights
thus established have not been disputed during a period of [over two] centur[ies], it
is almost conclusive." [ … ] Indeed, "[t]his Court has repeatedly laid down the
principle that a contemporaneous legislative exposition of the Constitution when
the founders of our Government and framers of our Constitution were actively
participating in public affairs, acquiesced in for a long term of years, fixes the
construction to be given [the Constitution's] provisions." Myers v. United States,
272 U.S. 52, 175 (1926). Congress' unbroken practice since the founding generation
[537 U.S. 214] thus overwhelms petitioners' argument that the CTEA's extension of
existing copyrights fails per se to "promote the Progress of Science." [ … ]
Closely related to petitioners' preambular argument, or a variant of it, is their

assertion that the Copyright Clause "imbeds a quid pro quo." [ … ] They contend,
in this regard, that Congress may grant to an "Autho[r]" an "exclusive Right" for a
"limited Tim[e]," but only in exchange for a "Writin[g]." Congress' power to confer
copyright protection, petitioners argue, is thus contingent upon an exchange: The
author of an original work receives an "exclusive Right" for a "limited Tim[e]" in
exchange for a dedication to the public thereafter. Extending an existing copyright
without demanding additional consideration, petitioners maintain, bestows an
unpaid-for benefit on copyright holders and their heirs, in violation of the quid pro
quo requirement.
We can demur to petitioners' description of the Copyright Clause as a grant of

legislative authority empowering Congress "to secure a bargain — this for that."
[ … ]see Mazer v. Stein, 347 U.S. 201, 219 (1954) ("The economic philosophy
behind the clause empowering Congress to grant patents and copyrights is the
conviction that encouragement of individual effort by personal gain is the best way
to advance public welfare through the talents of authors and inventors in `Science
and useful Arts.'"). But the legislative evolution earlier recalled demonstrates what
the bargain entails. Given the consistent placement of existing copyright [537 U.S.
215] holders in parity with future holders, the author of a work created in the last
170 years would reasonably comprehend, as the "this" offered her, a copyright not
only for the time in place when protection is gained, but also for any renewal or
extension legislated during that time. [ … ] Congress could rationally seek to "promote
. . . Progress" by including in every copyright statute an express guarantee that
authors would receive the benefit of any later legislative extension of the copyright
term. Nothing in the Copyright Clause bars Congress from creating the same
incentive by adopting the same position as a matter of unbroken practice. See Brief
for Respondent 31-32.
Neither Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), nor Bonito Boats,
Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989), is to the contrary. In both
cases, we invalidated the application of certain state laws as inconsistent with the
federal patent regime. [ … ] Describing Congress' constitutional authority to confer
patents, Bonito Boats noted: "The Patent Clause itself reflects a balance between
the need to encourage innovation and the avoidance of monopolies which stifle
competition without any concomitant advance in the `Progress of Science and
useful Arts.'" Id., at 146. [537 U.S. 216] Sears similarly stated that "[p]atents are
ChapterNumber:
178
not given as favors ... but are meant to encourage invention by rewarding the
inventor with the right, limited to a term of years fixed by the patent, to exclude
others from the use of his invention." 376 U.S., at 229. Neither case concerned the
extension of a patent's duration. Nor did either suggest that such an extension might
be constitutionally infirm. Rather, Bonito Boats reiterated the Court's unclouded
understanding: "It is for Congress to determine if the present system" effectuates
the goals of the Copyright and Patent Clause. 489 U.S., at 168. And as we have
documented,... Congress has many times sought to effectuate those goals by
extending existing patents.
We note, furthermore, that patents and copyrights do not entail the same exchange,
and that our references to a quid pro quo typically appear in the patent context. [ …
] This is understandable, given that immediate disclosure is not the objective of, but
is exacted from, the patentee. It is the price paid for the exclusivity secured. See J.
E. M. Ag Supply, 534 U.S., at 142. For the author seeking copyright protection, in
contrast, disclosure is the desired objective, not something exacted from the author
in exchange for the copyright.
[…]
Further distinguishing the two kinds of intellectual property, copyright gives the
holder no monopoly on any knowledge. A reader of an author's writing may make
full use of any fact or idea she acquires from her reading. See § 102(b). The grant
of a patent, on the other hand, does prevent full use by others of the inventor's
knowledge. [ … ] In light of these distinctions, one cannot extract from language in
our patent decisions — language not trained on a grant's duration — genuine
support for petitioners' bold view. Accordingly, we reject the proposition that a
quid pro quo requirement stops Congress from expanding copyright's term in a
manner that puts existing and future copyrights in parity. [ … ]
3
As an alternative to their various arguments that extending existing copyrights
violates the Copyright Clause per se, petitioners urge heightened judicial review of
such extensions to ensure that they appropriately pursue the purposes of the Clause.
[ … ] Specifically, [537 U.S. 218] petitioners ask us to apply the "congruence and
proportionality" standard described in cases evaluating exercises of Congress'
power under § 5 of the Fourteenth Amendment. [ … ] But we have never applied
that standard outside the § 5 context; it does not hold sway for judicial review of
legislation enacted, as copyright laws are, pursuant to Article I authorization.
Section 5 authorizes Congress to enforce commands contained in and incorporated

into the Fourteenth Amendment. Amdt. 14, § 5 ("The Congress shall have power to
enforce, by appropriate legislation, the provisions of this article." (emphasis
added)). The Copyright Clause, in contrast, empowers Congress to define the scope
of the substantive right. [ … ] Judicial deference to such congressional definition is
"but a corollary to the grant to Congress of any Article I power." Graham, 383
U.S., at 6. It would be no more appropriate for us to subject the CTEA to
"congruence and proportionality" review under the Copyright Clause than it would
be for us to hold the Act unconstitutional per se.
179
For the several reasons stated, we find no Copyright Clause impediment to the
CTEA's extension of existing copyrights.
III
Petitioners separately argue that the CTEA is a content-neutral regulation of speech
that fails heightened judicial review under the First Amendment. [ … ] We reject
petitioners' [537 U.S. 219] plea for imposition of uncommonly strict scrutiny on a
copyright scheme that incorporates its own speech-protective purposes and
safeguards. The Copyright Clause and First Amendment were adopted close in time.
This proximity indicates that, in the Framers' view, copyright's limited monopolies
are compatible with free speech principles. Indeed, copyright's purpose is to
promote the creation and publication of free expression. [ … ]
In addition to spurring the creation and publication of new expression, copyright

law contains built-in First Amendment accommodations. See id., at 560. First, it
distinguishes between ideas and expression and makes only the latter eligible for
copyright protection. Specifically, 17 U.S.C. § 102(b) provides: "In no case does
copyright protection for an original work of authorship extend to any idea,
procedure, process, system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained, illustrated, or embodied
in such work." As we said in Harper & Row, this "idea/expression dichotomy
strike[s] a definitional balance between the First Amendment and the Copyright Act
by permitting free communication of facts while still protecting an author's
expression." [ … ] Due to this distinction, every idea, theory, and fact in a
copyrighted work becomes instantly available for public exploitation at the moment
of publication. [ … ]
Second, the "fair use" defense allows the public to use not only facts and ideas
contained in a copyrighted work, but also expression itself in certain circumstances.
Codified at 17 U.S.C. § 107, the defense provides: "[T]he fair use of a [537 U.S.
220] copyrighted work, including such use by reproduction in copies . . ., for
purposes such as criticism, comment, news reporting, teaching (including multiple
copies for classroom use), scholarship, or research, is not an infringement of
copyright." The fair use defense affords considerable "latitude for scholarship and
comment," Harper & Row, 471 U.S., at 560, and even for parody, see Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (rap group's musical parody of Roy
Orbison's "Oh, Pretty Woman" may be fair use).
The CTEA itself supplements these traditional First Amendment safeguards. First,
it allows libraries, archives, and similar institutions to "reproduce" and "distribute,
display, or perform in facsimile or digital form" copies of certain published works
"during the last 20 years of any term of copyright ... for purposes of preservation,
scholarship, or research" if the work is not already being exploited commercially
and further copies are unavailable at a reasonable price. 17 U.S.C. § 108(h) [ … ].
Second, Title II of the CTEA, known as the Fairness in Music Licensing Act of
1998, exempts small businesses, restaurants, and like entities from having to pay
performance royalties on music played from licensed radio, television, and similar
facilities. 17 U.S.C. § 110(5)(B)[ … ].
Finally, the case petitioners principally rely upon for their First Amendment
argument, Turner Broadcasting System, Inc. v. FCC, 512 U.S. 622 (1994), bears
ChapterNumber:
180
little on copyright. The statute at issue in Turner required cable operators to carry
and transmit broadcast stations through their proprietary cable systems. Those
"must-carry" provisions, we explained, implicated "the heart of the First
Amendment," namely, "the principle that each person should decide for himself or
herself the ideas and beliefs deserving of expression, consideration, and adherence."
[…]
[537 U.S. 221] The CTEA, in contrast, does not oblige anyone to reproduce
another's speech against the carrier's will. Instead, it protects authors' original
expression from unrestricted exploitation. Protection of that order does not raise the
free speech concerns present when the government compels or burdens the
communication of particular facts or ideas. The First Amendment securely protects
the freedom to make— or decline to make—one's own speech; it bears less heavily
when speakers assert the right to make other people's speeches. To the extent such
assertions raise First Amendment concerns, copyright's built-in free speech
safeguards are generally adequate to address them. We recognize that the D. C.
Circuit spoke too broadly when it declared copyrights "categorically immune from
challenges under the First Amendment." [ … ] But when, as in this case, Congress
has not altered the traditional contours of copyright protection, further First
Amendment scrutiny is unnecessary. [ … ]
IV
If petitioners' vision of the Copyright Clause held sway, it would do more than
render the CTEA's duration extensions unconstitutional as to existing works.
Indeed, petitioners' assertion that the provisions of the CTEA are not severable
would make the CTEA's enlarged terms invalid even as to [537 U.S. 222]
tomorrow's work. The 1976 Act's time extensions, which set the pattern that the
CTEA followed, would be vulnerable as well.
As we read the Framers' instruction, the Copyright Clause empowers Congress to

determine the intellectual property regimes that, overall, in that body's judgment,
will serve the ends of the Clause. [ … ] Beneath the facade of their inventive
constitutional interpretation, petitioners forcefully urge that Congress pursued very
bad policy in prescribing the CTEA's long terms. The wisdom of Congress' action,
however, is not within our province to second-guess. Satisfied that the legislation
before us remains inside the domain the Constitution assigns to the First Branch, we
affirm the judgment of the Court of Appeals.
It is so ordered.
[…]
JUSTICE BREYER, dissenting.
The Constitution's Copyright Clause grants Congress the power to "promote the
Progress of Science . . . by securing for limited Times to Authors . . . the exclusive
Right to their respective Writings." Art. I, § 8, cl. 8 (emphasis added). The statute
before us, the 1998 Sonny Bono Copyright Term Extension Act, extends the term of
most existing copyrights [537 U.S. 243] to 95 years and that of many new
copyrights to 70 years after the author's death. The economic effect of this 20-year
extension—the longest blanket extension since the Nation's founding—is to make
the copyright term not limited, but virtually perpetual. Its primary legal effect is to
181
grant the extended term not to authors, but to their heirs, estates, or corporate
successors. And most importantly, its practical effect is not to promote, but to
inhibit, the progress of "Science" —by which word the Framers meant learning or
knowledge[ … ].
The majority believes these conclusions rest upon practical judgments that at most
suggest the statute is unwise, not that it is unconstitutional. Legal distinctions,
however, are often matters of degree. [ … ] And in this case the failings of degree
are so serious that they amount to failings of constitutional kind. Although the
Copyright Clause grants broad legislative power to Congress, that grant has limits.
And in my view this statute falls outside them.
I
The "monopoly privileges" that the Copyright Clause confers "are neither unlimited
nor primarily designed to provide a special private benefit." Sony Corp. of America
v. Universal City Studios, Inc., 464 U. S. 417, 429 (1984); cf. Graham v. John
Deere Co. of Kansas City, 383 U. S. 1, 5 (1966). This Court has made clear that the
Clause's limitations are judicially enforceable. E. g., Trade-Mark Cases, 100 U. S.
82, 93-94 (1879). And, in assessing this statute for that purpose, I would take into
account the fact that the Constitution is a single document, that it contains both a
[537 U.S. 244] Copyright Clause and a First Amendment, and that the two are
related.
The Copyright Clause and the First Amendment seek related objectives—the
creation and dissemination of information. When working in tandem, these
provisions mutually reinforce each other, the first serving as an "engine of free
expression," Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539,
558 (1985), the second assuring that government throws up no obstacle to its
dissemination. At the same time, a particular statute that exceeds proper Copyright
Clause bounds may set Clause and Amendment at cross-purposes, thereby depriving
the public of the speech-related benefits that the Founders, through both, have
promised.
Consequently, I would review plausible claims that a copyright statute seriously,

and unjustifiably, restricts the dissemination of speech somewhat more carefully
than reference to this Court's traditional Copyright Clause jurisprudence might
suggest[ … ]. There is no need in this case to characterize that review as a search
for "`congruence and proportionality,'" ante, at 218, or as some other variation of
what this Court has called "intermediate scrutiny," e. g., San Francisco Arts &
Athletics, Inc. v. United States Olympic Comm., 483 U. S. 522, 536-537 (1987)
(applying intermediate scrutiny to a variant of normal trademark protection). [ … ]
Rather, it is necessary only to recognize that this statute involves not pure economic
regulation, but regulation of expression, and what may count as rational where
economic regulation is at issue is not necessarily rational where we focus on
expression—in a Nation constitutionally dedicated to the free dissemination of
speech, information, learning, and culture. In this sense [537 U.S. 245] only, and
where line-drawing among constitutional interests is at issue, I would look harder
than does the majority at the statute's rationality—though less hard than precedent
might justify[ … ].
ChapterNumber:
182
Thus, I would find that the statute lacks the constitutionally necessary rational
support (1) if the significant benefits that it bestows are private, not public; (2) if it
threatens seriously to undermine the expressive values that the Copyright Clause
embodies; and (3) if it cannot find justification in any significant Clause-related
objective. Where, after examination of the statute, it becomes difficult, if not
impossible, even to dispute these characterizations, Congress' "choice is clearly
wrong." [ … ]
II
A
Because we must examine the relevant statutory effects in light of the Copyright
Clause's own purposes, we should begin by reviewing the basic objectives of that
Clause. The Clause authorizes a "tax on readers for the purpose of giving a bounty
to writers." [ … ] Why? What constitutional purposes does the "bounty" serve?
The Constitution itself describes the basic Clause objective as one of "promot[ing]
the Progress of Science," i. e., knowledge and learning. The Clause exists not to
"provide a special private benefit," Sony, supra, at 429, but "to stimulate artistic
creativity for the general public good," Twentieth Century Music Corp. v. Aiken,
422 U. S. 151, 156 (1975). It does so by "motivat[ing] the creative activity of
authors" through "the provision of a special reward." Sony, supra, at 429. The
"reward" is a means, not an end. And that is [537 U.S. 246] why the copyright term
is limited. It is limited so that its beneficiaries—the public—"will not be
permanently deprived of the fruits of an artist's labors." Stewart v. Abend, 495 U. S.
207, 228 (1990).
That is how the Court previously has described the Clause's objectives. [ … ] And,
in doing so, the Court simply has reiterated the views of the Founders.
Madison, like Jefferson and others in the founding generation, warned against the
dangers of monopolies. [ … ] Madison noted that the Constitution had "limited
them to two cases, the authors of Books, and of useful inventions." [ … ] He
thought that in those two cases monopoly is justified because it amounts to
"compensation for" an actual community "benefit" and because the monopoly is
"temporary"— the term originally being 14 years (once renewable). Ibid. Madison
concluded that "under that limitation a sufficient recompence and encouragement
may be given." Ibid. But [537 U.S. 247] he warned in general that monopolies must
be "guarded with strictness agst abuse." Ibid.
[…]
For present purposes, then, we should take the following as well established: that
copyright statutes must serve public, not private, ends; that they must seek "to
promote the Progress" of knowledge and learning; and that they must do so both by
creating incentives for authors to produce and by removing the related restrictions
on dissemination after [537 U.S. 248] expiration of a copyright's "limited
Tim[e]"—a time that (like "a limited monarch") is "restrain[ed]" and
"circumscribe[d]," "not [left] at large," 2 S. Johnson, A Dictionary of the English
183
Language 1151 (4th rev. ed. 1773). I would examine the statute's effects in light of
these well-established constitutional purposes.
B
This statute, like virtually every copyright statute, imposes upon the public certain
expression-related costs in the form of (1) royalties that may be higher than
necessary to evoke creation of the relevant work, and (2) a requirement that one
seeking to reproduce a copyrighted work must obtain the copyright holder's
permission. The first of these costs translates into higher prices that will potentially
restrict a work's dissemination. The second means search costs that themselves may
prevent reproduction even where the author has no objection. Although these costs
are, in a sense, inevitable concomitants of copyright protection, there are special
reasons for thinking them especially serious here.
First, the present statute primarily benefits the holders of existing copyrights, i. e.,
copyrights on works already created. And a Congressional Research Service (CRS)
study prepared for Congress indicates that the added royalty-related sum that the
law will transfer to existing copyright holders is large. E. Rappaport, CRS Report
for Congress, Copyright Term Extension: Estimating the Economic Values (1998)
(hereinafter CRS Report). In conjunction with official figures on copyright
renewals, the CRS Report indicates that only about 2% of copyrights between 55
and 75 years old retain commercial value—i. e., still generate royalties after that
time. [ … ] But books, songs, and movies of that vintage still earn about $400
million per year in royalties. [ … ] Hence, (despite declining [537 U.S. 249]
consumer interest in any given work over time) one might conservatively estimate
that 20 extra years of copyright protection will mean the transfer of several billion
extra royalty dollars to holders of existing copyrights—copyrights that, together,
already will have earned many billions of dollars in royalty "reward." [ … ]
The extra royalty payments will not come from thin air. Rather, they ultimately
come from those who wish to read or see or hear those classic books or films or
recordings that have survived. Even the $500,000 that United Airlines has had to
pay for the right to play George Gershwin's 1924 classic Rhapsody in Blue
represents a cost of doing business, potentially reflected in the ticket prices of those
who fly. [ … ] Further, the likely amounts of extra royalty payments are large
enough to suggest that unnecessarily high prices will unnecessarily restrict
distribution of classic works (or lead to disobedience of the law)—not just in theory
but in practice. [ … ]
A second, equally important, cause for concern arises out of the fact that copyright
extension imposes a "permissions" requirement—not only upon potential users of
"classic" works that still retain commercial value, but also upon potential users of
any other work still in copyright. Again using CRS estimates, one can estimate that,
by 2018, the number of such works 75 years of age or older will be about 350,000. [
… ] Because the Copyright Act of 1976 abolished the requirement that an owner
must renew a [537 U.S. 250] copyright, such still-in-copyright works (of little or no
commercial value) will eventually number in the millions. [ … ]
The potential users of such works include not only movie buffs and aging jazz fans,
but also historians, scholars, teachers, writers, artists, database operators, and
researchers of all kinds—those who want to make the past accessible for their own
ChapterNumber:
184
use or for that of others. The permissions requirement can inhibit their ability to
accomplish that task. Indeed, in an age where computer-accessible databases
promise to facilitate research and learning, the permissions requirement can stand
as a significant obstacle to realization of that technological hope.
The reason is that the permissions requirement can inhibit or prevent the use of old
works (particularly those without commercial value): (1) because it may prove
expensive to track down or to contract with the copyright holder, (2) because the
holder may prove impossible to find, or (3) because the holder when found may
deny permission either outright or through misinformed efforts to bargain. The
CRS, for example, has found that the cost of seeking permission "can be
prohibitive." [ … ] And amici, along with petitioners, provide examples of the kinds
of significant harm at issue.
[…]
As I have said, to some extent costs of this kind accompany any copyright law,
regardless of the length of the copyright term. But to extend that term, preventing
works from the 1920's and 1930's from falling into the public domain, will
dramatically increase the size of the costs just as— perversely—the likely benefits
from protection diminish. [ … ] The older the work, the less likely it retains
commercial value, and the harder it will likely prove to find the current copyright
holder. The older the work, the more likely it will prove useful to the historian,
artist, or teacher. The older the work, the less likely it is that a sense of authors'
rights can justify a copyright holder's decision not to permit reproduction, for the
more likely it is that the copyright holder making the decision is not the work's
creator, but, say, a corporation or a great-grandchild whom the work's creator never
knew. Similarly, the costs of obtaining [537 U.S. 252] permission, now perhaps
ranging in the millions of dollars, will multiply as the number of holders of affected
copyrights increases from several hundred thousand to several million. [ … ]The
costs to the users of nonprofit databases, now numbering in the low millions, will
multiply as the use of those computer-assisted databases becomes more prevalent.
See, e. g., Brief for Internet Archive et al. as Amici Curiae 2, 21, and n. 37
(describing nonprofit Project Gutenberg). And the qualitative costs to education,
learning, and research will multiply as our children become ever more dependent
for the content of their knowledge upon computer-accessible databases—thereby
condemning that which is not so accessible, say, the cultural content of early 20th-
century history, to a kind of intellectual purgatory from which it will not easily
emerge.
The majority finds my description of these permissions-related harms overstated in

light of Congress' inclusion of a statutory exemption, which, during the last 20
years of a copyright term, exempts "facsimile or digital" reproduction by a "library
or archives" "for purposes of preservation, scholarship, or research," 17 U. S. C. §
108(h). [ … ] This exemption, however, applies only where the copy is made for the
special listed purposes; it simply permits a library (not any other subsequent users)
to make "a copy" for those purposes; it covers only "published" works not "subject
to normal commercial exploitation" and not obtainable, apparently not even as a
used copy, at a "reasonable price"; and it insists that the library assure itself through
"reasonable investigation" that these conditions have been met. § 108(h). What
database proprietor can rely on so limited an exemption—particularly when the
phrase "reasonable investigation" is so open-ended and particularly if the database
has commercial, as well as noncommercial, aspects?
185
The majority also invokes the "fair use" exception, and it notes that copyright law
itself is restricted to protection of a work's expression, not its substantive content.
[ … ] Neither the exception nor the restriction, however, would necessarily help
those who wish to obtain from electronic databases material that is not there—say,
teachers wishing their students to see albums of Depression Era photographs, to
read the recorded words of those who actually lived under slavery, or to contrast,
say, Gary Cooper's heroic portrayal of Sergeant York with filmed reality from the
battlefield of Verdun. Such harm, and more, [ … ] will occur despite the 1998 Act's
exemptions and despite the other "First Amendment safeguards" in which the
majority places its trust[ … ].
[…]
C
What copyright-related benefits might justify the statute's extension of copyright
protection? First, no one could reasonably conclude that copyright's traditional
economic rationale applies here. The extension will not act as an economic spur
encouraging authors to create new works. See Mazer, 347 U. S., at 219 (The
"economic philosophy" of the Copyright Clause is to "advance public welfare" by
"encourag[ing] individual effort" through "personal gain")[ … ]. No potential
author can reasonably believe that he has more than a tiny chance of writing a
classic that will survive commercially long enough for the copyright extension to
matter. After all, if, after 55 to 75 years, only 2% of all copyrights retain
commercial value, the percentage surviving after 75 years or more (a typical pre-
extension copyright term)—must be far smaller. [ … ] And any remaining monetary
incentive is diminished dramatically by the fact that the relevant royalties will not
arrive until 75 years or more into the future, when, not the author, but distant heirs,
or shareholders in a successor corporation, will receive them. Using assumptions
about the time value of money provided us by a group of economists (including five
[537 U.S. 255] Nobel prize winners), Brief for George A. Akerlof et al. as Amici
Curiae 5-7, it seems fair to say that, for example, a 1% likelihood of earning $100
annually for 20 years, starting 75 years into the future, is worth less than seven
cents today. See id., App. 3a; see also CRS Report 5. See generally Appendix, Part
A, infra.
What potential Shakespeare, Wharton, or Hemingway would be moved by such a

sum? What monetarily motivated Melville would not realize that he could do better
for his grandchildren by putting a few dollars into an interest-bearing bank account?
The Court itself finds no evidence to the contrary. It refers to testimony before
Congress (1) that the copyright system's incentives encourage creation, and (2)
(referring to Noah Webster) that income earned from one work can help support an
artist who "`continue[s] to create.'" [ … ] But the first of these amounts to no more
than a set of undeniably true propositions about the value of incentives in general.
And the applicability of the second to this Act is mysterious. How will extension
help today's Noah Webster create new works 50 years after his death? Or is that
hypothetical Webster supposed to support himself with the extension's present
discounted value, i. e., a few pennies? Or (to change the metaphor) is the argument
that Dumas fils would have written more books had Dumas père's Three Musketeers
earned more royalties?
ChapterNumber:
186
Regardless, even if this cited testimony were meant more specifically to tell
Congress that somehow, somewhere, some potential author might be moved by the
thought of great-grandchildren receiving copyright royalties a century hence, so
might some potential author also be moved by the thought of royalties being paid
for two centuries, five centuries, 1,000 years, "'til the End of Time." And from a
rational economic perspective the time difference among these periods makes no
real difference. The present extension will produce a copyright period of protection
that, even under conservative [537 U.S. 256] assumptions, is worth more than
99.8% of protection in perpetuity (more than 99.99% for a songwriter like Irving
Berlin and a song like Alexander's Ragtime Band). [ … ] The lack of a practically
meaningful distinction from an author's ex ante perspective between (a) the statute's
extended terms and (b) an infinite term makes this latest extension difficult to
square with the Constitution's insistence on "limited Times." [ … ]
I am not certain why the Court considers it relevant in this respect that "[n]othing . .
. warrants construction of the [1998 Act's] 20-year term extension as a
congressional attempt to evade or override the 'limited Times' constraint." [ … ] Of
course Congress did not intend to act unconstitutionally. But it may have sought to
test the Constitution's limits. After all, the statute was named after a Member of
Congress, who, the legislative history records, "wanted the term of copyright
protection to last forever." 144 Cong. Rec. H9952 (daily ed. Oct. 7, 1998)
(statement of Rep. Mary Bono). [ … ]
In any event, the incentive-related numbers are far too small for Congress to have
concluded rationally, even with respect to new works, that the extension's
economic-incentive effect could justify the serious expression-related harms earlier
described. See Part II-B, supra. And, of course, in respect to works already created
—the source of many of the harms previously described—the statute creates no
economic incentive at all. [ … ]
Second, the Court relies heavily for justification upon international uniformity of
terms. [ … ] Although it can be helpful to look to international norms and legal
experience in understanding American law, [ … ] in this case the justification based
upon foreign rules is surprisingly weak. Those who claim that significant copyright-
related benefits flow from greater international uniformity of terms point to the fact
that the nations of the European Union have adopted a system of copyright terms
uniform among themselves. And the extension before this Court implements a term
of life plus 70 years that appears to conform with the European standard. But how
does "uniformity" help to justify this statute?
Despite appearances, the statute does not create a uniform American-European term
with respect to the lion's share of the economically significant works that it affects
—all works made "for hire" and all existing works created prior to 1978. [ … ]
With respect to those works the American statute produces an extended term of 95
years [537 U.S. 258] while comparable European rights in "for hire" works last for
periods that vary from 50 years to 70 years to life plus 70 years. [ … ] Neither does
the statute create uniformity with respect to anonymous or pseudonymous works.
[…]
The statute does produce uniformity with respect to copyrights in new, post-1977
works attributed to natural persons. [ … ] But these works constitute only a subset
(likely a minority) of works that retain commercial value after 75 years. [ … ] And
the fact that uniformity comes so late, if at all, means that bringing American law
187
into conformity with this particular aspect of European law will neither encourage
creation nor benefit the long-dead author in any other important way.
What benefit, then, might this partial future uniformity achieve? The majority refers
to "greater incentive for American and other authors to create and disseminate their
work in the United States," and cites a law review article suggesting a need to
"àvoid competitive disadvantages.'" [ … ] The Solicitor General elaborates on this
theme, postulating that because uncorrected disuniformity would permit Europe, not
the United States, to hold out the prospect of protection lasting for "life plus 70
years" (instead of "life plus 50 years"), a potential author might decide to publish
initially in Europe, delaying American publication. [ … ]. And the statute, by
creating a uniformly longer term, corrects for the disincentive that this
disuniformity might otherwise produce.
That disincentive, however, could not possibly bring about serious harm of the sort
that the Court, the Solicitor General, [537 U.S. 259] or the law review author fears.
For one thing, it is unclear just who will be hurt and how, should American
publication come second—for the Berne Convention still offers full protection as
long as a second publication is delayed by 30 days. See Berne Conv. Arts. 3(4),
5(4). For another, few, if any, potential authors would turn a "where to publish"
decision upon this particular difference in the length of the copyright term. As we
have seen, the present commercial value of any such difference amounts at most to
comparative pennies. [ … ] And a commercial decision that turned upon such a
difference would have had to have rested previously upon a knife edge so fine as to
be invisible. A rational legislature could not give major weight to an invisible,
likely nonexistent incentive-related effect.
But if there is no incentive-related benefit, what is the benefit of the future

uniformity that the statute only partially achieves? Unlike the Copyright Act of
1976, this statute does not constitute part of an American effort to conform to an
important international treaty like the Berne Convention. [ … ] Nor does European
acceptance of the longer term seem to reflect more than special European
institutional considerations, i. e., the needs of, and the international politics
surrounding, the development of the European Union. [ … ] European and
American copyright law have long coexisted despite important differences,
including Europe's traditional respect for authors' "moral rights" and the absence in
Europe of constitutional restraints that restrict copyrights to "limited Times." [ … ]
[537 U.S. 260] In sum, the partial, future uniformity that the 1998 Act promises
cannot reasonably be said to justify extension of the copyright term for new works.
And concerns with uniformity cannot possibly justify the extension of the new term
to older works, for the statute there creates no uniformity at all.
Third, several publishers and filmmakers argue that the statute provides incentives
to those who act as publishers to republish and to redistribute older copyrighted
works. This claim cannot justify this statute, however, because the rationale is
inconsistent with the basic purpose of the Copyright Clause—as understood by the
Framers and by this Court. The Clause assumes an initial grant of monopoly,
designed primarily to encourage creation, followed by termination of the monopoly
grant in order to promote dissemination of already-created works. It assumes that it
is the disappearance of the monopoly grant, not its perpetuation, that will, on
balance, promote the dissemination of works already in existence. This view of the
Clause does not deny the empirical possibility that grant of a copyright monopoly to
the heirs or successors of a long-dead author could on occasion help publishers
ChapterNumber:
188
resurrect the work, say, of a long-lost Shakespeare. But it does deny Congress the
Copyright Clause power to base its actions primarily upon that empirical possibility
—lest copyright grants become perpetual, lest on balance they restrict
dissemination, lest too often they seek to bestow benefits that are solely retroactive.
This view of the Clause finds strong support in the writings of Madison, in the
antimonopoly environment in which the Framers wrote the Clause, and in the
history of the Clause's English antecedent, the Statute of Anne—a statute which
sought to break up a publishers' monopoly by offering, as an alternative, an author's
monopoly of limited duration. [ … ]
This view also finds textual support in the Copyright Clause's word "limited." [ … ]
It finds added textual support in the word "Authors," which is difficult to reconcile
with a rationale that rests entirely upon incentives given to publishers perhaps long
after the death of the work's creator. [ … ]
It finds empirical support in sources that underscore the wisdom of the Framers'
judgment. See CRS Report 3 ("[N]ew, cheaper editions can be expected when
works come out of copyright")[ … ] And it draws logical support from the endlessly
self-perpetuating nature of the publishers' claim and the difficulty of finding any
kind of logical stopping place were this Court to accept such a uniquely publisher-
related rationale. [ … ]
Given this support, it is difficult to accept the conflicting rationale that the
publishers advance, namely, that extension, rather than limitation, of the grant will,
by rewarding publishers with a form of monopoly, promote, rather than retard, the
dissemination of works already in existence. Indeed, given these considerations,
this rationale seems constitutionally perverse—unable, constitutionally speaking, to
justify the blanket extension here at issue. [ … ]
Fourth, the statute's legislative history suggests another possible justification. That
history refers frequently to the financial assistance the statute will bring the
entertainment industry, particularly through the promotion of exports. [ … ] I
recognize that Congress has sometimes found that suppression of competition will
help Americans sell abroad—though it has simultaneously taken care to protect
American buyers from higher domestic prices. [ … ] In doing so, however,
Congress has exercised its commerce, not its copyright, power. I can find nothing in
the Copyright Clause that would authorize Congress to enhance the [537 U.S. 263]
copyright grant's monopoly power, likely leading to higher prices both at home and
abroad, solely in order to produce higher foreign earnings. That objective is not a
copyright objective. Nor, standing alone, is it related to any other objective more
closely tied to the Clause itself. Neither can higher corporate profits alone justify
the grant's enhancement. 1The Clause seeks public, not private, benefits.
Finally, the Court mentions as possible justifications "demographic, economic, and

technological changes"—by which the Court apparently means the facts that today
people communicate with the help of modern technology, live longer, and have
children at a later age. [ … ] The first fact seems to argue not for, but instead
against, extension. [ … ] The second fact seems already corrected for by the 1976
Act's life-plus-50 term, which automatically grows with lifespans. Cf. Department
of Health and Human Services, Centers for Disease Control and Prevention, Deaths:
Final Data for 2000 (2002) (Table 8) (reporting a 4-year increase in expected
lifespan between 1976 and 1998). And the third fact—that adults are having
children later in life—is a makeweight at best, providing no explanation of why the
189
1976 Act's term of 50 years after an author's death—a longer term than was
available to authors themselves for most of our Nation's history—is an insufficient
potential bequest. The weakness of these final rationales simply underscores the
conclusion that emerges from consideration of earlier attempts at justification:
There is no legitimate, serious copyright-related justification for this statute.
III
[…]
[ … ].
I do not share the Court's concern that my view of the 1998 Act could automatically
doom the 1976 Act. Unlike the present statute, the 1976 Act thoroughly revised
copyright law and enabled the United States to join the Berne Convention [537 U.S.
265] —an international treaty that requires the 1976 Act's basic life-plus-50 term as
a condition for substantive protections from a copyright's very inception, Berne
Conv. Art. 7(1). Consequently, the balance of copyright-related harms and benefits
there is far less one sided. The same is true of the 1909 and 1831 Acts, which, in
any event, provided for maximum terms of 56 years or 42 years while requiring
renewal after 28 years, with most copyrighted works falling into the public domain
after that 28-year period, well before the putative maximum terms had elapsed.
[ … ] Regardless, the law provides means to protect those who have reasonably
relied upon prior copyright statutes. See Heckler v. Mathews, 465 U. S. 728, 746
(1984). And, in any event, we are not here considering, and we need not consider,
the constitutionality of other copyright statutes.
[…]
[…]
IV
This statute will cause serious expression-related harm. It will likely restrict
traditional dissemination of copyrighted works. It will likely inhibit new forms of
dissemination through the use of new technology. It threatens to interfere with
efforts to preserve our Nation's historical and cultural heritage and efforts to use
that heritage, say, to educate our Nation's children. It is easy to understand how the
statute might benefit the private financial interests of corporations or heirs who own
existing copyrights. But I cannot find any constitutionally legitimate, copyright-
related way in which the statute will benefit the public. Indeed, in respect to
existing works, the serious public harm and the virtually nonexistent public benefit
could not be more clear.
I have set forth the analysis upon which I rest these judgments. This analysis leads
inexorably to the conclusion that the statute cannot be understood rationally to
advance a constitutionally legitimate interest. The statute falls outside [537 U.S.
267] the scope of legislative power that the Copyright Clause, read in light of the
First Amendment, grants to Congress. I would hold the statute unconstitutional.
I respectfully dissent.
ChapterNumber:
190
[…]
[1] JUSTICE BREYER's dissent is not similarly restrained. He makes no effort

meaningfully to distinguish existing copyrights from future grants. S [ … ]nder his
reasoning, the CTEA's 20-year extension is globally unconstitutional.
[2] Asserting that the last several decades have seen a proliferation of copyright
legislation in departure from Congress' traditional pace of legislative amendment in
this area, petitioners cite nine statutes passed between 1962 and 1974, each of
which incrementally extended existing copyrights for brief periods. See Pub. L. 87-
668, 76 Stat. 555; Pub. L. 89-142, 79 Stat. 581; Pub. L. 90-141, 81 Stat. 464; Pub.
L. 90-416, 82 Stat. 397; Pub. L. 91-147, 83 Stat. 360; Pub. L. 91-555, 84 Stat.
1441; Pub. L. 92-170, 85 Stat. 490; Pub. L. 92-566, 86 Stat. 1181; Pub. L. 93-573,
Title I, 88 Stat. 1873. As respondent (Attorney General Ashcroft) points out,
however, these statutes were all temporary placeholders subsumed into the systemic
changes effected by the 1976 Act. B[ … ]
3] Petitioners argue that the 1790 Act must be distinguished from the later Acts on
the ground that it covered existing works but did not extend existing copyrights.
R[ … ]The parties disagree on the question whether the 1790 Act's copyright term
should be regarded in part as compensation for the loss of any then existing state-
or common-law copyright protections. S[ … ]ithout resolving that dispute, we
underscore that the First Congress clearly did confer copyright protection on works
that had already been created.
[4] We note again that JUSTICE BREYER makes no such concession. S[ … ]e does
not train his fire, as petitioners do, on Congress' choice to place existing and future
copyrights in parity. Moving beyond the bounds of the parties' presentations, and
with abundant policy arguments but precious little support from precedent, he
would condemn Congress' entire product as irrational.
[5] This approach comported with English practice at the time. The Statute of Anne,
1710, 8 Ann. c. 19, provided copyright protection to books not yet composed or
published, books already composed but not yet published, and books already
composed and published. S[ … ]
[…]
6] Moreover, the precise duration of a federal copyright has never been fixed at the
time of the initial grant. The 1790 Act provided a federal copyright term of 14 years
from the work's publication, renewable for an additional 14 years if the author
survived and applied for an additional term. § 1. Congress retained that approach in
subsequent statutes. See Stewart v. Abend, 495 U.S. 207, 217 (1990) ("Since the
earliest copyright statute in this country, the copyright term of ownership has been
split between an original term and a renewal term."). Similarly, under the method
for measuring copyright terms established by the 1976 Act and retained by the
CTEA, the baseline copyright term is measured in part by the life of the author,
rendering its duration indeterminate at the time of the grant. See 1976 Act § 302(a);
17 U.S.C. § 302(a).
[7] JUSTICE STEVENS would sweep away these decisions, asserting that Graham
v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), "flatly contradicts" them.
Post, at 237. Nothing but wishful thinking underpins that assertion. The controversy
in Graham involved no patent extension. Graham addressed an invention's very
191
eligibility for patent protection, and spent no words on Congress' power to enlarge a
patent's duration.
[8] JUSTICE STEVENS recites words from Sears, Roebuck & Co. v. Stiffel Co.,
376 U.S. 225 (1964), supporting the uncontroversial proposition that a State may
not "extend the life of a patent beyond its expiration date," id., at 231, then boldly
asserts that for the same reasons Congress may not do so either. See post, at 222,
226. But Sears placed no reins on Congress' authority to extend a patent's life. The
full sentence in Sears, from which JUSTICE STEVENS extracts words, reads:
"Obviously a State could not, consistently with the Supremacy Clause of the
Constitution, extend the life of a patent beyond its expiration date or give a patent
on an article which lacked the level of invention required for federal patents." 376
U.S., at 231. The point insistently made in Sears is no more and no less than this:
States may not enact measures inconsistent with the federal patent laws. Ibid. ("[A]
State cannot encroach upon the federal patent laws directly ... [and] cannot ... give
protection of a kind that clashes with the objectives of the federal patent laws."). A
decision thus rooted in the Supremacy Clause cannot be turned around to shrink
congressional choices.
Also unavailing is JUSTICE STEVENS' appeal to language found in a private letter

written by James Madison. Post, at 230, n. 6; see also dissenting opinion of
BREYER, J., post, at 246-247, 260, 261. Respondent points to a better
"demonstrat[ion]," post, at 226, n. 3 (STEVENS, J., dissenting), of Madison's and
other Framers' understanding of the scope of Congress' power to extend patents:
"[T]hen-President Thomas Jefferson — the first administrator of the patent system,
and perhaps the Founder with the narrowest view of the copyright and patent
powers — signed the 1808 and 1809 patent term extensions into law; ... James
Madison, who drafted the Constitution's `limited Times' language, issued the
extended patents under those laws as Secretary of State; and ... Madison as
President signed another patent term extension in 1815." Brief for Respondent 15.
[9] JUSTICE STEVENS reads McClurg to convey that "Congress cannot change
the bargain between the public and the patentee in a way that disadvantages the
patentee." Post, at 239. But McClurg concerned no such change. To the contrary, as
JUSTICE STEVENS acknowledges, McClurg held that use of an invention by the
patentee's employer did not invalidate the inventor's 1834 patent, "even if it might
have had that effect prior to the amendment of the patent statute in 1836." Post, at
239. In other words, McClurg evaluated the patentee's rights not simply in light of
the patent law in force at the time the patent issued, but also in light of "such
changes as ha[d] been since made." 1 How., at 206. It is thus inescapably plain that
McClurg upheld the application of expanded patent protection to an existing patent.
[10] JUSTICE BREYER would adopt a heightened, three-part test for the
constitutionality of copyright enactments. Post, at 245. He would invalidate the
CTEA as irrational in part because, in his view, harmonizing the United States and
European Union baseline copyright terms "apparent[ly]" fails to achieve
"significant" uniformity. P[ … ]The novelty of the "rational basis" approach he
presents is plain. C[ … ]Rather than subjecting Congress' legislative choices in the
copyright area to heightened judicial scrutiny, we have stressed that "it is not our
role to alter the delicate balance Congress has labored to achieve." Stewart v.
Abend, 495 U.S., at 230; see Sony Corp. of America v. Universal City Studios, Inc.,
464 U.S. 417, 429 (1984). Congress' exercise of its Copyright Clause authority
must be rational, but JUSTICE BREYER'S stringent version of rationality is
unknown to our literary property jurisprudence.
ChapterNumber:
192
[11] Responding to an inquiry whether copyrights could be extended "forever,"

Register of Copyrights Marybeth Peters emphasized the dominant reason for the
CTEA: "There certainly are proponents of perpetual copyright: We heard that in our
proceeding on term extension. The Songwriters Guild suggested a perpetual term.
However, our Constitution says limited times, but there really isn't a very good
indication on what limited times is. The reason why you're going to life-plus-70
today is because Europe has gone that way . . . ." Copyright Term, Film Labeling,
and Film Preservation Legislation: Hearings on H. R. 989 et al. before the
Subcommittee on Courts and Intellectual Property of the House Committee on the
Judiciary, 104th Cong., 1st Sess., 230 (1995) (hereinafter House Hearings).
[12] The author of the law review article cited in text, Shira Perlmutter, currently a
vice president of AOL Time Warner, was at the time of the CTEA's enactment
Associate Register for Policy and International Affairs, United States Copyright
Office.
[13] See also Austin, Does the Copyright Clause Mandate Isolationism? 26 Colum.
J. L. & Arts 17, 59 (2002) (cautioning against "an isolationist reading of the
Copyright Clause that is in tension with ... America's international copyright
relations over the last hundred or so years").
[14] Members of Congress expressed the view that, as a result of increases in

human longevity and in parents' average age when their children are born, the pre-
CTEA term did not adequately secure "the right to profit from licensing one's work
during one's lifetime and to take pride and comfort in knowing that one's children
— and perhaps their children — might also benefit from one's posthumous
popularity." 1[ … ]Also cited was "the failure of the U.S. copyright term to keep
pace with the substantially increased commercial life of copyrighted works
resulting from the rapid growth in communications media." I[ … ]
15] JUSTICE BREYER urges that the economic incentives accompanying copyright
term extension are too insignificant to "mov[e]" any author with a "rational
economic perspective." P[ … ]Calibrating rational economic incentives, however,
like "fashion[ing] ... new rules [in light of] new technology," Sony, 464 U.S., at
431, is a task primarily for Congress, not the courts. Congress heard testimony from
a number of prominent artists; each expressed the belief that the copyright system's
assurance of fair compensation for themselves and their heirs was an incentive to
create. ... We would not take Congress to task for crediting this evidence which, as
JUSTICE BREYER acknowledges, reflects general "propositions about the value of
incentives" that are "undeniably true." Post, at 255.
Congress also heard testimony from Register of Copyrights Marybeth Peters and
others regarding the economic incentives created by the CTEA. According to the
Register, extending the copyright for existing works "could ... provide additional
income that would finance the production and publication of new works." House
Hearings 158. "Authors would not be able to continue to create," the Register
explained, "unless they earned income on their finished works. The public benefits
not only from an author's original work but also from his or her further creations.
Although this truism may be illustrated in many ways, one of the best examples is
Noah Webster[,] who supported his entire family from the earnings on his speller
and grammar during the twenty years he took to complete his dictionary." Id., at
165.
193
[16] JUSTICE BREYER agrees that "Congress did not intend to act
unconstitutionally" when it enacted the CTEA, post, at 256, yet in his very next
breath, he seems to make just that accusation, ibid. What else is one to glean from
his selection of scattered statements from individual Members of Congress? He
does not identify any statement in the statutory text that installs a perpetual
copyright, for there is none. But even if the statutory text were sufficiently
ambiguous to warrant recourse to legislative history, JUSTICE BREYER'S
selections are not the sort to which this Court accords high value: "In surveying
legislative history we have repeatedly stated that the authoritative source for
finding the Legislature's intent lies in the Committee Reports on the bill, which
`represen[t] the considered and collective understanding of those [Members of
Congress] involved in drafting and studying proposed legislation.'" Garcia v.
United States, 469 U.S. 70, 76 (1984) (quoting Zuber v. Allen, 396 U.S. 168, 186
(1969)). The House and Senate Reports accompanying the CTEA reflect no purpose
to make copyright a forever thing. Notably, the Senate Report expressly
acknowledged that the Constitution "clearly precludes Congress from granting
unlimited protection for copyrighted works," S. Rep. No. 104-315, p. 11 (1996),
and disclaimed any intent to contravene that prohibition, ibid. Members of
Congress instrumental in the CTEA's passage spoke to similar effect. See, e. g., 144
Cong. Rec. H1458 (daily ed. Mar. 25, 1998) (statement of Rep. Coble) (observing
that "copyright protection should be for a limited time only" and that "[p]erpetual
protection does not benefit society").
J[ … ]
17] Respondent notes that the CTEA's life-plus-70-years baseline term is expected
to produce an average copyright duration of 95 years, and that this term "resembles
some other long-accepted durational practices in the law, such as 99-year leases of
real property and bequests within the rule against perpetuities." Brief for
Respondent 27, n. 18. Whether such referents mark the outer boundary of "limited
Times" is not before us today. JUSTICE BREYER suggests that the CTEA's
baseline term extends beyond that typically permitted by the traditional rule against
perpetuities. Post, at 256-257. The traditional common-law rule looks to lives in
being plus 21 years. Under that rule, the period before a bequest vests could easily
equal or exceed the anticipated average copyright term under the CTEA. If, for
example, the vesting period on a deed were defined with reference to the life of an
infant, the sum of the measuring life plus 21 years could commonly add up to 95
years.
[18] JUSTICE STEVENS' characterization of reward to the author as "a secondary

consideration" of copyright law, post, at 227, n. 4 (internal quotation marks
omitted), understates the relationship between such rewards and the "Progress of
Science." As we have explained, "[t]he economic philosophy behind the
[Copyright] [C]lause ... is the conviction that 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, 347 U.S. 201, 219 (1954). Accordingly,
"copyright law celebrates the profit motive, recognizing that the incentive to profit
from the exploitation of copyrights will redound to the public benefit by resulting in
the proliferation of knowledge.... The profit motive is the engine that ensures the
progress of science." American Geophysical Union v. Texaco Inc., 802 F. Supp. 1,
27 (SDNY 1992), aff'd, 60 F.3d 913 (CA2 1994). Rewarding authors for their
creative labor and "promot[ing] ... Progress" are thus complementary; as James
Madison observed, in copyright "[t]he public good fully coincides . . . with the
ChapterNumber:
194
claims of individuals." The Federalist No. 43, p. 272 (C. Rossiter ed. 1961).
JUSTICE BREYER's assertion that "copyright statutes must serve public, not
private, ends," post, at 247, similarly misses the mark. The two ends are not
mutually exclusive; copyright law serves public ends by providing individuals with
an incentive to pursue private ones.
[19] As we have noted, see supra, at 196, n. 3, petitioners seek to distinguish the
1790 Act from those that followed. They argue that by requiring authors seeking its
protection to surrender whatever rights they had under state law, the 1790 Act
enhanced uniformity and certainty and thus "promote[d] . . . Progress." See Brief
for Petitioners 28-31. This account of the 1790 Act simply confirms, however, that
the First Congress understood it could "promote ... Progress" by extending
copyright protection to existing works. Every subsequent adjustment of copyright's
duration, including the CTEA, reflects a similar understanding.
[20] JUSTICE STEVENS, post, at 235, refers to the "legislative veto" held
unconstitutional in INS v. Chadha, 462 U.S. 919 (1983), and observes that we
reached that decision despite its impact on federal laws geared to our
"contemporary political system," id., at 967 (White, J., dissenting). Placing existing
works in parity with future works for copyright purposes, in contrast, is not a
similarly pragmatic endeavor responsive to modern times. It is a measure of the
kind Congress has enacted under its Patent and Copyright Clause authority since the
founding generation. See supra, at 194-196.
[21] Standard copyright assignment agreements reflect this expectation. See, e. g.,
A. Kohn & B. Kohn, Music Licensing 471 (3d ed. 1992-2002) (short form
copyright assignment for musical composition, under which assignor conveys all
rights to the work, "including the copyrights and proprietary rights therein and in
any and all versions of said musical composition(s), and any renewals and
extensions thereof (whether presently available or subsequently available as a
result of intervening legislation)" (emphasis added)); 5 M. Nimmer & D. Nimmer,
Copyright § 21.11[B], p. 21-305 (2002) (short form copyright assignment under
which assignor conveys all assets relating to the work, "including without
limitation, copyrights and renewals and/or extensions thereof"); 6 id., § 30.04[B]
[1], p. 30-325 (form composer-producer agreement under which composer "assigns
to Producer all rights (copyrights, rights under copyright and otherwise, whether
now or hereafter known) and all renewals and extensions (as may now or hereafter
exist)").
[22] The fact that patent and copyright involve different exchanges does not, of
course, mean that we may not be guided in our "limited Times" analysis by
Congress' repeated extensions of existing patents. See supra, at 201-204. If patent's
quid pro quo is more exacting than copyright's, then Congress' repeated extension
of existing patents without constitutional objection suggests even more strongly that
similar legislation with respect to copyrights is constitutionally permissible.
[23] Petitioners originally framed this argument as implicating the CTEA's

extension of both existing and future copyrights. See Pet. for Cert. i. Now,
however, they train on the CTEA's extension of existing copyrights and urge
against consideration of the CTEA's First Amendment validity as applied to future
copyrights. See Brief for Petitioners 39-48; Reply Brief 16-17; Tr. of Oral Arg. 11-
13. We therefore consider petitioners' argument as so limited. We note, however,
that petitioners do not explain how their First Amendment argument is moored to
the prospective/retrospective line they urge us to draw, nor do they say whether or
195
how their free speech argument applies to copyright duration but not to other
aspects of copyright protection, notably scope.
[24] We are not persuaded by petitioners' attempt to distinguish Harper & Row on
the ground that it involved an infringement suit rather than a declaratory action of
the kind here presented. As respondent observes, the same legal question can arise
in either posture. See Brief for Respondent 42. In both postures, it is appropriate to
construe copyright's internal safeguards to accommodate First Amendment
concerns. Cf. United States v. X-Citement Video, Inc., 513 U. S. 64, 78 (1994) ("It
is . . . incumbent upon us to read the statute to eliminate [serious constitutional]
doubts so long as such a reading is not plainly contrary to the intent of Congress.").
_[ … ]

6.2.2
Golan v. Holder

132 S.Ct. 873 (2012)
LAWRENCE GOLAN, ET AL., PETITIONERS,

v.
ERIC H. HOLDER, JR., ATTORNEY
GENERAL, ET AL.
[…]
Supreme Court of the United States.
Argued October 5, 2011.
Decided January 18, 2012.
GINSBURG, delivered the opinion of the Court.
The Berne Convention for the Protection of Literary and Artistic Works (Berne
Convention or Berne), which took effect in 1886, is the principal accord governing
international copyright relations. Latecomer to the international copyright regime
launched by Berne, the United States joined the Convention in 1989. To perfect U.
S. implementation of Berne, and as part of our response to the Uruguay Round of
multilateral trade negotiations, Congress, in 1994, gave works enjoying copyright
protection abroad the same full term of protection available to U. S. works.
Congress did so in §514 of the Uruguay Round Agreements Act (URAA), which
grants copyright protection to preexisting works of Berne member countries,
protected in their country of origin, but lacking protection in the United States for
any of three reasons: The United States did not protect works from the country of
origin at the time of publication; the United States did not protect sound recordings
fixed before 1972; or the author had failed to comply with U. S. statutory
formalities (formalities Congress no longer requires as prerequisites to copyright
protection).
ChapterNumber:
196
The URAA accords no protection to a foreign work after its full copyright term has
expired, causing it to fall into the public domain, whether under the laws of the
country of origin or of this country. Works encompassed by §514 are granted the
protection they would have enjoyed had the United States maintained copyright
relations with the author's country or removed formalities incompatible with Berne.
Foreign authors, however, gain no credit for the protection they lacked in years
prior to §514's enactment. They therefore enjoy fewer total years of exclusivity than
do their U. S. counterparts. As a consequence of the barriers to U. S. copyright
protection prior to the enactment of §514, foreign works "restored" to protection by
the measure had entered the public domain in this country. To cushion the impact of
their placement in protected status, Congress included in §514 ameliorating
accommodations for parties who had exploited affected works before the URAA
was enacted.
Petitioners include orchestra conductors, musicians, publishers, and others who

formerly enjoyed free access to works §514 removed from the public domain. They
maintain that the Constitution's Copyright and Patent Clause, Art. I, §8, cl. 8, and
First Amendment both decree the invalidity of §514. Under those prescriptions of
our highest law, petitioners assert, a work that has entered the public domain, for
whatever reason, must forever remain there.
In accord with the judgment of the Tenth Circuit, we conclude that §514 does not
transgress constitutional limitations on Congress' authority. Neither the Copyright
and Patent Clause nor the First Amendment, we hold, makes the public domain, in
any and all cases, a territory that works may never exit.
A
Members of the Berne Union agree to treat authors from other member countries as
well as they treat their own. Berne Convention, Sept. 9, 1886, as revised at
Stockholm on July 14, 1967, Art. 1, 5(1), 828 U. N. T. S. 221, 225, 231-233.
Nationals of a member country, as well as any author who publishes in one of
Berne's 164 member states, thus enjoy copyright protection in nations across the
globe. Art. 2(6), 3. Each country, moreover, must afford at least the minimum level
of protection specified by Berne. The copyright term must span the author's
lifetime, plus at least 50 additional years, whether or not the author has complied
with a member state's legal formalities. Art. 5(2), 7(1). And, as relevant here, a
work must be protected abroad unless its copyright term has expired in either the
country where protection is claimed or the country of origin. Art. 18(1)-(2). [1]
A different system of transnational copyright protection long prevailed in this

country. Until 1891, foreign works were categorically excluded from Copyright Act
protection. Throughout most of the 20th century, the only eligible foreign authors
were those whose countries granted reciprocal rights to U. S. authors and whose
works were printed in the United States. See Act of Mar. 3, 1891, §3, 13, 26 Stat.
1107, 1110; Patry, The United States and International Copyright Law, 40 Houston
L. Rev. 749, 750 (2003). [2] For domestic and foreign authors alike, protection
hinged on compliance with notice, registration, and renewal formalities.
197
The United States became party to Berne's multilateral, formality-free copyright

regime in 1989. Initially, Congress adopted a "minimalist approach" to compliance
with the Convention. H. R. Rep. No. 100-609, p. 7 (1988) (hereinafter BCIA House
Report). The Berne Convention Implementation Act of 1988 (BCIA), 102 Stat.
2853, made "only those changes to American copyright law that [were] clearly
required under the treaty's provisions," BCIA House Report, at 7. Despite Berne's
instruction that member countries—including "new accessions to the Union"—
protect foreign works under copyright in the country of origin, Art. 18(1) and (4),
828 U. N. T. S., at 251, the BCIA accorded no protection for "any work that is in
the public domain in the United States," §12, 102 Stat. 2860. Protection of future
foreign works, the BCIA indicated, satisfied Article 18.[ … ]]
The minimalist approach essayed by the United States did not sit well with other
Berne members[ … ]]
Berne, however, did not provide a potent enforcement mechanism. The Convention
contemplates dispute resolution before the International Court of Justice. Art. 33(1).
But it specifies no sanctions for noncompliance and allows parties, at any time, to
declare themselves "not . . . bound" by the Convention's dispute resolution
provision. Art. 33(2)-(3) 828 U. N. T. S., at 277. Unsurprisingly, no enforcement
actions were launched before 1994.[ … ].
The landscape changed in 1994. The Uruguay round of multilateral trade

negotiations produced the World Trade Organization (WTO) and the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS). [7] The United States
joined both. TRIPS mandates, on pain of WTO enforcement, implementation of
Berne's first 21 articles. TRIPS, Art. 9.1, 33 I. L. M. 1197, 1201 (requiring
adherence to all but the "moral rights" provisions of Article 6bis). The WTO gave
teeth to the Convention's requirements: Noncompliance with a WTO ruling could
subject member countries to tariffs or cross-sector retaliation. See Gervais, supra,
at 213; 7 W. Patry, Copyright §24:1, pp. 24-8 to 24-9 (2011). The specter of WTO
enforcement proceedings bolstered the credibility of our trading partners' threats to
challenge the United States for inadequate compliance with Article 18. [ … ]]
Congress' response to the Uruguay agreements put to rest any questions concerning
U. S. compliance with Article 18. Section 514 of the URAA, 108 Stat. 4976
(codified at 17 U. S. C. §104A, 109(a)), [9] extended copyright to works that
garnered protection in their countries of origin, [10] but had no right to exclusivity in
the United States for any of three reasons: lack of copyright relations between the
country of origin and the United States at the time of publication; lack of subject-
matter protection for sound recordings fixed before 1972; and failure to comply
with U. S. statutory formalities (e.g., failure to provide notice of copyright status,
or to register and renew a copyright). See §104A(h)(6)(B)-(C). [11]
Works that have fallen into the public domain after the expiration of a full
copyright term—either in the United States or the country of origin—receive no
further protection under §514. Ibid. [12] Copyrights "restored" [13] under URAA §514
"subsist for the remainder of the term of copyright that the work would have
otherwise been granted. . . if the work never entered the public domain." §104A(a)
(1)(B). Prospectively, restoration places foreign works on an equal footing with
their U. S. counterparts; assuming a foreign and domestic author died the same day,
their works will enter the public domain simultaneously. See §302(a) (copyrights
generally expire 70 years after the author's death). Restored works, however,
receive no compensatory time for the period of exclusivity they would have enjoyed
ChapterNumber:
198
before §514's enactment, had they been protected at the outset in the United States.
Their total term, therefore, falls short of that available to similarly situated U. S.
works.
The URAA's disturbance of the public domain hardly escaped Congress' attention.
Section 514 imposed no liability for any use of foreign works occurring before
restoration. In addition, anyone remained free to copy and use restored works for
one year following §514's enactment. See 17 U. S. C. §104A(h)(2)(A). Concerns
about §514's compatibility with the Fifth Amendment's Takings Clause led
Congress to include additional protections for "reliance parties"—those who had,
before the URAA's enactment, used or acquired a foreign work then in the public
domain. See §104A(h)(3)-(4). [14] Reliance parties may continue to exploit a restored
work until the owner of the restored copyright gives notice of intent to enforce—
either by filing with the U. S. Copyright Office within two years of restoration, or
by actually notifying the reliance party. §104A(c), (d)(2)(A)(i), and (B)(i). After
that, reliance parties may continue to exploit existing copies for a grace period of
one year. §104A(d)(2)(A)(ii), and (B)(ii). Finally, anyone who, before the URAA's
enactment, created a "derivative work" based on a restored work may indefinitely
exploit the derivation upon payment to the copyright holder of "reasonable
compensation," to be set by a district judge if the parties cannot agree. §104A(d)(3).
B
In 2001, petitioners filed this lawsuit challenging §514. They maintain that
Congress, when it passed the URAA, exceeded its authority under the Copyright
Clause and transgressed First Amendment limitations. [15] The District Court granted
the Attorney General's motion for summary judgment.[ … ].
The Court of Appeals for the Tenth Circuit affirmed in part. Golan v. Gonzales, 501
F. 3d 1179 (2007). The public domain, it agreed, was not a "threshold that
Congress" was powerless to "traverse in both directions." Id., at 1187 (internal
quotations marks omitted). But §514, as the Court of Appeals read our decision in
Eldred v. Ashcroft, 537 U. S. 186 (2003), required further First Amendment
inspectio[ … ]). The case was remanded with an instruction to the District Court to
address the First Amendment claim in light of the Tenth Circuit's opinion.
On remand, the District Court's starting premise was uncontested: Section 514 does
not regulate speech on the basis of its content; therefore the law would be upheld if
"narrowly tailored to serve a significant government interest." 611 F. Supp. 2d
1165, 1170-1171 (Colo. 2009) (quoting Ward v. Rock Against Racism, 491 U. S.
781, 791 (1989)). Summary judgment was due petitioners, the court concluded,
because §514's constriction of the public domain was not justified by any of the
asserted federal interests: compliance with Berne, securing greater protection for U.
S. authors abroad, or remediation of the inequitable treatment suffered by foreign
authors whose works lacked protection in the United States. 611 F. Supp. 2d, at
1172-1177.
The Tenth Circuit reversed.[ … ].
We granted certiorari to consider petitioners' challenge to §514 under both the

Copyright Clause and the First Amendment, 562 U. S. ___ (2011), and now affirm.
199
II
We first address petitioners' argument that Congress lacked authority, under the
Copyright Clause, to enact §514. The Constitution states that "Congress shall have
Power . . . [t]o promote the Progress of Science . . . by securing for limited Times to
Authors . . . the exclusive Right to their . . . Writings." Art. I, §8, cl. 8. Petitioners
find in this grant of authority an impenetrable barrier to the extension of copyright
protection to authors whose writings, for whatever reason, are in the public domain.
We see no such barrier in the text of the Copyright Clause, historical practice, or
our precedents.
A
The text of the Copyright Clause does not exclude application of copyright
protection to works in the public domain.[ … ]. Petitioners' contrary argument
relies primarily on the Constitution's confinement of a copyright's lifespan to a
"limited Tim[e]." "Removing works from the public domain," they contend,
"violates the `limited [t]imes' restriction by turning a fixed and predictable period
into one that can be reset or resurrected at any time, even after it expires." Brief for
Petitioners 22.
Our decision in Eldred is largely dispositive of petitioners' limited-time argument.

There we addressed the question whether Congress violated the Copyright Clause
when it extended, by 20 years, the terms of existing copyrights. 537 U. S., at 192-
193 (upholding Copyright Term Extension Act (CTEA)). Ruling that Congress
acted within constitutional bounds, we declined to infer from the text of the
Copyright Clause "the command that a time prescription, once set, becomes forever
`fixed' or ìnalterable.'" Id., at 199. "The word `limited,'" we observed, "does not
convey a meaning so constricted." Ibid. Rather, the term is best understood to mean
"confine[d] within certain bounds," "restrain[ed]," or "circumscribed." Ibid.
(internal quotation marks omitted). The construction petitioners tender closely
resembles the definition rejected in Eldred and is similarly infirm[ … ]
The difference, petitioners say, is that the limited time had already passed for works
in the public domain. What was that limited term for foreign works once excluded
from U. S. copyright protection? Exactly "zero," petitioners respond.[ … ]. We find
scant sense in this argument, for surely a "limited time" of exclusivity must begin
before it may end. [16]
Carried to its logical conclusion, petitioners persist, the Government's position

would allow Congress to institute a second "limited" term after the first expires, a
third after that, and so on. Thus, as long as Congress legislated in installments,
perpetual copyright terms would be achievable. As in Eldred, the hypothetical
legislative misbehavior petitioners posit is far afield from the case before us. See
537 U. S., at 198-200, 209-210. In aligning the United States with other nations
bound by the Berne Convention, and thereby according equitable treatment to once
disfavored foreign authors, Congress can hardly be charged with a design to move
stealthily toward a regime of perpetual copyrights.
ChapterNumber:
200
B
Historical practice corroborates our reading of the Copyright Clause to permit full
U. S. compliance with Berne. Undoubtedly, federal copyright legislation generally
has not affected works in the public domain. Section 514's disturbance of that
domain, petitioners argue, distinguishes their suit from Eldred's. In adopting the
CTEA, petitioners note, Congress acted in accord with "an unbroken congressional
practice" of granting pre-expiration term extensions, 537 U. S., at 200. No
comparable practice, they maintain, supports §514.
On occasion, however, Congress has seen fit to protect works once freely available.
Notably, the Copyright Act of 1790 granted protection to many works previously in
the public domain. Act of May 31, 1790 (1790 Act), §1, 1 Stat. 124 (covering "any
map, chart, book, or books already printed within these United States"). Before the
Act launched a uniform national system, three States provided no statutory
copyright protection at all. [17] Of those that did afford some protection, seven failed
to protect maps; [18] eight did not cover previously published books; [19] and all ten
denied protection to works that failed to comply with formalities. [20] The First
Congress, it thus appears, did not view the public domain as inviolate. [ … ]]
Subsequent actions confirm that Congress has not understood the Copyright Clause
to preclude protection for existing works. Several private bills restored the
copyrights of works that previously had been in the public domain.[ … ] These bills
were unchallenged in court.
Analogous patent statutes, however, were upheld in litigation[ … ]
Congress has also passed generally applicable legislation granting patents and
copyrights to inventions and works that had lost protection.[ … ] ]
Pointing to dictum in Graham v. John Deere Co. of Kansas City, 383 U. S. 1

(1966), petitioners would have us look past this history. In Graham, we stated that
"Congress may not authorize the issuance of patents whose effects are to remove
existent knowledge from the public domain, or to restrict free access to materials
already available." Id., at 6; post, at 15. But as we explained in Eldred, this passage
did not speak to the constitutional limits on Congress' copyright and patent
authority. Rather, it "addressed an invention's very eligibility for patent protection."
537 U. S., at 202, n. 7.
Installing a federal copyright system and ameliorating the interruptions of global

war, it is true, presented Congress with extraordinary situations. Yet the TRIPS
accord, leading the United States to comply in full measure with Berne, was also a
signal event.[ … ]. Given the authority we hold Congress has, we will not second-
guess the political choice Congress made between leaving the public domain
untouched and embracing Berne unstintingly. Cf. id., at 212-213.
C
Petitioners' ultimate argument as to the Copyright and Patent Clause concerns its
initial words. Congress is empowered to "promote the Progress of Science and
useful Arts" by enacting systems of copyright and patent protection. U. S. Const.,
201
Art. I, §8, cl. 8. Perhaps counterintuitively for the contemporary reader, Congress'
copyright authority is tied to the progress of science; its patent authority, to the
progress of the useful arts. See Graham, 383 U. S., at 5, and n. 1; Evans, 8 F. Cas.,
at 873 (Marshall, J.).
The "Progress of Science," petitioners acknowledge, refers broadly to "the creation

and spread of knowledge and learning." Brief for Petitioners 21; accord post, at 1.
They nevertheless argue that federal legislation cannot serve the Clause's aim
unless the legislation "spur[s] the creation of . . . new works." Brief for Petitioners
24; accord post, at 1-2, 8, 17. Because §514 deals solely with works already
created, petitioners urge, it "provides no plausible incentive to create new works"
and is therefore invalid. Reply Brief 4. [25]
The creation of at least one new work, however, is not the sole way Congress may
promote knowledge and learning. In Eldred, we rejected an argument nearly
identical to the one petitioners rehearse. The Eldred petitioners urged that the
"CTEA's extension of existing copyrights categorically fails to `promote the
Progress of Science,' . . . because it does not stimulate the creation of new works."
537 U. S., at 211-212. In response to this argument, we held that the Copyright
Clause does not demand that each copyright provision, examined discretely, operate
to induce new works. Rather, we explained, the Clause "empowers Congress to
determine the intellectual property regimes that, overall, in that body's judgment,
will serve the ends of the Clause." Id., at 222. And those permissible ends, we held,
extended beyond the creation of new works.[ … ] ]
Even were we writing on a clean slate, petitioners' argument would be unavailing.

Nothing in the text of the Copyright Clause confines the "Progress of Science"
exclusively to "incentives for creation." Id., at 324, n. 5 (internal quotation marks
omitted). Evidence from the founding, moreover, suggests that inducing
dissemination—as opposed to creation—was viewed as an appropriate means to
promote science.[ … ]. Until 1976, in fact, Congress made "federal copyright
contingent on publication[,] [thereby] providing incentives not primarily for
creation," but for dissemination. Perlmutter, supra, at 324, n. 5. Our decisions
correspondingly recognize that "copyright supplies the economic incentive to create
and disseminate ideas."[ … ]]
Considered against this backdrop, §514 falls comfortably within Congress'

authority under the Copyright Clause. Congress rationally could have concluded
that adherence to Berne "promotes the diffusion of knowledge," Brief for
Petitioners 4. A well-functioning international copyright system would likely
encourage the dissemination of existing and future works. See URAA Joint Hearing
189 (statement of Professor Perlmutter). Full compliance with Berne, Congress had
reason to believe, would expand the foreign markets available to U. S. authors and
invigorate protection against piracy of U. S. works abroad,[ … ], thereby
benefitting copyrightintensive industries stateside and inducing greater investment
in the creative process.
The provision of incentives for the creation of new works is surely an essential
means to advance the spread of knowledge and learning. We hold, however, that it
is not the sole means Congress may use "[t]o promote the Progress of Science." See
Perlmutter, supra, at 332 (United States would "lose all flexibility" were the
provision of incentives to create the exclusive way to promote the progress of
science). [28] Congress determined that exemplary adherence to Berne would serve
ChapterNumber:
202
the objectives of the Copyright Clause. We have no warrant to reject the rational
judgment Congress made.
III
A
We next explain why the First Amendment does not inhibit the restoration
authorized by §514. To do so, we first recapitulate the relevant part of our
pathmarking decision in Eldred.[ … ]
Given the "speech-protective purposes and safeguards" embraced by copyright law,

see id., at 219, we concluded in Eldred that there was no call for the heightened
review petitioners sought in that case. [30] We reach the same conclusion here. [31]
Section 514 leaves undisturbed the "idea/expression" distinction and the "fair use"
defense. Moreover, Congress adopted measures to ease the transition from a
national scheme to an international copyright regime: It deferred the date from
which enforcement runs, and it cushioned the impact of restoration on "reliance
parties" who exploited foreign works denied protection before §514 took effect. [ …
].
B
Petitioners attempt to distinguish their challenge from the one turned away in
Eldred. First Amendment interests of a higher order are at stake here, petitioners
say, because they—unlike their counterparts in Eldred— enjoyed "vested rights" in
works that had already entered the public domain. The limited rights they retain
under copyright law's "built-in safeguards" are, in their view, no substitute for the
unlimited use they enjoyed before §514's enactment. Nor, petitioners urge, does
§514's "unprecedented" foray into the public domain possess the historical pedigree
that supported the term extension at issue in Eldred.[ … ].
However spun, these contentions depend on an argument we considered and

rejected above, namely, that the Constitution renders the public domain largely
untouchable by Congress. Petitioners here attempt to achieve under the banner of
the First Amendment what they could not win under the Copyright Clause: On their
view of the Copyright Clause, the public domain is inviolable; as they read the First
Amendment, the public domain is policed through heightened judicial scrutiny of
Congress' means and ends. As we have already shown, see supra, at 13-19, the text
of the Copyright Clause and the historical record scarcely establish that "once a
work enters the public domain," Congress cannot permit anyone—"not even the
creator—[to] copyright it," 501 F. 3d, at 1184. And nothing in the historical record,
congressional practice, or our own jurisprudence warrants exceptional First
Amendment solicitude for copyrighted works that were once in the public domain.
[32]
Neither this challenge nor that raised in Eldred, we stress, allege Congress
203
transgressed a generally applicable First Amendment prohibition; we are not faced,

for example, with copyright protection that hinges on the author's viewpoint.
The Tenth Circuit's initial opinion determined that petitioners marshaled a stronger
First Amendment challenge than did their predecessors in Eldred, who never
"possessed unfettered access to any of the works at issue." 501 F. 3d, at 1193. See
also id., at 1194 ("[O]nce the works at issue became free for anyone to copy,
[petitioners] had vested First Amendment interests in the expressions, [thus] §514's
interference with [petitioners'] rights is subject to First Amendment scrutiny."). As
petitioners put it in this Court, Congress impermissibly revoked their right to
exploit foreign works that "belonged to them" once the works were in the public
domain. Brief for Petitioners 44-45.
To copyright lawyers, the "vested rights" formulation might sound exactly

backwards: Rights typically vest at the outset of copyright protection, in an author
or rightholder. See, e.g., 17 U. S. C. §201(a) ("Copyright in a work protected . . .
vests initially in the author . . . ."). Once the term of protection ends, the works do
not revest in any rightholder. Instead, the works simply lapse into the public
domain. See, e.g., Berne, Art. 18(1), 828 U. N. T. S., at 251 ("This Convention
shall apply to all works which . . . have not yet fallen into the public domain. . . .").
Anyone has free access to the public domain, but no one, after the copyright term
has expired, acquires ownership rights in the once-protected works.
Congress recurrently adjusts copyright law to protect categories of works once

outside the law's compass. For example, Congress broke new ground when it
extended copyright protection to foreign works in 1891, Act of Mar. 3, §13, 26 Stat.
1110; to dramatic works in 1856, Act of Aug. 18, 11 Stat. 138; to photographs and
photographic negatives in 1865, Act of Mar. 3, §1, 13 Stat. 540; to motion pictures
in 1912, Act of Aug. 24, 37 Stat. 488; to fixed sound recordings in 1972, Act of
Oct. 15, 1971, 85 Stat. 391; and to architectural works in 1990, Architectural Works
Copyright Protection Act, 104 Stat. 5133. And on several occasions, as recounted
above, Congress protected works previously in the public domain, hence freely
usable by the public. See supra, at 15-19. If Congress could grant protection to
these works without hazarding heightened First Amendment scrutiny, then what
free speech principle disarms it from protecting works prematurely cast into the
public domain for reasons antithetical to the Berne Convention? [33]
Section 514, we add, does not impose a blanket prohibition on public access.
Petitioners protest that fair use and the idea/expression dichotomy "are plainly
inadequate to protect the speech and expression rights that Section 514 took from
petitioners, or . . . the public"—that is, "the unrestricted right to perform, copy,
teach and distribute the entire work, for any reason." Brief for Petitioners 46-47.
"Playing a few bars of a Shostakovich symphony," petitioners observe, "is no
substitute for performing the entire work." Id., at 47. [34]
But Congress has not put petitioners in this bind. The question here, as in Eldred, is
whether would-be users must pay for their desired use of the author's expression, or
else limit their exploitation to "fair use" of that work. Prokofiev's Peter and the
Wolf could once be performed free of charge; after §514 the right to perform it
must be obtained in the marketplace. This is the same marketplace, of course, that
exists for the music of Prokofiev's U. S. contemporaries: works of Copland and
Bernstein, for example, that enjoy copyright protection, but nevertheless appear
regularly in the programs of U. S. concertgoers.
ChapterNumber:
204
Before we joined Berne, domestic works and some foreign works were protected
under U. S. statutes and bilateral international agreements, while other foreign
works were available at an artificially low (because royalty-free) cost. By fully
implementing Berne, Congress ensured that most works, whether foreign or
domestic, would be governed by the same legal regime. The phenomenon to which
Congress responded is not new: Distortions of the same order occurred with greater
frequency—and to the detriment of both foreign and domestic authors—when,
before 1891, foreign works were excluded entirely from U. S. copyright protection.
See Kampelman, The United States and International Copyright, 41 Am. J. Int'l L.
406, 413 (1947) ("American readers were less inclined to read the novels of Cooper
or Hawthorne for a dollar when they could buy a novel of Scott or Dickens for a
quarter."). Section 514 continued the trend toward a harmonized copyright regime
by placing foreign works in the position they would have occupied if the current
regime had been in effect when those works were created and first published.
Authors once deprived of protection are spared the continuing effects of that initial
deprivation; §514 gives them nothing more than the benefit of their labors during
whatever time remains before the normal copyright term expires. [35]
Unlike petitioners, the dissent makes much of the so-called "orphan works"
problem. See post, at 11-14, 23-24. We readily acknowledge the difficulties would-
be users of copyrightable materials may face in identifying or locating copyright
owners. See generally U. S. Copyright Office, Report on Orphan Works 21-40
(2006). But as the dissent concedes, see post, at 13, this difficulty is hardly peculiar
to works restored under §514. It similarly afflicts, for instance, U. S. libraries that
attempt to catalogue U. S. books.[ … ] ]
Nor is this a matter appropriate for judicial, as opposed to legislative, resolution.

Cf. Authors Guild v. Google, Inc., 770 F. Supp. 2d 666, 677-678 (SDNY 2011)
(rejecting proposed "Google Books" class settlement because, inter alia, "the
establishment of a mechanism for exploiting unclaimed books is a matter more
suited for Congress than this Court" (citing Eldred, 537 U. S., at 212)). Indeed, the
host of policy and logistical questions identified by the dissent speak for
themselves. Post, at 12. Despite "longstanding efforts," see Authors Guild, 770 F.
Supp. 2d, at 678 (quoting statement of Marybeth Peters), Congress has not yet
passed ameliorative orphan-works legislation of the sort enacted by other Berne
members, see, e.g., Canada Copyright Act, R. S. C., 1985, c. C-42, §77 (authorizing
Copyright Board to license use of orphan works by persons unable, after making
reasonable efforts, to locate the copyright owner). Heretofore, no one has suggested
that the orphan-works issue should be addressed through our implementation of
Berne, rather than through overarching legislation of the sort proposed in Congress
and cited by the dissent. See post, at 23-24; U. S. Copyright Office, Legal Issues in
Mass Digitization 25-29 (2011) (discussing recent legislative efforts). Our
unstinting adherence to Berne may add impetus to calls for the enactment of such
legislation. But resistance to Berne's prescriptions surely is not a necessary or
proper response to the pervasive question, what should Congress do about orphan
works.
IV
Congress determined that U. S. interests were best served by our full participation
in the dominant system of international copyright protection. Those interests
205
include ensuring exemplary compliance with our international obligations, securing

greater protection for U. S. authors abroad, and remedying unequal treatment of
foreign authors. The judgment §514 expresses lies well within the ken of the
political branches. It is our obligation, of course, to determine whether the action
Congress took, wise or not, encounters any constitutional shoal. For the reasons
stated, we are satisfied it does not. The judgment of the Court of Appeals for the
Tenth Circuit is therefore Affirmed.
JUSTICE KAGAN took no part in the consideration or decision of this case [ … ]
"
JUSTICE BREYER, with whom JUSTICE ALITO joins, dissenting.
In order "[t]o promote the Progress of Science" (by which term the Founders meant
"learning" or "knowledge"), the Constitution's Copyright Clause grants Congress
the power to "secur[e] for limited Times to Authors . . . the exclusive Right to
their . . . Writings." Art. I, §8, cl. 8. This "exclusive Right" allows its holder to
charge a fee to those who wish to use a copyrighted work, and the ability to charge
that fee encourages the production of new material. In this sense, a copyright is, in
Macaulay's words, a "tax on readers for the purpose of giving a bounty to
writers"—a bounty designed to encourage new production. As the Court said in
Eldred, "`[t]he economic philosophy behind the [Copyright] [C]lause . . . is the
conviction that encouragement of individual effort by personal gain is the best way
to advance public welfare through the talents of authors and inventors.'"[ … ].
The statute before us, however, does not encourage anyone to produce a single new
work. By definition, it bestows monetary rewards only on owners of old works—
works that have already been created and already are in the American public
domain. At the same time, the statute inhibits the dissemination of those works,
foreign works published abroad after 1923, of which there are many millions,
including films, works of art, innumerable photographs, and, of course, books—
books that (in the absence of the statute) would assume their rightful places in
computer-accessible databases, spreading knowledge throughout the world. See
infra, at 10-13. In my view, the Copyright Clause does not authorize Congress to
enact this statute. And I consequently dissent.
I
The possibility of eliciting new production is, and always has been, an essential
precondition for American copyright protection. The Constitution's words,
"exclusive Right," "limited Times," "Progress of Science," viewed through the lens
of history underscore the legal significance of what the Court in Eldred referred to
as the "economic philosophy behind the Copyright Clause." 537 U. S., at 212, n. 18
(brackets omitted). That philosophy understands copyright's grants of limited
monopoly privileges to authors as private benefits that are conferred for a public
reason—to elicit new creation.
Yet, as the Founders recognized, monopoly is a two-edged sword. On the one hand,
it can encourage production of new works. In the absence of copyright protection,
anyone might freely copy the products of an author's creative labor, appropriating
the benefits without incurring the nonrepeatable costs of creation, thereby deterring
ChapterNumber:
206
authors from exerting themselves in the first place. On the other hand, copyright
tends to restrict the dissemination (and use) of works once produced either because
the absence of competition translates directly into higher consumer prices or
because the need to secure copying permission sometimes imposes administrative
costs that make it difficult for potential users of a copyrighted work to find its
owner and strike a bargain. See W. Landes & R. Posner, The Economic Structure of
Intellectual Property Law 68-70, 213-214 (2003). Consequently, the original British
copyright statute, the Constitution's Framers, and our case law all have recognized
copyright's resulting and necessary call for balance.
At the time the Framers wrote the Constitution, they were well aware of Britain's
18th-century copyright statute, the Statute of Anne, 8 Anne, ch. 19 (1710), and they
were aware of the legal struggles that produced it. That statute sought in part to
control, and to limit, preexisting monopolies that had emerged in the book trade as
a result of the Crown's having previously granted special privileges to royal
favorites. The Crown, for example, had chartered the Stationers' Company,
permitting it to regulate and to censor works on the government's behalf. The
Stationers had thereby acquired control over the disposition of copies of published
works, from which emerged the Stationers' copyright—a right conferred on
company members, not authors, that was deemed to exist in perpetuity[ … ].
To prevent the continuation of the booksellers' monopoly and to encourage authors

to write new books, Parliament enacted the Statute of Anne. It bore the title: "An
Act for the Encouragement of Learning, by vesting the Copies of printed Books in
the Authors or Purchasers of such Copies, during the Times therein mentioned."
And it granted authors (not publishers) and their assignees the "sole Right and
Liberty of printing" their works for limited periods of time in order to encourage
them "to compose and write useful Books." 8 Anne, ch. 19, §1 (emphasis added). As
one historian has put it, "[t]he central plank of the . . . Act was . . . a cultural quid
pro quo. To encourage `learned Men to compose and write useful Books' the state
would provide a guaranteed, if temporally limited, right to print and reprint those
works." Deazley, The Myth of Copyright at Common Law, 62 Camb. L. J. 106, 108
(2003). At first, in their attempts to minimize their losses, the booksellers argued
that authors had a perpetual common-law copyright in their works deriving from
their natural rights as creators. But the House of Lords ultimately held in
Donaldson v. Beckett, 1 Eng. Rep. 837 (1774), that the Statute of Anne had
transformed any such perpetual common-law copyright into a copyright of a limited
term designed to serve the public interest. Patterson 15-16, 153, 158-179; Deazley,
supra, at 114-126.
Many early colonial copyright statutes, patterned after the Statute of Anne, also
stated that copyright's objective was to encourage authors to produce new works
and thereby improve learning[ … ].
At least, that was the predominant view expressed to, or by, the Founders. Patterson
93. Thomas Jefferson, for example, initially expressed great uncertainty as to
whether the Constitution should authorize the grant of copyrights and patents at all,
writing that "the benefit even of limited monopolies is too doubtful" to warrant
anything other than their "suppression." Letter from Thomas Jefferson to James
Madison (July 31, 1788), in 13 Papers of Thomas Jefferson 440, 443 (J. Boyd ed.
1956). James Madison also thought that "Monopolies . . . are justly classed among
the greatest nu[i]sances in Government." Letter from James Madison to Thomas
Jefferson (Oct. 17, 1788), in 14 id., at 16, 21 (J. Boyd ed. 1958). But he argued that
"in certain cases" such as copyright, monopolies should "be granted" ("with
207
caution, and guarded with strictness agst abuse") to serve as "compensation for a
benefit actually gained to the community . . . which the owner might otherwise
withhold from public use." Monopolies. Perpetuities. Corporations. Ecclesiastical
Endowments. in J. Madison, Writings 756 (J. Rakove ed. 1999) (emphasis added).
Jefferson eventually came to agree with Madison, supporting a limited conferral of
monopoly rights but only "as an encouragement to men to pursue ideas which may
produce utility." Letter from Thomas Jefferson to Isaac McPherson (Aug. 13,
1813), in 6 Papers of Thomas Jefferson, at 379, 383 (J. Looney ed. 2009) (emphasis
added).
This utilitarian view of copyrights and patents, embraced by Jefferson and Madison,
stands in contrast to the "natural rights" view underlying much of continental
European copyright law—a view that the English booksellers promoted in an effort
to limit their losses following the enactment of the Statute of Anne and that in part
motivated the enactment of some of the colonial statutes. Patterson 158-179, 183-
192. Premised on the idea that an author or inventor has an inherent right to the
fruits of his labor, it mythically stems from a legendary 6th-century statement of
King Diarmed "`to every cow her calf, and accordingly to every book its copy.'" A.
Birrell, Seven Lectures on the Law and History of Copyright in Books 42 (1899).
That view, though perhaps reflected in the Court's opinion, ante, at 30, runs
contrary to the more utilitarian views that influenced the writing of our own
Constitution's Copyright Clause.[ … ].
This utilitarian understanding of the Copyright Clause has long been reflected in the
Court's case law. In Mazer, for example, the Court refers to copyright as embodying
the view that "encouragement of individual effort by personal gain is the best way
to advance public welfare through the talents of authors and inventors." 347 U. S.,
at 219 (emphasis added). In Twentieth Century Music Corp. v. Aiken, 422 U. S. 151
(1975), the Court says that underlying copyright is the understanding that
"[c]reative work is to be encouraged and rewarded, but private motivation must
ultimately serve the cause of promoting broad public availability of literature,
music, and the other arts." Id., at 156 (emphasis added). And in Sony Corp. of
America v. Universal City Studios, Inc., 464 U. S. 417 (1984), the Court, speaking
of both copyrights and patents, points out that the "monopoly privileges that
Congress may authorize are . . . [not] primarily designed to provide a special
private benefit. Rather, the limited grant is a means by which an important public
purpose may be achieved. It is intended to motivate the creative activity of authors .
. . by the provision of a special reward." Id., at 429 (emphasis added[ … ]).
Congress has expressed similar views in congressional Reports on copyright

legislation.[ … ]
The upshot is that text, history, and precedent demonstrate that the Copyright
Clause places great value on the power of copyright to elicit new production.
Congress in particular cases may determine that copyright's ability to do so
outweighs any concomitant high prices, administrative costs, and restrictions on
dissemination. And when it does so, we must respect its judgment. [ … ]. But does
the Clause empower Congress to enact a statute that withdraws works from the
public domain, brings about higher prices and costs, and in doing so seriously
restricts dissemination, particularly to those who need it for scholarly, educational,
or cultural purposes—all without providing any additional incentive for the
ChapterNumber:
208
production of new material? That is the question before us. And, as I have said, I
believe the answer is no. Congress in this statute has exceeded what are, under any
plausible reading of the Copyright Clause, its permissible limits[ … ]
[1] Article 18 of the Berne Convention provides:
"(1) This Convention shall apply to all works which, at the moment of its
coming into force, have not yet fallen into the public domain in the
country of origin through the expiry of the term of protection.
"(2) If, however, through the expiry of the term of protection which was
previously granted, a work has fallen into the public domain of the
country where protection is claimed, that work shall not be protected
anew.
"(3) The application of this principle shall be subject to any provisions

contained in special conventions to that effect existing or to be concluded
between countries of the Union. In the absence of such provisions, the
respective countries shall determine, each in so far as it is concerned, the
conditions of application of this principle.
"(4) The preceding provisions shall also apply in the case of new
accessions to the Union and to cases in which protection is extended by
the application of Article 7 or by the abandonment of reservations." 828
U. N. T. S. 251.
[2] As noted by the Government's amici, the United States excluded foreign works
from copyright not to swell the number of unprotected works available to the
consuming public, but to favor domestic publishing interests that escaped paying
royalties to foreign authors[ … ] This free-riding, according to Senator Jonathan
Chace, champion of the 1891 Act, made the United States "the Barbary coast of
literature" and its people "the buccaneers of books."[ … ]).
[3] See also S. Rep. No. 103-412, p. 225 (1994) ("While the United States declared
its compliance with the Berne Convention in 1989, it never addressed or enacted
legislation to implement Article 18 of the Convention."); Memorandum from Chris
Schroeder, Counselor to the Assistant Attorney General, Office of Legal Counsel,
Dept. of Justice (DOJ), to Ira S. Shapiro, General Counsel, Office of the U. S.
Trade Representative (July 29, 1994), in W. Patry, Copyright and the GATT, p. C-
15 (1995) ("At the time Congress was debating the BCIA, it reserved the issue of
removing works from the public domain."); General Agreement on Tariffs and
Trade (GATT): Intellectual Property Provisions, Joint Hearing before the
Subcommittee on Intellectual Property and Judicial Administration of the House
Committee on the Judiciary and the Subcommittee on Patents, Copyrights and
Trademarks of the Senate Committee on the Judiciary, 103d Cong., 2d Sess., p. 120
(1994) (URAA Joint Hearing) (app. to statement of Bruce A. Lehman, Assistant
Secretary of Commerce and Commissioner of Patents and Trademarks (Commerce
Dept.)) ("When the United States adhered to the Berne Convention, Congress . . .
acknowledged that the possibility of restoring copyright protection for foreign
works that had fallen into the public domain in the United States for failure to
comply with formalities was an issue that merited further discussion.").
209
[4] The dissent implicitly agrees that, whatever tentative conclusion Congress
reached in 1988, Article 18 requires the United States to "protect the foreign works
at issue," at least absent a special convention the United States did not here
negotiate. Post, at 22. See also post, at 23 (citing Gervais, Golan v. Holder: A Look
at the Constraints Imposed by the Berne Convention, 64 Vand. L. Rev. En Banc
147, 151-152 (2011)); id., at 152 ("[T]he Convention clearly requires that some
level of protection be given to foreign authors whose works have entered the public
domain (other than by expiration of previous copyright)."). Accord S. Ricketson,
The Berne Convention for the Protection of Literary and Artistic Works 1886-1986,
p. 675 (1987) ("There is no basis on which [protection of existing works under
Article 18] can be completely denied. The conditions and reservations," authorized
by Article 18(3) [and stressed by the dissent, post, at 23-24] are of "limited" and
"transitional" duration and "would not be permitted to deny [protection] altogether
in relation to a particular class . . . of works.").
[5] NAFTA ultimately included a limited retroactivity provision—a precursor to

§514 of the URAA—granting U. S. copyright protection to certain Mexican and
Canadian films. These films had fallen into the public domain, between 1978 and
1988, for failure to meet U. S. notice requirements. See North American Free Trade
Agreement Implementation Act, §334, 107 Stat. 2115; Brief for Franklin Pierce
Center for Intellectual Property as Amicus Curiae 14-16. One year later, Congress
replaced this provision with the version of 17 U. S. C. §104A at issue here. See 3
M. Nimmer & D. Nimmer, Copyright §9A.03, 9A.04, pp. 9A-17, 9A-22 (2011)
(hereinafter Nimmer).
[6] This tension between the United States and its new Berne counter parties calls
into question the dissent's assertion that, despite the 1988 Act's minimalist
approach, "[t]he United States obtained the benefits of Berne for many years." Post,
at 22-23. During this six-year period, Congress had reason to doubt that U. S.
authors enjoyed the full benefits of Berne membership.
[7] Marrakesh Agreement Establishing the World Trade Organization, Apr. 15,
1994, 1867 U. N. T. S. 154.
[8] Proponents of prompt congressional action urged that avoiding a trade

enforcement proceeding—potentially the WTO's first—would be instrumental in
preserving the United States'"reputation as a world leader in the copyright field."
URAA Joint Hearing 241 (statement of Eric Smith, International Intellectual
Property Alliance (IIPA)). In this regard, U. S. negotiators reported that widespread
perception of U. S. noncompliance was undermining our leverage in copyright
negotiations. Unimpeachable adherence to Berne, Congress was told, would help
ensure enhanced foreign protection, and hence profitable dissemination, for existing
and future U. S. works. See id., at 120 (app. to statement of Lehman, Commerce
Dept.) ("Clearly, providing for [retroactive] protection for existing works in our
own law will improve our position in future negotiations."); id., at 268 (statement
of Berman, RIAA).
[9] Title 17 U. S. C. §104A is reproduced in full in an appendix to this opinion.
[10] Works from most, but not all, foreign countries are eligible for protection
under §514. The provision covers only works that have "at least one author or
rightholder who was, at the time the work was created, a national or domiciliary of
an eligible country." 17 U. S. C. §104A(h)(6)(D). An "eligible country" includes
any "nation, other than the United States, that—(A) becomes a WTO member
ChapterNumber:
210
country after the date of the enactment of the [URAA]; [or] (B) on such date of
enactment is, or after such date of enactment becomes, a nation adhering to the
Berne Convention." §104A(h)(3). As noted above, see supra, at 3, 164 countries
adhere to the Berne Convention. World Intellectual Property Organization,
Contracting Parties: Berne Convention, www.wipo.int/treaties (as visited Jan. 13,
2012, and in Clerk of Court's case file).
[11] From the first Copyright Act until late in the 20th century, Congress
conditioned copyright protection on compliance with certain statutory formalities.
The most notable required an author to register her work, renew that registration,
and affix to published copies notice of copyrighted status. The formalities drew
criticism as a trap for the unwary[ … ].
In 1976, Congress eliminated the registration renewal requirement for future works.
Copyright Act of 1976, §302, 408, 90 Stat. 2572, 2580. In 1988, it repealed the
mandatory notice prerequisite. BCIA §7, 102 Stat. 2857. And in 1992, Congress
made renewal automatic for works still in their first term of protection. Copyright
Amendments Act of 1992, 106 Stat. 264-266. The Copyright Act retains, however,
incentives for authors to register their works and provide notice of the works'
copyrighted status. See, e.g., 17 U. S. C. §405(b) (precluding actual and statutory
damages against "innocent infringers" of a work that lacked notice of copyrighted
status); §411(a) (requiring registration of U. S. "work[s]," but not foreign works,
before an owner may sue for infringement). The revisions successively made accord
with Berne Convention Article 5(2), which proscribes application of copyright
formalities to foreign authors. Berne, however, affords domestic authors no escape
from domestic formalities. See Art. 5(3) (protection within country of origin is a
matter of domestic law).
[12] Title 17 U. S. C. §104A(h)(6)(B) defines a "restored work" to exclude "an

original work of authorship" that is "in the public domain in its source country
through expiration of [its] term of protection." This provision tracks Berne's denial
of protection for any work that has "fallen into the public domain in the country of
origin through the expiry of the term of protection." Art. 18(1), 828 U. N. T. S., at
251.
[13] Restoration is a misnomer insofar as it implies that all works protected under
§104A previously enjoyed protection. Each work in the public domain because of
lack of national eligibility or subjectmatter protection, and many that failed to
comply with formalities, never enjoyed U. S. copyright protection. See, e.g., 3
Nimmer §9A.04[A][1][b][iii], at 9A-26, and n. 29.4.
[14] A reliance party must have used the work in a manner that would constitute
infringement had a valid copyright been in effect. See §104A(h)(4)(A). After
restoration, the reliance party is limited to her previous uses. A performer of a
restored work, for example, cannot, post-restoration, venture to sell copies of the
script.[ … ].
[15] Petitioners' complaint also challenged the constitutionality of the Copyright

Term Extension Act, 112 Stat. 2827, which added 20 years to the duration of
existing and future copyrights. After this Court rejected a similar challenge in
Eldred v. Ashcroft, 537 U. S. 186 (2003), the District Court dismissed this portion
of petitioners' suit on the pleadings, Golan v. Ashcroft, 310 F. Supp. 2d 1215 (D.
Colo. 2004). The Tenth Circuit affirmed, Golan v. Gonzales, 501 F. 3d 1179
(2007), and petitioners do not attempt to revive that claim in this Court, Pet. for
211
Cert. 7, n. 2. Neither have petitioners challenged the District Court's entry of

summary judgment for the Government on the claim that §514 violates the
substantive component of the Due Process Clause.
[16] Cf. 3 Nimmer §9A.02[A][2], at 9A-11, n. 28 ("[I]t stretches the language of

the Berne Convention past the breaking point to posit that following èxpiry of the
zero term' the . . . work need not be resurrected.").
[17] See B. Bugbee, Genesis of American Patent and Copyright Law 123-124
(1967) (hereinafter Bugbee) (Delaware, Maryland, and Pennsylvania).
[18] See 1783 Mass. Acts p. 236; 1783 N. J. Laws p. 47; 1783 N. H. Laws p. 521;
1783 R. I. Laws pp. 6-7; 1784 S. C. Acts p. 49; 1785 Va. Acts ch. VI; 1786 N. Y.
Laws p. 298.
[19] 1783 Conn. Pub. Acts no. 617; 1783 N. J. Laws p. 47; 1785 N. C. Laws p. 563;
1786 Ga. Laws p. 323. In four States, copyright enforcement was restricted to
works "not yet printed" or "hereinafter published." 1783 Mass. Acts p. 236; 1783 N.
H. Laws p. 521; 1783 R. I. Laws pp. 6-7; 1784 S. C. Acts p. 49.
[20] See Bugbee 109-123.
[21] The parties debate the extent to which the First Congress removed works from
the public domain. We have held, however, that at least some works protected by
the 1790 Act previously lacked protection. In Wheaton v. Peters, 8 Pet. 591 (1834),
the Court ruled that before enactment of the 1790 Act, common-law copyright
protection expired upon first publication. Id., at 657, 663. Thus published works
covered by the 1790 Act previously would have been in the public domain unless
protected by state statute. Had the founding generation perceived the constitutional
boundary petitioners advance today, the First Congress could have designed a
prospective scheme that left the public domain undisturbed. Accord Luck's Music
Library, Inc. v. Gonzales, 407 F. 3d 1262, 1265 (CADC 2005) (Section 514 does
not offend the Copyright Clause because, inter alia, "evidence from the First
Congress," as confirmed by Wheaton, "points toward constitutionality.").
[22] Here, as in Eldred, "[b]ecause the Clause empowering Congress to confer

copyrights also authorizes patents, congressional practice with respect to patents
informs our inquiry." 537 U. S., at 201.
[23] Section 514 is in line with these measures; like them, it accords protection to
works that had lapsed into the public domain because of failure to comply with U.
S. statutory formalities. See supra, at 9, and n. 11.
[24] Legislation of this order, petitioners argue, is best understood as an exercise of

Congress' power to remedy excusable neglect. Even so, the remedy sheltered
creations that, absent congressional action, would have been open to free
exploitation. Such action, according to petitioners' dominant argument, see supra, at
13-14, is ever and always impermissible. Accord Luck's Music Library, 407 F. 3d,
at 1265-1266 ("Plaintiffs urge that [the 1790 Act and the wartime legislation]
simply extended the time limits for filing and [did] not purport to modify the
prohibition on removing works from the public domain. But to the extent that
potential copyright holders failed to satisfy procedural requirements, such works"—
like those protected by §514—"would necessarily have already entered the public
domain . . . .").
ChapterNumber:
212
[25] But see Brief for Motion Picture Association of America as Amicus Curiae 27
(observing that income from existing works can finance the creation and
publication of new works); Eldred, 537 U. S., at 208, n. 15 (noting that Noah
Webster "supported his entire family from the earnings on his speller and grammar
during the twenty years he took to complete his dictionary" (internal quotation
marks omitted)).
[26] The dissent also suggests, more tentatively, that at least where copyright
legislation extends protection to works previously in the public domain, Congress
must counterbalance that restriction with new incentives to create. Post, at 8. Even
assuming the public domain were a category of constitutional significance, contra
supra, at 13-19, we would not understand "the Progress of Science" to have this
contingent meaning.
[27] That the same economic incentives might also induce the dissemination of
futons, fruit, or Bibles, see post, at 20, is no answer to this evidence that legislation
furthering the dissemination of literary property has long been thought a legitimate
way to "promote the Progress of Science."
[28] The dissent suggests that the "utilitarian view of copyrigh[t]" embraced by
Jefferson, Madison, and our case law sets us apart from continental Europe and
inhibits us from harmonizing our copyright laws with those of countries in the civil-
law tradition. See post, at 5-6, 22. For persuasive refutation of that suggestion, see
Austin, Does the Copyright Clause Mandate Isolationism? 26 Colum. J. L. & Arts
17, 59 (2002) (cautioning against "an isolationist reading of the Copyright Clause
that is in tension with . . . America's international copyright relations over the last
hundred or so years").
[29] On the initial appeal in this case, the Tenth Circuit gave an unconfined reading
to our reference in Eldred to "traditional contours of copyright." 501 F. 3d, at 1187-
1196. That reading was incorrect, as we here clarify.
[30] See Eldred, 537 U. S., at 221 ("Protection of [an author's original expression
from unrestricted exploitation] does not raise the free speech concerns present when
the government compels or burdens the communication of particular facts or
ideas.").
[31] Focusing narrowly on the specific problem of orphan works, the dissent
overlooks these principal protections against "the dissemination-restricting harms
of copyright." Post, at 14.
[32] "[R]equir[ing] works that have already fallen into the public domain to stay
there" might, as the dissent asserts, supply an "easily administrable standard." Post,
at 14. However attractive this brightline rule might be, it is not a rule rooted in the
constitutional text or history. Nor can it fairly be gleaned from our case law. The
dissent cites three decisions to document its assertion that "this Court has assumed
the particular importance of public domain material in roughly analogous
circumstances." Post, at 15. The dictum in Graham v. John Deere Co. of Kansas
City, 383 U. S. 1, 6 (1966), noted earlier, did not treat the public domain as a
constitutional limit—certainly not under the rubric of the First Amendment. See
supra, at 19. The other two decisions the dissent cites considered whether the
federal Patent Act preempted a state trade-secret law, Kewanee Oil Co. v. Bicron
Corp., 416 U. S. 470, 479-484 (1974), and whether the freedom of the press
shielded reporters from liability for publishing material drawn from public court
documents, Cox Broadcasting Corp. v. Cohn, 420 U. S. 469, 495-497 (1975).
213
Neither decision remotely ascribed constitutional significance to a work's public

domain status.
[33] It was the Fifth Amendment's Takings Clause—not the First Amendment—that
Congress apparently perceived to be a potential check on its authority to protect
works then freely available to the public. See URAA Joint Hearing 3 (statement of
Rep. Hughes); id., at 121 (app. to statement of Lehman, Commerce Dept.); id., at
141 (statement of Shapiro, USTR); id., at 145 (statement of Christopher Schroeder,
DOJ). The reliance-party protections supplied by §514, see supra, at 10-11, were
meant to address such concerns. See URAA Joint Hearing 148-149 (prepared
statement of Schroeder).
[34] Because Shostakovich was a pre-1973 Russian composer, his works were not
protected in the United States. See U. S. Copyright Office, Circular No. 38A: The
International Copyright Relations of the United States 9, 11, n. 2 (2010) (copyright
relations between the Soviet Union and the United States date to 1973).
[35] Persistently deploring "`restored copyright' protection [because it] removes

material from the public domain," post, at 14, the dissent does not pause to consider
when and why the material came to be lodged in that domain. Most of the works
affected by §514 got there after a term of zero or a term cut short by failure to
observe U. S. formalities. See supra, at 9.
[36] The pervasive problem of copyright piracy, noted post, at 13, likewise is
scarcely limited to protected foreign works formerly in the public domain.

6.3

Indian materials

6.3.1
Gramophone Company of India Ltd. v. Shanti

Films Corporation


6.3.2
Pee Pee Publishers v. Dr. Neena Khanna

ChapterNumber:
214

6.3.3
Deshmukh & Co. v. Avinash Vishnu Khandekar


215
7
Week 7

ChapterNumber:
216

7.1

“Probative Similarity” and

“Substantial Similarity”

7.1.1
Three Boys Music Corp. v. Michael Bolton


212 F.3d 477
Nos. 97-55150, 97-55154
2000-05-09
212 F.3d 477 (9th Cir. 2000)
THREE BOYS MUSIC CORPORATION,

Plaintiff-Appellee,
v.
MICHAEL BOLTON, individually and d/b/a
MR. BOLTON'S MUSIC, INC.; ANDREW
GOLDMARK; NON-PAREIL MUSIC, INC.;
WARNER-CHAPPELL MUSIC LIMITED;
WARNER TAMERLANE PUBLISHING
CORP.; WB MUSIC CORP.; and SONY
MUSIC ENTERTAINMENT, INC.,
Defendants-Appellants.
Nos. 97-55150, 97-55154
UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT
Argued and Submitted October 5, 1999

Filed May 9, 2000
[48[ … ]
1994, a jury found that Michael Bolton's 1991 pop hit, "Love Is a Wonderful
Thing," infringed on the copyright of a 1964 Isley Brothers' song of the same name.
217
The district court denied Bolton's motion for a new trial and affirmed the jury's
award of $5.4 million.
Bolton, his co-author, Andrew Goldmark, and their record companies ("Sony
Music") appeal, arguing that the district court erred in finding that: (1) sufficient
evidence supported the jury's finding that the appellants had access to the Isley
Brothers' song; (2) sufficient evidence supported the jury's finding that the songs
were substantially similar; (3) subject matter jurisdiction existed based on the Isley
Brothers registering a complete copy of the song; (4) sufficient evidence supported
the jury's attribution of profits to the infringing elements of the song; (5) Sony
Music could not deduct its tax liability; and (6) the appellants' motion for a new
trial based on newly discovered evidence was unwarranted.
We affirm.
I. BACKGROUND
The Isley Brothers, one of this country's most well-known rhythm and blues groups,
have been inducted into the Rock and Roll Hall of Fame. They helped define the
soul sound of the 1960s with songs such as "Shout," "Twist and Shout," and "This
Old Heart of Mine," and they mastered the funky beats of the 1970s with songs
such as "Who's That Lady, " "Fight the Power," and "It's Your Thing." In 1964, the
Isley Brothers wrote and recorded "Love is a Wonderful Thing " for United Artists.
The Isley Brothers received a copyright for "Love is a Wonderful Thing" from the
Register of Copyrights on February 6, 1964. The following year, they switched to
the famous Motown label and had three top-100 hits including "This Old Heart of
Mine."
Hoping to benefit from the Isley Brothers' Motown success, United Artists released
"Love is a Wonderful Thing" in 1966. The song was not released on an album, only
on a 45record as a single. Several industry publications predicted that "Love is a
Wonderful Thing" would be a hit -"Cash Box" on August 27, 1966, "Gavin Report"
on August 26, 1966, and "Billboard" on September 10, 1966. On September 17,
1966, Billboard listed "Love is a Wonderful Thing" at number 110 in a chart titled
"Bubbling Under the Hot 100. " The song was never listed on any other Top 100
charts. In 1991, the Isley Brothers' "Love is a Wonderful Thing" was released [481]
on compact disc. See[ … ]
hael Bolton is a singer/songwriter who gained popularity in the late 1980s and early
1990s by reviving the soul sound of the 1960s. Bolton has orchestrated this soul-
music revival in part by covering old songs such as Percy Sledge's "When a Man
Love a Woman" and Otis Redding's"(Sittin' on the) Dock of the Bay." Bolton also
has written his own hit songs. In early 1990, Bolton and Goldmark wrote a song
called "Love Is a Wonderful Thing." Bolton released it as a single in April 1991,
and as part of Bolton's album,"Time, Love and Tenderness." Bolton's "Love Is a
Wonderful Thing" finished 1991 at number 49 on Billboard's year-end pop chart.
On February 24, 1992, Three Boys Music Corporation filed a copyright

infringement action for damages against the appellants under 17 U.S.C. SS 101 et
seq. (1988). The parties agreed to a trifurcated trial. On April 25, 1994, in the first
phase, the jury determined that the appellants had infringed the Isley Brothers'
copyright. At the end of second phase five days later, the jury decided that Bolton's
ChapterNumber:
218
"Love Is a Wonderful Thing" accounted for 28 percent of the profits from "Time,
Love and Tenderness." The jury also found that 66 percent of the profits from
commercial uses of the song could be attributed to the inclusion of infringing
elements. On [ … ]
December 5, 1996, the district court adopted the findings of the Special Master's
Amended Report about the allocation of damages (third phase). In the final
judgment entered against the appellants, the district court ordered Sony Music to
pay $4,218,838; Bolton to pay $932,924; Goldmark to pay $220,785; and their
music publishing companies to pay $75,900. They timely appealed.
II. DISCUSSION
Proof of copyright infringement is often highly circumstantial, particularly in cases
involving music. A copyright plaintiff must prove (1) ownership of the copyright;
and (2) infringement -that the defendant copied protected elements of the plaintiff's
work. See Smith v. Jackson , 84 F.3d 1213, 1218 (9th Cir. 1996) (citation omitted).
Absent direct evidence of copying, proof of infringement involves fact-based
showings that the defendant had "access" to the plaintiff's work and that the two
works are "substantially similar." Id.
Given the difficulty of proving access and substantial similarity, appellate courts
have been reluctant to reverse jury verdicts in music cases. See, e.g., id. at 1221
(affirming a jury's verdict for the defendants in a copyright infringement case
involving Michael Jackson and other musicians); Gaste v. Kaiserman, 863 F.2d
1061, 1071 (2d[ … ]
Arnstein v. Porter, the seminal case [482] about musical copyright infringement,
Judge Jerome Frank wrote:
Each of these two issues - copying and improper appropriation - is an

issue of fact. If there is a trial, the conclusions on those issues of the trier
of the facts - of the judge if he sat without a jury, or of the jury if there
was a jury trial - bind this court on appeal, provided the evidence supports
those findings, regardless of whether we would ourselves have reached the
same conclusions.
Arnstein v. Porter, 154 F.2d 464, 469 (2d Cir. 1946).
As a general matter, the standard for reviewing jury verdicts is whether they are
supported by "substantial evidence" -that is, such relevant evidence as reasonable
minds might accept as adequate to support a conclusion. See Poppell v. City of San
Diego, 149 F.3d 951, 962 (9th Cir. 1998). The credibility of witnesses is an issue
for the jury and is generally not subject to appellate review. See Gilbrook v. City of
Westminster, 177 F.3d 839, 856 (9th Cir.), cert. denied, 120 S. Ct. 614 (1999).
We affirm the jury's verdict in this case in light of the standard of review and
copyright law's "guiding principles." Although we will address each of the
appellant's arguments in turn, we focus on access because it is the most difficult
issue in this case. Our decision is predicated on judicial deference -finding that the
law has been properly applied in this case, viewing the facts most favorably to the
appellees, and not substituting our judgment for that of the jury.
219
A. Access
Proof of access requires "an opportunity to view or to copy plaintiff's work." Sid
and Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1172
(9th Cir. 1977). This is often described as providing a "reasonable opportunity" or
"reasonable possibility" of viewing the plaintiff's work. 4 Melville B. Nimmer &
David Nimmer, Nimmer on Copyright, S 13.02[A], at 13-19 (1999); Jason v. Fonda,
526 F. Supp. 774, 775 (C.D. Cal. 1981), aff'd , 698 F.2d 966 (9th Cir. 1983). We
have defined reasonable access as "more than a `bare possibility.' " Jason, 698 F.2d
at 967. Nimmer has elaborated on our definition: "Of course, reasonable
opportunity as here used, does not encompass any bare possibility in the sense that
anything is possible. Access may not be inferred through mere speculation or
conjecture. There must be a reasonable possibility of viewing the plaintiff's work -
not a bare possibility." 4 Nimmer,S 13.02[A], at 1319. "At times, distinguishing a
`bare' possibility from a `reasonable' possibility will present a close question. " Id.
at 1320.
Circumstantial evidence of reasonable access is proven in one of two ways: (1) a

particular chain of events is established between the plaintiff's work and the
defendant's access to that work (such as through dealings with a publisher or record
company), or (2) the plaintiff's work has been widely disseminated. See 4 Nimmer,
S 13.02[A], at 13-20-13-21; 2 Paul Goldstein, Copyright: Principles, Law, and
Practice S 8.3.1.1., at 90-91 (1989). Goldstein remarks that in music cases the
"typically more successful route to proving access requires the plaintiff to show that
its work was widely disseminated through sales of sheet music, records, and radio
performances." 2 Goldstein, S 8.3.1.1, at 91. Nimmer, however, cautioned that
"[c]oncrete cases will pose difficult ju *dgments as to where along the access
spectrum a given exploitation falls." 4 Nimmer, S 13.02[A], at 13-22.
Proof of widespread dissemination is sometimes accompanied by a theory that

copyright infringement of a popular song was subconscious. Subconscious copying
has been accepted since Learned Hand embraced it in a 1924 music infringement
case: "Everything registers somewhere in our memories, and no one can tell what
[483] may evoke it . . . . Once it appears that another has in fact used the copyright
as the source of this production, he has invaded the author's rights. It is no excuse
that in so doing his memory has played him a trick." Fred Fisher, Inc. v.
Dillingham, 298 F. 145, 147-48 (S.D.N.Y. 1924). In Fred Fisher, Judge Hand found
that the similarities between the songs "amount[ed] to identity" and that the
infringement had occurred "probably unconsciously, what he had certainly often
heard only a short time before." Id. at 147.
In modern cases, however, the theory of subconscious copying has been applied to
songs that are more remote in time. ABKCO Music, Inc v. Harrisongs Music, Ltd.,
722 F.2d 988 (2d Cir. 1983) is the most prominent example. In ABKCO, the Second
Circuit affirmed a jury's verdict that former Beatle George Harrison, in writing the
song "My Sweet Lord," subconsciously copied The Chiffons' "He's So Fine," which
was released six years earlier. See id. at 997, 999. Harrison admitted hearing "He's
So Fine" in 1963, when it was number one on the Billboard charts in the United
States for five weeks and one of the top 30 hits in England for seven weeks. See id.
at 998. The court found:"the evidence, standing alone, `by no means compels the
conclusion that there was access . . . it does not compel the conclusion that there
was not.' " Id. (quoting Heim v. Universal Pictures Co., 154 F.2d 480, 487 (2d Cir.
***
Image of the statuette available here: http://coolcopyright.com/contents/chapter-4/mazer-v-stein [#1350526]
ChapterNumber:
220
1946)). In ABKCO, however, the court found that "the similarity was so striking
and where access was found, the remoteness of that access provides no basis for
reversal." Id. Furthermore, "the mere lapse of a considerable period of time between
the moment of access and the creation of defendant's work does not preclude a
finding of copying." 4 Nimmer, S 13.02[A], at 13-20 (citing ABKCO, 722 F.2d at
997-98).
The Isley Brothers' access argument was based on a theory of widespread

dissemination and subconscious copying. They presented evidence supporting four
principal ways that Bolton and Goldmark could have had access to the Isley
Brothers' "Love is a Wonderful Thing":
(1) Bolton grew up listening to groups such as the Isley Brothers and singing their
songs. In 1966, Bolton and Goldmark were 13 and 15, respectively, growing up in
Connecticut. Bolton testified that he had been listening to rhythm and blues music
by black singers since he was 10 or 11,"appreciated a lot of Black singers," and as a
youth was the lead singer in a band that performed "covers" of popular songs by
black singers. Bolton also testified that his brother had a "pretty good record
collection."
(2) Three disk jockeys testified that the Isley Brothers' song was widely
disseminated on radio and television stations where Bolton and Goldmark grew up.
First, Jerry Blavitt testified that the Isley Brothers' "Love is a Wonderful Thing"
was played five or six times during a 13-week period on the television show, "The
Discophonic Scene," which he said aired in Philadelphia, New York, and Hartford-
New Haven. Blavitt also testified that he played the song two to three times a week
as a disk jockey in Philadelphia and that the station is still playing the song today.
Second, Earl Rodney Jones testified that he played the song a minimum of four
times a day during an eight to 14 to 24 week period on WVON radio in Chicago,
and that the station is still playing the song today. Finally, Jerry Bledsoe testified
that he played the song on WUFO radio in Buffalo, and WWRL radio in New York
was playing the song in New York in 1967 when he went there. Bledsoe also
testified that he played the song twice on a television show, "Soul," which aired in
New York and probably in New Haven, Connecticut, where Bolton lived.
(3) Bolton confessed to being a huge fan of the Isley Brothers and a collector of
their music. Ronald Isley testified that when Bolton saw Isley at the Lou Rawls
United Negro College Fund Benefit concert in 1988, Bolton said,"I know this guy.
[484] I go back with him. I have all his stuff. " Angela Winbush, Isley's wife,
testified about that meeting that Bolton said, "This man needs no introduction. I
know everything he's done."
(4) Bolton wondered if he and Goldmark were copying a song by another famous
soul singer. Bolton produced a work tape attempting to show that he and Goldmark
independently created their version of "Love Is a Wonderful Thing." On that tape of
their recording session, Bolton asked Goldmark if the song they were composing
was Marvin Gaye's "Some Kind of Wonderful."[1] The district court, in affirming
the jury's verdict, wrote about Bolton's Marvin Gaye remark:
This statement suggests that Bolton was contemplating the possibility that
the work he and Goldmark were creating, or at least a portion of it,
belonged to someone else, but that Bolton wasn't sure who it belonged to.
A reasonable jury can infer that Bolton mistakenly attributed the work to
221
Marvin Gaye, when in reality Bolton was subconsciously drawing on

Plaintiff's song.
The appellants contend that the Isley Brothers' theory of access amounts to a
"twenty-five-years-after-the-factsubconscious copying claim." Indeed, this is a
more attenuated case of reasonable access and subconscious copying than ABKCO.
In this case, the appellants never admitted hearing the Isley Brothers' "Love is a
Wonderful Thing. " That song never topped the Billboard charts or even made the
top 100 for a single week. The song was not released on an album or compact disc
until 1991, a year after Bolton and Goldmark wrote their song. Nor did the Isley
Brothers ever claim that Bolton's and Goldmark's song is so "strikingly similar" to
the Isley Brothers' that proof of access is presumed and need not be proven.
Despite the weaknesses of the Isley Brothers' theory of reasonable access, the
appellants had a full opportunity to present their case to the jury. Three rhythm and
blues experts (including legendary Motown songwriter Lamont Dozier of Holland-
Dozier-Holland fame) testified that they never heard of the Isley Brothers' "Love is
a Wonderful Thing." Furthermore, Bolton produced copies of "TV Guide" from
1966 suggesting that the television shows playing the song never aired in
Connecticut. Bolton also pointed out that 129 songs called "Love is a Wonderful
Thing" are registered with the Copyright Office, 85 of them before 1964.
The Isley Brothers' reasonable access arguments are not without merit. Teenagers
are generally avid music listeners. It is entirely plausible that two Connecticut
teenagers obsessed with rhythm and blues music could remember an Isley Brothers'
song that was played on the radio and television for a few weeks, and
subconsciously copy it twenty years later. Furthermore, Ronald Isley testified that
when they met, Bolton said, "I have all his stuff." Finally, as the district court
pointed out, Bolton's remark about Marvin Gaye and "Some Kind of Wonderful"
indicates that Bolton believed he may have been copying someone else's song.
Finally, with regard to access, we are mindful of Judge Frank's words of caution in
Arnstein v. Porter: "The judge characterized plaintiff's story as `fantastic'; and in
the light of the references in his opinion to defendant's deposition, the judge
obviously accepted the defendant's denial of access and copying . . . . [Y]et
plaintiff's credibility, even as to those improbabilities, should be left to the jury."
Arnstein, 154 F.2d at 469. In this case, Judge Baird heeded Judge Frank's
admonition:
[T]his Court is not in a position to find that the only conclusion that a
reasonable jury could have reached is that [485] Defendants did not have
access to Plaintiff's song. One must remember that the issue this Court
must address is not whether Plaintiff has proven access by a
preponderance of evidence, but whether reasonable minds could find that
Defendants had a reasonable opportunity to have heard Plaintiff's song
before they created their own song.
Although we might not reach the same conclusion as the jury regarding access, we
find that the jury's conclusion about access is supported by substantial evidence.
We are not establishing a new standard for access in copyright cases; we are merely
saying that we will not disturb the jury's factual and credibility determinations on
this issue.
ChapterNumber:
222
B. Substantial Similarity
Under our case law, substantial similarity is inextricably linked to the issue of
access. In what is known as the "inverse ratio rule," we "require a lower standard of
proof of substantial similarity when a high degree of access is shown." Smith, 84
F.3d at 1218 (citing Shaw v. Lindheim, 919 F.2d 1353, 1361-62 (9th Cir. 1990);
Krofft, 562 F.2d at 1172). Furthermore, in the absence of any proof of access, a
copyright plaintiff can still make out a case of infringement by showing that the
songs were "strikingly similar." See Smith, 84 F.3d at 1220; Baxter v. MCA, Inc.,
812 F.2d 421, 423, 424 n.2 (9th Cir. 1987).
Proof of the substantial similarity is satisfied by a twopart test of extrinsic

similarity and intrinsic similarity. See Krofft, 562 F.2d at 1164. Initially, the
extrinsic test requires that the plaintiff identify concrete elements based on
objective criteria. See Smith, 84 F.3d at 1218; Shaw, 919 F.2d at 1356. The
extrinsic test often requires analytical dissection of a work and expert testimony.
See Apple Computer, Inc v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994).
Once the extrinsic test is satisfied, the factfinder applies the intrinsic test. The
intrinsic test is subjective and asks "whether the ordinary, reasonable person would
find the total concept and feel of the works to be substantially similar." Pasillas v.
McDonald's Corp., 927 F.2d 440, 442 (9th Cir. 1991) (internal quotations omitted).
We will not second-guess the jury's application of the intrinsic test. See Krofft 562
F.3d at 1166 ("Since the intrinsic test for expression is uniquely suited for
determination by the trier of fact, this court must be reluctant to reverse it.")
(citations omitted). Furthermore, we will not reverse factual determinations
regarding the extrinsic test absent a clearly erroneous application of the law. See id.
It is well settled that a jury may find a combination of unprotectible elements to be
protectible under the extrinsic test because " `the over-all impact and effect indicate
substantial appropriation.' " Id. at 1169 (quoting Malkin v. Dubinsky, 146 F. Supp.
111, 114 (S.D.N.Y. 1956)).
1. Evidence of Substantial Similarity

Bolton and Goldmark argue that there was insufficient evidence of substantial
similarity because the Isley Brothers' expert musicologist, Dr. Gerald Eskelin,
failed to show that there was copying of a combination of unprotectible elements.
On the contrary, Eskelin testified that the two songs shared a combination of five
unprotectible elements: (1) the title hook phrase (including the lyric, rhythm, and
pitch); (2) the shifted cadence; (3) the instrumental figures; (4) the verse/chorus
relationship; and (5) the fade ending. Although the appellants presented testimony
from their own expert musicologist, Anthony Ricigliano, he conceded that there
were similarities between the two songs and that he had not found the combination
of unprotectible elements in the Isley Brothers' song "anywhere in the prior art."
The jury heard testimony from both of these experts and "found infringement based
on a unique compilation of those elements." We refuse to interfere with the jury's
credibility determination, nor do we find [486] that the jury's finding of substantial
similarity was clearly erroneous.
223
2. Independent Creation
Bolton and Goldmark also contend that their witnesses rebutted the Isley Brothers'
prima facie case of copyright infringement with evidence of independent creation.
By establishing reasonable access and substantial similarity, a copyright plaintiff
creates a presumption of copying. The burden shifts to the defendant to rebut that
presumption through proof of independent creation. See[ … ]
appellants' case of independent creation hinges on three factors: the work tape
demonstrating how Bolton and Goldmark created their song, Bolton and Goldmark's
history of songwriting, and testimony that their arranger, Walter Afanasieff,
contributed two of five unprotectible elements that they allegedly copied. The jury,
however, heard the testimony of Bolton, Goldmark, Afanasieff, and Ricigliano
about independent creation. The work tape revealed evidence that Bolton may have
subconsciously copied a song that he believed to be written by Marvin Gaye.
Bolton and Goldmark's history of songwriting presents no direct evidence about this
case. And Afanasieff's contributions to Bolton and Goldmark's song were described
by the appellants' own expert as "very common." Once again, we refuse to disturb
the jury's determination about independent creation. The substantial evidence of
copying based on access and substantial similarity was such that a reasonable juror
could reject this defense.
3. Inverse-Ratio Rule
Although this may be a weak case of access and a circumstantial case of substantial
similarity, neither issue warrants reversal of the jury's verdict. An amicus brief on
behalf of the recording and motion picture industries warns against watering down
the requirements for musical copyright infringement. This case presents no such
danger. The Ninth Circuit's inverse-ratio rule requires a lesser showing of
substantial similarity if there is a strong showing of access. See[ … ]this case, there
was a weak showing of access. We have never held, however, that the inverse ratio
rule says a weak showing of access requires a stronger showing of substantial
similarity. Nor are we redefining the test of substantial similarity here; we merely
find that there was substantial evidence from which the jury could find access and
substantial similarity in this case.
C. [ … ]
IRMED.
[1] Marvin Gaye also referred to the song's chorus, "She's some kind of wonderful,"
in his song, "Too Busy Thinking About My Baby." See Marvin Gaye, Too Busy
Thinking About My Baby, on MPG, (Motown 1969).

ChapterNumber:
224
7.1.2
Steinberg v. Columbia Pictures Industries, Inc.


of New York
663 F. Supp. 706
Nos. 84 Civ. 9208 (LLS), 87 Civ. 1750 (LLS)
1987-06-24
663 F.Supp. 706 (1987)
Saul STEINBERG, Plaintiff,
v.
COLUMBIA PICTURES INDUSTRIES, INC.; RCA
Corporation; Diener Hauser Bates Co., Inc.; Columbia
Pictures International Corporation; Columbia Pictures
Home Video, Inc.; RCA International Audio-Visuals,
Inc.; CPT Holdings, Inc.; Gold Col Productions, Inc.;
RCA/Columbia Pictures Home Video; RCA/Columbia
Pictures International Video; the New York Times
Company; New York News, Inc.; Newsday, Inc.; News
Group Publications, Inc.; the Times Mirror Company;
the Hearst Corporation; Chicago Tribune Company;
Field Enterprises, Inc.; the Washington Post Co.; A.H.
Belo Corporation; Globe Newspaper Company;
Philadelphia Newspapers, Inc.; A.S. Abell Publishing
Co.; and Knight-Ridder Newspapers, Inc., Defendants.
Saul STEINBERG, Plaintiff,
v.
COLUMBIA-DELPHI PRODUCTIONS, Columbia-
Delphi Productions II, Delphi Film Associates, Delphi
Film Associates II, News Group Boston, Inc., and
News Group Chicago, Inc., Defendants.
[…]

225
June 24, 1987.
[…]
STANTON, District Judge.

In these actions for copyright infringement, plaintiff Saul Steinberg is suing the
producers, promoters, distributors and advertisers of the movie "Moscow on the
Hudson" ("Moscow"). Steinberg is an artist whose fame derives in part from
cartoons and illustrations he has drawn for The New Yorker magazine. Defendant
Columbia Pictures Industries, Inc. (Columbia) is in the business of producing,
promoting and distributing motion pictures, including "Moscow." Defendant RCA
Corporation (RCA) was involved with Columbia in promoting and distributing the
home video version of "Moscow," and defendant Diener Hauser Bates Co. (DHB)
acted as an advertising agent for "Moscow." The other defendants were added to the
complaint pursuant to a memorandum decision of this court dated November 17,
1986. These defendants fall into two categories: (1) affiliates of Columbia and RCA
that were involved in the distribution of "Moscow" here and/or abroad, and (2)
owners of major newspapers that published the allegedly infringing advertisement.
The defendants in the second-captioned action either are joint ventures affiliated
with Columbia or are newspapers that published the allegedly infringing
advertisement for "Moscow." This action was consolidated with the first by
stipulation dated April 3, 1987.
Plaintiff alleges that defendants' promotional poster for "Moscow" infringes his
copyright on an illustration that he drew [709] for The New Yorker and that
appeared on the cover of the March 29, 1976 issue of the magazine, in violation of
17 U.S.C. §§ 101-810. Defendants deny this allegation and assert the affirmative
defenses of fair use as a parody, estoppel and laches.
Defendants have moved, and plaintiff has cross-moved, for summary judgment. For
the reasons set forth below, this court rejects defendants' asserted defenses and
grants summary judgment on the issue of copying to plaintiff.
I
To grant summary judgment, Fed.R. Civ.P. 56 requires a court to find that "there is
no genuine issue as to any material fact and that the moving party is entitled to a
judgment as a matter of law." In reaching its decision, the court must "assess
whether there are any factual issues to be tried, while resolving ambiguities and
drawing reasonable inferences against the moving party." [ … ]
Summary judgment is often disfavored in copyright cases, for courts are generally
reluctant to make subjective comparisons and determinations. Hoehling v.
Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir.1980), citing Arnstein v.
Porter, 154 F.2d 464, 474 (2d Cir.1946). Recently, however, this circuit has
"recognized that a court may determine non-infringement as a matter of law on a
motion for summary judgment." [ … ]"When the evidence is so overwhelming that
a court would be justified in ordering a directed verdict at trial, it is proper to grant
summary judgment." Silverman v. CBS Inc., 632 F.Supp. 1344, 1352
ChapterNumber:
226
(S.D.N.Y.1986) (awarding summary judgment to defendant on counterclaim of

copyright infringement).
The voluminous submissions that accompanied these cross-motions leave no factual

issues concerning which further evidence is likely to be presented at a trial.
Moreover, the factual determinations necessary to this decision do not involve
conflicts in testimony that would depend for their resolution on an assessment of
witness credibility. In addition, this case is different from most copyright
infringement actions, in which it is preferable to leave the determination of the
issue to a jury: each party has implied that its case is complete by moving for
summary judgment, and as neither side has requested a jury, the court would be the
trier of fact at trial. Finally, the interests of judicial economy are also served by
deciding the case at its present stage. Summary judgment is therefore appropriate.
II
The essential facts are not disputed by the parties despite their disagreements on
nonessential matters. On March 29, 1976, The New Yorker published as a cover
illustration the work at issue in this suit, widely known as a parochial New Yorker's
view of the world. The magazine registered this illustration with the United States
Copyright Office and subsequently assigned the copyright to Steinberg.
Approximately three months later, plaintiff and The New Yorker entered into an
agreement to print and sell a certain number of posters of the cover illustration.
It is undisputed that unauthorized duplications of the poster were made and

distributed by unknown persons, although the parties disagree on the extent to
which plaintiff attempted to prevent the distribution of those counterfeits. Plaintiff
has also conceded that numerous posters have been created and published depicting
other localities in the same manner that he depicted New York in his illustration.
These facts, however, are irrelevant to the merits of this case, which concerns only
the relationship [710] between plaintiff's and defendants' illustrations.
Defendants' illustration was created to advertise the movie "Moscow on the

Hudson," which recounts the adventures of a Muscovite who defects in New York.
In designing this illustration, Columbia's executive art director, Kevin Nolan, has
admitted that he specifically referred to Steinberg's poster, and indeed, that he
purchased it and hung it, among others, in his office. Furthermore, Nolan explicitly
directed the outside artist whom he retained to execute his design, Craig Nelson, to
use Steinberg's poster to achieve a more recognizably New York look. Indeed,
Nelson acknowledged having used the facade of one particular edifice, at Nolan's
suggestion that it would render his drawing more "New York-ish." Curtis Affidavit
¶ 28(c). While the two buildings are not identical, they are so similar that it is
impossible, especially in view of the artist's testimony, not to find that defendants'
impermissibly copied plaintiff's. [1]
To decide the issue of infringement, it is necessary to consider the posters

themselves. Steinberg's illustration presents a bird's eye view across a portion of the
western edge of Manhattan, past the Hudson River and a telescoped version of the
rest of the United States and the Pacific Ocean, to a red strip of horizon, beneath
which are three flat land masses labeled China, Japan and Russia. The name of the
magazine, in The New Yorker's usual typeface, occupies the top fifth of the poster,
beneath a thin band of blue wash representing a stylized sky.
227
The parts of the poster beyond New York are minimalized, to symbolize a New
Yorker's myopic view of the centrality of his city to the world. The entire United
States west of the Hudson River, for example, is reduced to a brown strip labeled
"Jersey," together with a light green trapezoid with a few rudimentary rock
outcroppings and the names of only seven cities and two states scattered across it.
The few blocks of Manhattan, by contrast, are depicted and colored in detail. The
four square blocks of the city, which occupy the whole lower half of the poster,
include numerous buildings, pedestrians and cars, as well as parking lots and lamp
posts, with water towers atop a few of the buildings. The whimsical, sketchy style
and spiky lettering are recognizable as Steinberg's.
The "Moscow" illustration depicts the three main characters of the film on the
lower third of their poster, superimposed on a bird's eye view of New York City,
and continues eastward across Manhattan and the Atlantic Ocean, past a
rudimentary evocation of Europe, to a clump of recognizably Russian-styled
buildings on the horizon, labeled "Moscow." The movie credits appear over the
lower portion of the characters. The central part of the poster depicts approximately
four New York city blocks, with fairly detailed buildings, pedestrians and vehicles,
a parking lot, and some water towers and lamp posts. Columbia's artist added a few
New York landmarks at apparently random places in his illustration, apparently to
render the locale more easily recognizable. Beyond the blue strip labeled "Atlantic
Ocean," Europe is represented by London, Paris and Rome, each anchored by a
single landmark (although the landmark used for Rome is the Leaning Tower of
Pisa).
The horizon behind Moscow is delineated by a red crayoned strip, above which are
the title of the movie and a brief textual introduction to the plot. The poster is
crowned by a thin strip of blue wash, apparently a stylization of the sky. This poster
is executed in a blend of styles: the three characters, whose likenesses were copied
from a photograph, have realistic faces and somewhat sketchy clothing, and the city
blocks are drawn in a fairly detailed but sketchy style. The lettering on the drawing
is spiky, in block-printed handwritten capital letters substantially identical to
plaintiff's, while the printed texts at the top and bottom of the poster are in the
[711] typeface commonly associated with The New Yorker magazine. [2]
III
To succeed in a copyright infringement action, a plaintiff must prove ownership of
the copyright and copying by the defendant. [ … ] There is no substantial dispute
concerning plaintiff's ownership of a valid copyright in his illustration. Therefore,
in order to prevail on liability, plaintiff need establish only the second element of
the cause of action.
"Because of the inherent difficulty in obtaining direct evidence of copying, it is

usually proved by circumstantial evidence of access to the copyrighted work and
substantial similarities as to protectible material in the two works." [ … ] "Of
course, if there are no similarities, no amount of evidence of access will suffice to
prove copying." Arnstein v. Porter, 154 F.2d at 468. See also Novelty Textile Mills,
558 F.2d at 1092 n. 2.
Defendants' access to plaintiff's illustration is established beyond peradventure.

Therefore, the sole issue remaining with respect to liability is whether there is such
ChapterNumber:
228
substantial similarity between the copyrighted and accused works as to establish a

violation of plaintiff's copyright. The central issue of "substantial similarity," which
can be considered a close question of fact, may also validly be decided as a
question of law. [ … ]
"Substantial similarity" is an elusive concept. This circuit has recently recognized

that
[t]he "substantial similarity" that supports an inference of copying

sufficient to establish infringement of a copyright is not a concept familiar
to the public at large. It is a term to be used in a courtroom to strike a
delicate balance between the protection to which authors are entitled under
an act of Congress and the freedom that exists for all others to create their
works outside the area protected by infringement.
Warner Bros., 720 F.2d at 245.
The definition of "substantial similarity" in this circuit is "whether an average lay

observer would recognize the alleged copy as having been appropriated from the
copyrighted work." Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d
Cir.1966); Silverman v. CBS, Inc., 632 F.Supp. at 1351-52. A plaintiff need no
longer meet the severe "ordinary observer" test established by Judge Learned Hand
in Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir.1960).
Uneeda Doll Co., Inc. v. Regent Baby Products Corp., 355 F.Supp. 438, 450
(E.D.N.Y.1972). Under Judge Hand's formulation, there would be substantial
similarity only where "the ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them, and regard their aesthetic appeal as
the same." 274 F.2d at 489.
Moreover, it is now recognized that "[t]he copying need not be of every detail so
long as the copy is substantially similar to the copyrighted work." [ … ]
In determining whether there is substantial similarity between two works, it is

crucial to distinguish between an idea and its expression. It is an axiom of copyright
law, established in the case law and since codified at 17 U.S.C. § 102(b), that only
the [712] particular expression of an idea is protectible, while the idea itself is not. [
…]
"The idea/expression distinction, although an imprecise tool, has not been

abandoned because we have as yet discovered no better way to reconcile the two
competing societal interests that provide the rationale for the granting of and
restrictions on copyright protection," namely, both rewarding individual ingenuity,
and nevertheless allowing progress and improvements based on the same subject
matter by others than the original author. Durham Industries, 630 F.2d at 912,
quoting Reyher, 533 F.2d at 90.
There is no dispute that defendants cannot be held liable for using the idea of a map
of the world from an egocentrically myopic perspective. No rigid principle has been
developed, however, to ascertain when one has gone beyond the idea to the
expression, and "[d]ecisions must therefore inevitably be ad hoc." Peter Pan
Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) (L. Hand,
J.). As Judge Frankel once observed, "Good eyes and common sense may be as
useful as deep study of reported and unreported cases, which themselves are tied to
highly particularized facts." [ … ]
229
Even at first glance, one can see the striking stylistic relationship between the
posters, and since style is one ingredient of "expression," this relationship is
significant. Defendants' illustration was executed in the sketchy, whimsical style
that has become one of Steinberg's hallmarks. Both illustrations represent a bird's
eye view across the edge of Manhattan and a river bordering New York City to the
world beyond. Both depict approximately four city blocks in detail and become
increasingly minimalist as the design recedes into the background. Both use the
device of a narrow band of blue wash across the top of the poster to represent the
sky, and both delineate the horizon with a band of primary red. [3]
The strongest similarity is evident in the rendering of the New York City blocks.
Both artists chose a vantage point that looks directly down a wide two-way cross
street that intersects two avenues before reaching a river. Despite defendants'
protestations, this is not an inevitable way of depicting blocks in a city with a grid-
like street system, particularly since most New York City cross streets are one-way.
Since even a photograph may be copyrighted because "no photograph, however
simple, can be unaffected by the personal influence of the author," Time Inc. v.
Bernard Geis Assoc., 293 F.Supp. 130, 141 (S.D.N.Y. 1968), quoting Bleistein,
supra, one can hardly gainsay the right of an artist to protect his choice of
perspective and layout in a drawing, especially in conjunction with the overall
concept and individual details. Indeed, the fact that defendants changed the names
of the streets while retaining the same graphic depiction weakens their case: had
they intended their illustration realistically to depict the streets labeled on the
poster, their four city blocks would not so closely resemble plaintiff's four city
blocks. Moreover, their argument that they intended the jumble of streets and
landmarks and buildings to symbolize their Muscovite protagonist's confusion in a
new city does not detract from the strong similarity between their poster and
Steinberg's.
[713] While not all of the details are identical, many of them could be mistaken for
one another; for example, the depiction of the water towers, and the cars, and the
red sign above a parking lot, and even many of the individual buildings. The
shapes, windows, and configurations of various edifices are substantially similar.
The ornaments, facades and details of Steinberg's buildings appear in defendants',
although occasionally at other locations. In this context, it is significant that
Steinberg did not depict any buildings actually erected in New York; rather, he was
inspired by the general appearance of the structures on the West Side of Manhattan
to create his own New York-ish structures. Thus, the similarity between the
buildings depicted in the "Moscow" and Steinberg posters cannot be explained by
an assertion that the artists happened to choose the same buildings to draw. The
close similarity can be explained only by the defendants' artist having copied the
plaintiff's work. Similarly, the locations and size, the errors and anomalies of
Steinberg's shadows and streetlight, are meticulously imitated.
In addition, the Columbia artist's use of the childlike, spiky block print that has
become one of Steinberg's hallmarks to letter the names of the streets in the
"Moscow" poster can be explained only as copying. There is no inherent
justification for using this style of lettering to label New York City streets as it is
associated with New York only through Steinberg's poster.
While defendants' poster shows the city of Moscow on the horizon in far greater
detail than anything is depicted in the background of plaintiff's illustration, this fact
alone cannot alter the conclusion. "Substantial similarity" does not require identity,
and "duplication or near identity is not necessary to establish infringement." Krofft,
ChapterNumber:
230
562 F.2d at 1167. Neither the depiction of Moscow, nor the eastward perspective,
nor the presence of randomly scattered New York City landmarks in defendants'
poster suffices to eliminate the substantial similarity between the posters. As Judge
Learned Hand wrote, "no plagiarist can excuse the wrong by showing how much of
his work he did not pirate." Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49,
56 (2d Cir.), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936).
Defendants argue that their poster could not infringe plaintiff's copyright because
only a small proportion of its design could possibly be considered similar. This
argument is both factually and legally without merit. "[A] copyright infringement
may occur by reason of a substantial similarity that involves only a small portion of
each work." Burroughs v. Metro-Goldwyn-Mayer, Inc., 683 F.2d 610, 624 n. 14 (2d
Cir.1982). Moreover, this case involves the entire protected work and an
iconographically, as well as proportionately, significant portion of the allegedly
infringing work. [ … ]
The process by which defendants' poster was created also undermines this
argument. The "map," that is, the portion about which plaintiff is complaining, was
designed separately from the rest of the poster. The likenesses of the three main
characters, which were copied from a photograph, and the blocks of text were
superimposed on the completed map. Nelson Deposition at 21-22; Nolan Deposition
at 28.
I also reject defendants' argument that any similarities between the works are
unprotectible scenes a faire, or "incidents, characters or settings which, as a
practical matter, are indispensable or standard in the treatment of a given topic."
Walker, 615 F.Supp. at 436. See also Reyher, 533 F.2d at 92. It is undeniable that a
drawing of New York City blocks could be expected to include buildings,
pedestrians, vehicles, lampposts and water towers. Plaintiff, however, does not
complain of defendants' mere use of these elements in their poster; rather, his
complaint is that defendants [714] copied his expression of those elements of a
street scene.
While evidence of independent creation by the defendants would rebut plaintiff's

prima facie case, "the absence of any countervailing evidence of creation
independent of the copyrighted source may well render clearly erroneous a finding
that there was not copying." [ … ]
Moreover, it is generally recognized that "... since a very high degree of similarity
is required in order to dispense with proof of access, it must logically follow that
where proof of access is offered, the required degree of similarity may be somewhat
less than would be necessary in the absence of such proof." 2 Nimmer § 143.4 at
634, quoted in Krofft, 562 F.2d at 1172. As defendants have conceded access to
plaintiff's copyrighted illustration, a somewhat lesser degree of similarity suffices
to establish a copyright infringement than might otherwise be required. Here,
however, the demonstrable similarities are such that proof of access, although in
fact conceded, is almost unnecessary.
IV
I find meritless defendants' assertion that, to the extent that the "Moscow" poster
evokes Steinberg's, that evocation is justified under the parody branch of the "fair
231
use" doctrine, codified at 17 U.S.C. § 107. As this circuit has held, the copyrighted
work must be "at least in part an object of the parody," MCA, Inc. v. Wilson, 677
F.2d 180, 185 (2d Cir.1981). The record does not support a claim that defendants
intended to satirize plaintiff's illustration; indeed, the deposition testimony of
Columbia's executive art director tends to contradict such a claim. Moreover, an
assertion that defendants consciously parodied the idea of a parochial view of the
world is immaterial: ideas are not protected by copyright, and the infringement
alleged is of Steinberg's particular expression of that idea. Defendants' variation on
the visual joke of plaintiff's illustration does not, without an element of humor
aimed at some aspect of the illustration itself, render it a parody and therefore a fair
use of plaintiff's work.
In codifying the case law on determining whether one work constitutes a fair use of
another, Congress instructed the courts to consider certain factors, the first of which
is whether the intended use of the allegedly infringing work is "of a commercial
nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). As the Second
Circuit said in a different artistic context, "We are not prepared to hold that a
commercial [artist] can plagiarize a ... copyrighted [work], substitute [certain
elements] of his own, [produce] it for commercial gain, and then escape liability by
calling the end result a parody or satire on the mores of society." MCA, Inc., 677
F.2d at 185.
In analyzing the commercial or noncommercial nature of the "Moscow" poster, it is

useful to distinguish between two conceptually different situations: advertising
material that promotes a parody of a copyrighted work, and advertising material
that itself infringes a copyright. In the first case, the fact that the advertisement uses
elements of the copyrighted work does not necessarily mean that it infringes the
copyright, if the product that it advertises constitutes a fair use of the copyrighted
work. See, e.g., Warner Bros., 720 F.2d at 242-44 (promotional broadcasts for
television series legally parodying the Superman comic strip character did not
infringe copyright in Superman character).
In the second case, the work being advertised bears no relationship to the
copyrighted work, but the advertisement itself infringes the copyright. In such a
case, the owners of the copyright can prevent the advertisement from being used.
As the Second Circuit has said, "[n]o matter how well known a copyrighted phrase
becomes, its author is entitled to guard against its appropriation to promote the sale
of commercial products." Warner Bros., 720 F.2d at 242. [ … ]
This situation fits the second case. Neither the "Moscow" movie nor the poster was
designed to be a parody of the Steinberg illustration. The poster merely borrowed
numerous elements from Steinberg to create an appealing advertisement to promote
an unrelated commercial product, the movie. No parody of the illustration is
involved, and defendants are not entitled to the protection of the parody branch of
the fair use doctrine.
The other factors mandated by 17 U.S.C. § 107 do nothing to mitigate this

determination. The copyrighted work at issue is an artistic creation, 17 U.S.C. §
107(2), a very substantial portion of which was appropriated in the defendants'
work, 17 U.S.C. § 107(3). As for the value of the copyrighted work, 17 U.S.C. §
107(4), plaintiff submitted testimony to the court to show that his reputation was
injured by having the public believe that he voluntarily lent his work to a profit-
making enterprise.
ChapterNumber:
232
V
In their motion, defendants raised the affirmative defenses of estoppel and laches.
Although Fed.R.Civ.P. 8(c) generally requires affirmative defenses to be pleaded,
courts have been more lenient in the context of motions for summary judgment.
"[A]bsent prejudice to the plaintiff, a defendant may raise an affirmative defense in
a motion for summary judgment for the first time." [ … ]It is therefore appropriate
for this court to consider these defenses on the merits.
Defendants base their assertions of these equitable defenses on the following

factual claims: (1) plaintiff's alleged "deliberate inaction" for eight years in the face
of numerous counterfeits of his poster and adaptations of his idea to various other
localities; (2) plaintiff's alleged failure to act in response to the newspaper
advertisements that appeared to promote "Moscow"; and (3) defendants' assertion
that Steinberg waited six months before even complaining to Columbia about their
alleged infringement of his copyright on the poster, which defendants claim in their
brief was a tactic on plaintiff's part to maximize the damages he hoped to receive.
The record, however, does not support defendants' claims. First, Steinberg
specifically requested that The New Yorker magazine attempt to identify the sources
of the counterfeit posters and prevent their continued distribution. As for the so-
called adaptations of Steinberg's idea, there is no evidence that they infringed his
copyright or that anyone ever believed that they did. As plaintiff freely and
necessarily admits, the law does not protect an idea, but only the specific
expression of that idea. The examples that defendants use to support their defense
can at most be considered derivative of Steinberg's idea; none is a close copy of the
poster itself, as defendants' is. Finally, defendants' last two assertions are rebutted
by evidence that The New Yorker protested to The New York Times on plaintiff's
behalf and at his request when "Moscow" opened, and that Columbia learned of this
protest only a few weeks later.
Moreover, even were defendants' factual assertions borne out by the record, their
equitable defenses would have to be rejected because they have failed to establish
the elements of either estoppel or laches.
"A party seeking to invoke the doctrine of estoppel must plead and prove each of
the essential elements: (1) a representation of fact ...; (2) rightful reliance thereon;
and (3) injury or damage ... resulting from denial by the party making the
representation." [ … ]
Defendants have not established even the first of these elements. They argue that
plaintiff's alleged silence [716] during the course of their advertisement campaign
constitutes a sufficient representation of his acquiescence to meet the first
requirement of the doctrine. As noted above, however, plaintiff did not remain
silent, and the record shows that defendants, despite their awareness of his
objections, continued to promote the film with the same advertisements and
subsequently released a videocassette version of "Moscow" using the same
promotional design. [ … ] Defendants overlook, moreover, that silence or inaction,
in the absence of any duty or relationship between the parties, cannot give rise to an
estoppel. Whiting Corp. v. Home Ins. Co., 516 F.Supp. 643, 656 (S.D.N.Y.1981).
Cf. Columbia Broadcasting System, Inc. v. Stokely-Van Camp, Inc., 522 F.2d 369,
378 (2d Cir.1975). No such duty existed here.
233
Defendants have likewise failed to establish the defense of laches. The party
asserting laches must show that the opposing party "did not assert her or their rights
diligently, and that such asserted lack of diligence ... resulted in prejudice to them."
[ … ] In Lottie Joplin, the Second Circuit held that a gap of approximately half a
year between the publication of the allegedly infringing work and the institution of
the lawsuit did not constitute a delay sufficient to establish a claim of laches. In this
case, defendants were informed within weeks of plaintiff's disapproval of their
poster; moreover, they have presented no evidence that, even if they had
acknowledged any awareness of plaintiff's reaction, they would in any way have
modified their subsequent actions. Consequently, they have failed to prove
prejudice to themselves.
VI
For the reasons set out above, summary judgment is granted to plaintiffs as to
copying.
[…]
[1] Nolan claimed also to have been inspired by some of the posters that were
inspired by Steinberg's; such secondary inspiration, however, is irrelevant to
whether or not the "Moscow" poster infringes plaintiff's copyright by having
impermissibly copied it.
[2] The typeface is not a subject of copyright, but the similarity reinforces the
impression that defendants copied plaintiff's illustration.
[3] Defendants claim that since this use of thin bands of primary colors is a
traditional Japanese technique, their adoption of it cannot infringe Steinberg's
copyright. This argument ignores the principle that while "[o]thers are free to copy
the original ... [t]hey are not free to copy the copy." Bleistein v. Donaldson
Lithographing Co., 188 U.S. 239, 250, 23 S.Ct. 298, 300, 47 L.Ed. 460 (1903)
(Holmes, J.). Cf. Dave Grossman Designs, Inc. v. Bortin, 347 F.Supp. 1150, 1156-
57 (N.D.Ill.1972) (an artist may use the same subject and style as another "so long
as the second artist does not substantially copy [the first artist's] specific expression
of his idea.")

7.1.3
Rentmeester v. Nike, Inc. (9th Cir. 2018)

http://ccb.ff6.mwp.accessdomain.com/C/2018_Rentmeester.pdf

ChapterNumber:
234
7.1.4
Mannion v. Coors Brewing Co.


of New York
377 F. Supp. 2d 444
No. 04 Civ. 1187(LAK)
2005-07-21
377 F.Supp.2d 444
Jonathan MANNION, Plaintiff,
v.
COORS BREWING COMPANY and Carol H.
Williams Advertising, Defendants.
[…]
July 21, 2005.
[…]
KAPLAN, District Judge.
The parties dispute whether a photograph used in billboard advertisements for [447]
Coors Light beer infringes the plaintiff's copyright in a photograph of a basketball
star. The defendants almost certainly imitated the plaintiff's photograph. The major
question is whether and to what extent what was copied is protected. The case
requires the Court to consider the nature of copyright protection in photographs.
The matter is before the Court on cross motions for summary judgment.
Facts
Jonathan Mannion is a freelance photographer who specializes in portraits of
celebrity athletes and musicians in the rap and rhythm-and-blues worlds. [1] In 1999
he was hired by SLAM, a basketball magazine, to photograph basketball star Kevin
Garnett in connection with an article that the magazine planned to publish about
him. [2] The article, entitled "Above the Clouds," appeared as the cover story of the
December 1999 issue of the magazine. [3] It was accompanied by a number of
Mannion's photographs of Garnett, including the one at issue here (the "Garnett
Photograph"), which was printed on a two-page spread introducing the article. [4]
The Garnett Photograph, which is reproduced below, [5] is a three-quarter-length

portrait of Garnett against a backdrop of clouds with some blue sky shining
through. The view is up and across the right side of Garnett's torso, so that he
appears to be towering above earth. He wears a white T-shirt, white athletic pants, a
black close-fitting cap, and a large amount of platinum, gold, and diamond jewelry
235
("bling bling" in the vernacular), including several necklaces, a Rolex watch and
bracelet on his left wrist, bracelets on his right wrist, rings on one finger of each
hand, and earrings. His head is cocked, his eyes are closed, and his heavily-veined
hands, nearly all of which are visible, rest over his lower abdomen, with the thumbs
hooked on the waistband of the trousers. The light is from the viewer's left, so that
Garnett's right shoulder is the brightest area of the photograph and his hands cast
slight shadows on his trousers. As reproduced in the magazine, the photograph cuts
off much of Garnett's left arm. [6]
In early 2001, defendant Carol H. Williams Advertising ("CHWA") began

developing ideas for outdoor billboards that would advertise Coors Light beer to
young black men in urban areas. [7] One of CHWA's "comp boards" — a "comp
board" is an image created by an advertising company to convey a proposed
design[8] — used a manipulated version of the Garnett Photograph and
superimposed on it the words "Iced Out" ("ice" being slang for diamonds [9] ) and a
picture of a can of Coors Light beer (the "Iced Out Comp Board"). [10] [448] CHWA
obtained authorization from Mannion's representative to use the Garnett Photograph
for this purpose. [11]
The Iced Out Comp Board, reproduced below, used a black-and-white, mirror
image of the Garnett Photograph, but with the head cropped out on top and part of
the fingers cropped out below. [12] CHWA forwarded its comp boards to, and
solicited bids for the photograph for the Coors advertising from, various
photographers including Mannion, who submitted a bid but did not receive the
assignment. [13]
Coors and CHWA selected for a Coors billboard a photograph (the "Coors
Billboard"), reproduced below, that resembles the Iced Out Comp Board. [14] The
Coors Billboard depicts, in black-and-white, the torso of a muscular black man,
albeit a model other than Garnett, [15] shot against a cloudy backdrop. The pose is
similar to that in the Garnett Photograph, and the view also is up and across the left
side of the torso. The model in the billboard photograph also wears a white T-shirt
and white athletic pants. The model's jewelry is prominently depicted; it includes a
necklace of platinum or gold and diamonds, a watch and two bracelets on the right
wrist, and more bracelets on the left wrist. The light comes from the viewer's right,
so that the left shoulder is the brightest part of the photograph, and the right arm
and hand cast slight shadows on the trousers. [16]
Mannion subsequently noticed the Coors Billboard at two locations in the Los
Angeles area. [17] He applied for registration of his copyright of the Garnett
Photograph in 2003 [18] and brought this action for infringement in February of 2004.
The registration was completed in May 2004. [19] The parties each move for
summary judgment.
Discussion
A. Summary Judgment Standard

Summary judgment is appropriate if there is no genuine issue of material fact and
the moving party is entitled to judgment as a matter of law. [20] The moving party has
the burden of demonstrating the absence of a genuine issue of material fact, [21] and
the Court must view the facts in the light most favorable to the nonmoving party. [22]
ChapterNumber:
236
"Where cross-motions for summary judgment are filed, a court `must evaluate each
party's motion on its own merits, taking care in each instance to draw all reasonable
inferences against the party whose motion is under consideration.'" [23] [449]
B. The Elements of Copyright Infringement

"To prove infringement, a plaintiff with a valid copyright must demonstrate that:
(1) the defendant has actually copied the plaintiff's work; and (2) the copying is
illegal because a substantial similarity exists between the defendant's work and the
protectible elements of plaintiff's." [24] "Actual copying" — which is used as a term
of art to mean that "the defendant, in creating its work, used the plaintiff's material
as a model, template, or even inspiration" [25] — may be shown by direct evidence,
which rarely is available, or by proof of access and probative similarities (as
distinguished from "substantial similarity") between the two works. [26]
Mannion concededly owns a valid copyright in the Garnett photograph. [27] Access is
undisputed. There is ample evidence from which a trier of fact could find that
CHWA actually copied the Garnett Photograph for the Coors Billboard. Thus, the
major questions presented by these motions are whether a trier of fact could or must
find substantial similarity between protected elements of the Garnett Photograph
and the Coors Billboard. [28] If no reasonable trier could find such similarity, [450]
the defendants' motion must be granted and the plaintiff's denied. If any reasonable
trier would be obliged to find such similarity (along with actual copying), the
plaintiff's motion must be granted and the defendants' denied. If a reasonable trier
could, but would not be required to, find substantial similarity (and actual copying),
both motions must be denied.
C. Determining the Protectible Elements of

the Garnett Photograph
The first question must be: in what respects is the Garnett Photograph protectible?
1. Protectible Elements of Photographs

It is well-established that "[t]he sine qua non of copyright is originality" [29] and,
accordingly, that "copyright protection may extend only to those components of a
work that are original to the author." [30] "Original" in the copyright context "means
only that the work was independently created by the author (as opposed to copied
from other works), and that it possesses at least some minimal degree of
creativity." [31]
It sometimes is said that "copyright in the photograph conveys no rights over the
subject matter conveyed in the photograph." [32] But this is not always true. It of
course is correct that the photographer of a building or tree or other pre-existing
object has no right to prevent others from photographing the same thing. [33] That is
because originality depends upon independent creation, and the photographer did
not create that object. By contrast, if a photographer arranges or otherwise creates
237
the subject that his camera captures, he may have the right to prevent others from
producing works that depict that subject. [34]
Almost any photograph "may claim the necessary originality to support a

copyright." [35] Indeed, ever since the Supreme Court considered an 1882 portrait by
the celebrity photographer Napoleon Sarony of the 27-year-old Oscar Wilde, [36]
courts have articulated lists of potential components of a photograph's originality.
[37]
[451] These lists, however, are somewhat unsatisfactory.
First, they do not deal with the issue, alluded to above, that the nature and extent of
a photograph's protection differs depending on what makes that photograph
original.
Second, courts have not always distinguished between decisions that a photographer
makes in creating a photograph and the originality of the final product. Several
cases, for example, have included in lists of the potential components of
photographic originality "selection of film and camera," [38] "lens and filter
selection," [39] and "the kind of camera, the kind of film, [and] the kind of lens." [40]
Having considered the matter fully, however, I think this is not sufficiently precise.
Decisions about film, camera, and lens, for example, often bear on whether an
image is original. But the fact that a photographer made such choices does not alone
make the image original. "Sweat of the brow" is not the touchstone of copyright. [41]
Protection derives from the features of the work itself, not the effort that goes into
it.
This point is illustrated by Bridgeman Art Library, Ltd. v. Corel Corp., [42] in which
this Court held that there was no copyright in photographic transparencies that
sought to reproduce precisely paintings in the public domain. To be sure, a great
deal of effort and expertise may have been poured into the production of the
plaintiff's images, including decisions about camera, lens, and film. But the works
were "slavish copies." They did not exhibit the originality necessary for copyright.
[43]
The Court therefore will examine more closely the nature of originality in a
photograph. In so doing, it draws on the helpful discussion in a leading treatise on
United Kingdom copyright law, [44] which is [452] similar to our own with respect to
the requirement of originality. [45]
A photograph may be original in three respects. [46] They are not mutually exclusive.
a. Rendition
First, "there may be originality which does not depend on creation of the scene or
object to be photographed ... and which resides [instead] in such specialties as angle
of shot, light and shade, exposure, effects achieved by means of filters, developing
techniques etc." [47] I will refer to this type of originality as originality in the
rendition because, to the extent a photograph is original in this way, copyright
protects not what is depicted, but rather how it is depicted. [48]
It was originality in the rendition that was at issue in SHL Imaging, Inc. v. Artisan
House, Inc. [49] That case concerned photographs of the defendants' mirrored picture
frames that the defendants commissioned from the plaintiff. The photographs were
to be used by the defendants' sales force for in-person pitches. When the defendants
ChapterNumber:
238
reproduced the photographs in their catalogues and brochures, the court found
infringement: "Plaintiff cannot prevent others from photographing the same frames,
or using the same lighting techniques and blue sky reflection in the mirrors. What
makes plaintiff's photographs original is the totality of the precise lighting
selection, angle of the camera, lens and filter selection." [50] Again, what made the
photographs original was not the lens and filter selection themselves. It was the
effect produced by the lens and filters selected, among other things. In any case,
those effects were the basis of the originality of the works at issue in SHL Imaging.
By contrast, in Bridgeman Art Library, the goal was to reproduce exactly other
works. The photographs were entirely unoriginal in the rendition, an extremely
unusual circumstance. Unless a photograph replicates another work with total or
near-total fidelity, it will be at least somewhat original in the rendition.
b. Timing
A photograph may be original in a second respect. "[A] person may create a
worthwhile photograph by being at the right place at the right time." [51] I will [453]
refer to this type of originality as originality in timing.
One case that concerned originality in timing, among other things, was Pagano v.
Chas. Beseler Co., [52] which addressed the copyrightability of a photograph of a
scene in front of the New York Public Library at Fifth Avenue and Forty-Second
Street:
The question is not, as defendant suggests, whether the photograph of a

public building may properly be copyrighted. Any one may take a
photograph of a public building and of the surrounding scene. It
undoubtedly requires originality to determine just when to take the
photograph, so as to bring out the proper setting for both animate and
inanimate objects.... The photographer caught the men and women in not
merely lifelike, but artistic, positions, and this is especially true of the
traffic policeman.... There are other features, which need not be discussed
in detail, such as the motor cars waiting for the signal to proceed. [53]
A modern work strikingly original in timing might be Catch of the Day, by noted
wildlife photographer Thomas Mangelsen, which depicts a salmon that appears to
be jumping into the gaping mouth of a brown bear at Brooks Falls in Katmai
National Park, Alaska. [54] An older example is Alfred Eisenstaedt's photograph of a
sailor kissing a young woman on VJ Day in Times Square, [55] the memorability of
which is attributable in significant part to the timing of its creation.
Copyright based on originality in timing is limited by the principle that copyright in

a photograph ordinarily confers no rights over the subject matter. Thus, the
copyright in Catch of the Day does not protect against subsequent photographs of
bears feasting on salmon in the same location. Furthermore, if another photographer
were sufficiently skilled and fortunate to capture a salmon at the precise moment
that it appeared to enter a hungry bear's mouth — and others have tried, with
varying degrees of success [56] — that photographer, even if inspired by Mangelsen,
would not necessarily have infringed his work because Mangelsen's copyright does
not extend to the natural world he captured.
239
In practice, originality in timing gives rise to the same type of protection as

originality in the rendition. In each case, the image that exhibits the originality, but
not the underlying subject, qualifies for copyright protection.
c. Creation of the Subject

The principle that copyright confers no right over the subject matter has an
important limitation. A photograph may be original to the extent that the
photographer created "the scene or subject to be photographed." [57] This type of
originality, which I will refer to as originality in the creation of the subject, played
an essential role in Rogers v. Koons [58] and Gross v. Seligman. [59]
[454] In Rogers, the court held that the copyright in the plaintiff's photograph
Puppies, which depicted a contrived scene of the photographer's acquaintance, Jim
Scanlon, and his wife on a park bench with eight puppies on their laps, protected
against the defendants' attempt to replicate precisely, albeit in a three dimensional
sculpture, the content of the photograph. [60] Although the Circuit noted that Puppies
was original because the artist "made creative judgments concerning technical
matters with his camera and the use of natural light" [61] — in other words, because it
was original in the rendition — its originality in the creation of the subject was
more salient. [62] The same is true of the works at issue in Gross v. Seligman, in
which the Circuit held that the copyright in a photograph named Grace of Youth
was infringed when the same artist created a photograph named Cherry Ripe [63]
using "the same model in the identical pose, with the single exception that the
young woman now wears a smile and holds a cherry stem between her teeth." [64]
******
To conclude, the nature and extent of protection conferred by the copyright in a

photograph will vary depending on the nature of its originality. Insofar as a
photograph is original in the rendition or timing, copyright protects the image but
does not prevent others from photographing the same object or scene. Thus, the
copyright at issue in SHL Imaging does not protect against subsequent photographs
of the picture frames because the originality of the plaintiffs' photographs was
almost purely in the rendition of those frames, not in their creation or the timing of
the scene captured. In Pagano, the timing of the capture of the scene in front of the
New York Public Library and its rendition were original, but the copyright in the
Pagano photograph does not protect against future attempts to capture a scene in
front of the same building, just as a copyright in Catch of the Day would not protect
against other photographers capturing images of salmon-eating bears.
By contrast, to the extent that a photograph is original in the creation of the subject,
copyright extends also to that subject. Thus, an artist who arranges and then
photographs a scene often will have the right to prevent others from duplicating that
scene in a photograph or other medium. [65]
2. Originality of the Garnett Photograph

There can be no serious dispute that the Garnett Photograph is an original [455]
work. The photograph does not result from slavishly copying another work and
ChapterNumber:
240
therefore is original in the rendition. Mannion's relatively unusual angle and

distinctive lighting strengthen that aspect of the photograph's originality. His
composition — posing man against sky — evidences originality in the creation of
the subject. Furthermore, Mannion instructed Garnett to wear simple and plain
clothing and as much jewelry as possible, and "to look 'chilled out.'" [66] His
orchestration of the scene contributes additional originality in the creation of the
subject.
Of course, there are limits to the photograph's originality and therefore to the
protection conferred by the copyright in the Garnett Photograph. For example,
Kevin Garnett's face, torso, and hands are not original with Mannion, and Mannion
therefore may not prevent others from creating photographic portraits of Garnett.
Equally obviously, the existence of a cloudy sky is not original, and Mannion
therefore may not prevent others from using a cloudy sky as a backdrop.
The defendants, however, take this line of reasoning too far. They argue that it was
Garnett, not Mannion, who selected the specific clothing, jewelry, and pose. In
consequence, they maintain, the Garnett Photograph is not original to the extent of
Garnett's clothing, jewelry, and pose. [67] They appear to be referring to originality in
the creation of the subject.
There are two problems with the defendants' argument. The first is that Mannion
indisputably orchestrated the scene, even if he did not plan every detail before he
met Garnett, and then made the decision to capture it. The second difficulty is that
the originality of the photograph extends beyond the individual clothing, jewelry,
and pose viewed in isolation. It is the entire image — depicting man, sky, clothing,
and jewelry in a particular arrangement — that is at issue here, not its individual
components. The Second Circuit has rejected the proposition that:
in comparing designs for copyright infringement, we are required to

dissect them into their separate components, and compare only those
elements which are in themselves copyrightable.... [I]f we took this
argument to its logical conclusion, we might have to decide that `there can
be no originality in a painting because all colors of paint have been used
somewhere in the past. [68]
3. The Idea / Expression Difficulty

Notwithstanding the originality of the Garnett Photograph, the defendants argue
that the Coors Billboard does not infringe because the two, insofar as they are
similar, share only "the generalized idea and concept of a young African American
man wearing a white T-shirt and a large amount of jewelry." [69]
It is true that an axiom of copyright law is that copyright does not protect "ideas,"
only their expression. [70] Furthermore, when "a given idea is inseparably tied to a
particular expression" so that "there is a `merger' of idea and expression," [456]
courts may deny protection to the expression in order to avoid conferring a
monopoly on the idea to which it inseparably is tied. [71] But the defendants' reliance
on these principles is misplaced.
The "idea" (if one wants to call it that) postulated by the defendants does not even
come close to accounting for all the similarities between the two works, which
241
extend at least to angle, pose, background, composition, and lighting. It is possible

to imagine any number of depictions of a black man wearing a white T-shirt and
"bling bling" that look nothing like either of the photographs at issue here.
This alone is sufficient to dispose of the defendants' contention that Mannion's

claims must be rejected because he seeks to protect an idea rather than its
expression. But the argument reveals an analytical difficulty in the case law about
which more ought to be said. One of the main cases upon which the defendants rely
is Kaplan v. Stock Market Photo Agency, Inc., [72] in which two remarkably similar
photographs of a businessman's shoes and lower legs, taken from the top of a tall
building looking down on a street below (the plaintiff's and defendants' photographs
are reproduced below), were held to be not substantially similar as a matter of law
because all of the similarities flowed only from an unprotected idea rather than
from the expression of that idea.
But what is the "idea" of Kaplan's photograph? Is it (1) a businessman

contemplating suicide by jumping from a building, (2) a businessman
contemplating suicide by jumping from a building, seen from the vantage point of
the businessman, with his shoes set against the street far below, or perhaps
something more general, such as (3) a sense of desperation produced by urban
professional life?
If the "idea" is (1) or, for that matter, (3), then the similarities between the two
photographs flow from something much more than that idea, for it have would been
possible to convey (1) (and (3)) in any number of ways that bear no obvious
similarities to Kaplan's photograph. (Examples are a businessman atop a building
seen from below, or the entire figure of the businessman, rather than just his shoes
or pants, seen from above.) If, on the other hand, the "idea" is (2), then the two
works could be said to owe much of their similarity to a shared idea. [73]
[457] To be sure, the difficulty of distinguishing between idea and expression long
has been recognized. Judge Learned Hand famously observed in 1930:
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 consist 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 ìdeas,' to which, apart from their expression, his property is never
extended. Nobody has ever been able to fix that boundary, and nobody
ever can. [74]
Three decades later, Judge Hand's views were essentially the same: "The test for
infringement of a copyright is of necessity vague.... Obviously, no principle can be
stated as to when an imitator has gone beyond copying the ìdea,' and has borrowed
its èxpression.' Decisions must therefore inevitably be ad hoc." [75] Since then, the
Second Circuit and other authorities repeatedly have echoed these sentiments. [76]
But there is a difference between the sort of difficulty Judge Hand identified in
Nichols and Peter Pan Fabrics and the one presented by the Kaplan rationale and
the defendants' argument about ideas in this case. The former difficulty is
essentially one of line-drawing, and, as Judge Hand taught, is common to most
cases in most areas of the law. [77] The latter difficulty, [458] however, is not simply
ChapterNumber:
242
that it is not always clear where to draw the line; it is that the line itself is
meaningless because the conceptual categories it purports to delineate are ill-suited
to the subject matter.
The idea/expression distinction arose in the context of literary copyright. [78] For the
most part, the Supreme Court has not applied it outside that context. [79] The classic
Hand formulations reviewed above also were articulated in the context of literary
works. And it makes sense to speak of the idea conveyed by a literary work and to
distinguish it from its expression. To take a clear example, two different authors
each can describe, with very different words, the theory of special relativity. The
words will be protected as expression. The theory is a set of unprotected ideas.
In the visual arts, the distinction breaks down. For one thing, it is impossible in
most cases to speak of the particular "idea" captured, embodied, or conveyed by a
work of art because every observer will have a different interpretation. [80]
Furthermore, it is not clear that there is any real distinction between the idea in a
work of art and its expression. An artist's idea, among other things, is to depict a
particular subject in a particular way. As a demonstration, a number of cases from
this Circuit have observed that a photographer's "conception" of his subject is
copyrightable. [81] By "conception," the courts must mean originality in the rendition,
timing, and creation of the subject — for that is what copyright protects in
photography. But the word "conception" is a cousin of "concept," and both are akin
to "idea." In other words, those elements of a photograph, or indeed, any work of
visual art protected by copyright, could just as [459] easily be labeled "idea" as
"expression." [82]
This Court is not the first to question the usefulness of the idea/expression
terminology in the context of non-verbal media. Judge Hand pointed out in Peter
Pan Fabrics that whereas "[i]n the case of verbal `works', it is well settled that ...
there can be no copyright in the ìdeas' disclosed but only in their èxpression[,]'"
"[i]n the case of designs, which are addressed to the aesthetic sensibilities of the
observer, the test is, if possible, even more intangible." [83] Moreover, Judge
Newman has written:
I do not deny that all of these subject matters [computer programs,

wooden dolls, advertisements in a telephone directory] required courts to
determine whether the first work was copyrightable and whether the
second infringed protectable elements. What I question is whether courts
should be making those determinations with the same modes of analysis
and even the same vocabulary that was appropriate for writings.... [I]t is
not just a matter of vocabulary. Words convey concepts, and if we use
identical phrases from one context to resolve issues in another, we risk
failing to notice that the relevant concepts are and ought to be somewhat
different. [84]
He then referred to dicta from his own decision in Warner Bros. v. American
Broadcasting Companies, [85] explaining: "I was saying ... [that] one cannot divide a
visual work into neat layers of abstraction in precisely the same manner one could
with a text." [86] The Third Circuit has made a similar point:
Troublesome, too, is the fact that the same general principles are applied
in claims involving plays, novels, sculpture, maps, directories of
information, musical compositions, as well as artistic paintings. Isolating
243
the idea from the expression and determining the extent of copying
required for unlawful appropriation necessarily depend to some degree on
whether the subject matter is words or symbols written on paper, or paint
brushed onto canvas. [87]
For all of these reasons, I think little is gained by attempting to distinguish an

unprotectible "idea" from its protectible "expression" in a photograph or other work
of visual art. It remains, then, to consider just what courts have been referring to
[460] when they have spoken of the "idea" in a photograph.
A good example is Rogers v. Koons, in which the court observed that "[i]t is not ...
the idea of a couple with eight small puppies seated on a bench that is protected,
but rather Rogers' expression of this idea — as caught in the placement, in the
particular light, and in the expressions of the subjects...." [88] But "a couple with
eight small puppies seated on a bench" is not necessarily the idea of Puppies, which
just as easily could be "people with dogs on their laps," "the bliss of owning
puppies," or even a sheepishly ironic thought such as "Ha ha! This might look cute
now, but boy are these puppies going to be a lot of work!"
Rather, "a couple with eight small puppies seated on a bench" is nothing more or
less than what "a young African American man wearing a white T-shirt and a large
amount of jewelry" [89] is: a description of the subject at a level of generality
sufficient to avoid implicating copyright protection for an original photograph.
Other copyright cases that have referred to the "idea" of a photograph also used
"idea" to mean a general description of the subject or subject matter. [90] The Kaplan
decision even used these terms interchangeably: "The subject matter of both
photographs is a businessperson contemplating a leap from a tall building onto the
city street below. As the photograph's central idea, rather than Kaplan's expression
of the idea, this subject matter is unprotectable in and of itself." [91] Thus another
photographer [461] may pose a couple with eight puppies on a bench, depict a
businessman contemplating a leap from an office building onto a street, or take a
picture of a black man in white athletic wear and showy jewelry. In each case,
however, there would be infringement (assuming actual copying and ownership of a
valid copyright) if the subject and rendition were sufficiently like those in the
copyrighted work.
This discussion of course prompts the question: at what point do the similarities
between two photographs become sufficiently general that there will be no
infringement even though actual copying has occurred? But this question is
precisely the same, although phrased in the opposite way, as one that must be
addressed in all infringement cases, namely whether two works are substantially
similar with respect to their protected elements. It is nonsensical to speak of one
photograph being substantially similar to another in the rendition and creation of
the subject but somehow not infringing because of a shared idea. Conversely, if the
two photographs are not substantially similar in the rendition and creation of the
subject, the distinction between idea and expression will be irrelevant because there
can be no infringement. The idea/expression distinction in photography, and
probably the other visual arts, thus achieves nothing beyond what other, clearer
copyright principles already accomplish.
I recognize that those principles sometimes may pose a problem like that Judge
Hand identified with distinguishing idea from expression in the literary context. As
Judge Hand observed, however, such line-drawing difficulties appear in all areas of
the law. The important thing is that the categories at issue be useful and relevant,
ChapterNumber:
244
even if their precise boundaries are sometimes difficult to delineate. In the context
of photography, the idea/expression distinction is not useful or relevant.
D. Comparison of the Coors Billboard and the

Garnett Photograph
The next step is to determine whether a trier of fact could or must find the Coors
Billboard substantially similar to the Garnett Photograph with respect to their
protected elements.
Substantial similarity ultimately is a question of fact. "The standard test for

substantial similarity between two items is whether an òrdinary observer, unless he
set out to detect the disparities, would be disposed to overlook them, and regard
[the] aesthetic appeal as the same.'" [92] The Second Circuit sometimes has applied a
"more discerning observer" test when a work contains both protectible and
unprotectible elements. The test "requires the court to eliminate the unprotectible
elements from its consideration and to ask whether the protectible elements,
standing alone, are substantially similar." [93] The Circuit, however, is ambivalent
about this test. In several cases dealing with fabric and garment designs, the Circuit
has cautioned that:
[462] a court is not to dissect the works at issue into separate components
and compare only the copyrightable elements.... To do so would be to take
the `more discerning' test to an extreme, which would result in almost
nothing being copyrightable because original works broken down into
their composite parts would usually be little more than basic unprotectible
elements like letters, colors and symbols. [94]
Dissecting the works into separate components and comparing only the
copyrightable elements, however, appears to be exactly what the "more discerning
observer" test calls for.
The Circuit indirectly spoke to this tension in the recent case of Tufenkian
Import/Export Ventures, Inc. v. Einstein Moomjy, Inc. [95] There the trial court
purported to use the more discerning observer test but nonetheless compared the
"total-concept-and-feel" of carpet designs. [96] The Circuit observed that the more
discerning observer test is "intended to emphasize that substantial similarity must
exist between the defendant's allegedly infringing design and the protectible
elements in the plaintiff's design." [97] In making its own comparison, the Circuit did
not mention the "more discerning observer" test at all, but it did note that:
"the total-concept-and-feel locution functions as a reminder that, while the

infringement analysis must begin by dissecting the copyrighted work into its
component parts in order to clarify precisely what is not original, infringement
analysis is not simply a matter of ascertaining similarity between components
viewed in isolation.... The court, confronted with an allegedly infringing work,
must analyze the two works closely to figure out in what respects, if any, they are
similar, and then determine whether these similarities are due to protected aesthetic
expressions original to the allegedly infringed work, or whether the similarity is to
something in the original that is free for the taking." [98]
245
In light of these precedents, the Court concludes that it is immaterial whether the
ordinary or more discerning observer test is used here because the inquiries would
be identical. The cases agree that the relevant comparison is between the protectible
elements in the Garnett Photograph and the Coors Billboard, but that those elements
are not to be viewed in isolation.
The Garnett Photograph is protectible to the extent of its originality in the rendition
and creation of the subject. Key elements of the Garnett Photograph that are in the
public domain — such as Kevin Garnett's likeness — are not replicated in the Coors
Billboard. Other elements arguably in the public domain — such as the existence of
a cloudy sky, Garnett's pose, his white T-shirt, and his specific jewelry — may not
be copyrightable in and of themselves, but their existence and arrangement in this
photograph indisputably contribute to its originality. Thus the fact that the Garnett
Photograph includes certain elements that would not be copyrightable in isolation
does not affect the nature of the comparison. The question is whether the aesthetic
appeal of the two images is the same.
The two photographs share a similar composition and angle. The lighting is similar,
and both use a cloudy sky as backdrop. [463] The subjects are wearing similar
clothing and similar jewelry arranged in a similar way. The defendants, in other
words, appear to have recreated much of the subject that Mannion had created and
then, through imitation of angle and lighting, rendered it in a similar way. The
similarities here thus relate to the Garnett Photograph's originality in the rendition
and the creation of the subject and therefore to its protected elements.
There of course are differences between the two works. The similarity analysis may
take into account some, but not all, of these. It long has been the law that "no
pirate." [99] Thus the addition of the words "Iced Out" and a can of Coors Light beer
may not enter into the similarity analysis.
Other differences, however, are in the nature of changes rather than additions. One
image is black and white and dark, the other is in color and bright. One is the mirror
image of the other. One depicts only an unidentified man's torso, the other the top
three-fourths of Kevin Garnett's body. The jewelry is not identical. One T-shirt
appears to fit more tightly than the other. These changes may enter the analysis
because "[i]f the points of dissimilarity not only exceed the points of similarity, but
indicate that the remaining points of similarity are, within the context of plaintiff's
work, of minimal importance... then no infringement results." [100]
The parties have catalogued at length and in depth the similarities and differences
between these works. In the last analysis, a reasonable jury could find substantial
similarity either present or absent. As in Kisch v. Ammirati & Puris Inc., [101] which
presents facts as close to this case as can be imagined, the images are such that
infringement cannot be ruled out — or in — as a matter of law.
Conclusion
The defendants' motion for summary judgment dismissing the complaint (docket
item 18) is granted to the extent that the complaint seeks relief for violation of the
plaintiff's exclusive right to prepare derivative works and otherwise denied. The
plaintiff's cross motion for summary judgment is denied.
SO ORDERED.
ChapterNumber:
246
---------------
Notes:
[2] Id. ¶ 3.
[3] See Pl.Ex. A.
[4] See id.; Def. Ex. A; Am. Cpt. Ex. B.
[5] Published opinions in copyright cases concerning graphical works do not often
include reproductions of those works. Two exceptions are Knitwaves, Inc. v.
Lollytogs Ltd., 71 F.3d 996, 1014-17 (2d Cir.1995) and Tufenkian Import/Export
Ventures, Inc. v. Einstein Moomjy, Inc., 237 F.Supp.2d 376, 390-93
(S.D.N.Y.2002). Such reproductions are helpful in understanding the opinions, even
if the images are not ideal because the West reporters print in black and white.
[6] Def. Ex. A; Pl.Ex. A; Am. Cpt. Ex. B; Mannion Decl. ¶¶ 4-5, 7-8.
[8] See Mannion Decl. ¶ 12; Cook Decl. ¶ 4; Fournier v. Erickson, 202 F.Supp.2d
290, 292 (S.D.N.Y.2002).
[9] See, e.g., AMERICAN HERITAGE DICTIONARY 868 (4th ed.2000).
[10] See Cook Decl. ¶¶ 3, 5; Pl.Ex. B.
[11] See Cook Decl. ¶ 5; Def. Ex. B.
The authorization was for "[u]sage in internal corporate merchandising catalog,"

Def. Ex. B, which Mannion concedes extended to the Iced Out Comp Board. See Pl.
Opening Mem. 2; Pl. Reply Mem. 2.
[12] See Pl.Ex. B.
[13] Cook Decl. ¶ 6; Mannion Decl. ¶¶ 12, 17-19.
[18] Am. Cpt. Ex. A.
[19] Id.
[20] FED.R.CIV.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106
S.Ct. 2505, 91 L.Ed.2d 202 (1986); White v. ABCO Eng'g Corp., 221 F.3d 293, 300
(2d Cir.2000).
[21] Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d 142
(1970).
247
[22] United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176
(1962); Hetchkop v. Woodlawn at Grassmere, Inc., 116 F.3d 28, 33 (2d Cir.1997).
[23] Hotel Employees & Restaurant Employees Union, Local 100 v. City of New
York Dep't of Parks & Recreation, 311 F.3d 534, 543 (2d Cir.2002) (quoting
Heublein, Inc. v. United States, 996 F.2d 1455, 1461 (2d Cir.1993) (internal
quotation marks omitted)); accord Make the Road by Walking, Inc. v. Turner, 378
F.3d 133, 142 (2d Cir.2004).
[24] Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995) (second
emphasis added) (quoting Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d
119, 122-23 (2d Cir.1994)); accord Tufenkian Import/Export Ventures, Inc. v.
Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir.2003) (citing Castle Rock Entm't,
Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137-38 (2d Cir.1998)); Boisson v.
Banian, Ltd., 273 F.3d 262, 267-68 (2d Cir.2001) (citing Feist Publ'ns, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) and
Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir.1998)); Fournier
v. Erickson, 202 F.Supp.2d 290, 294 (S.D.N.Y.2002).
[25] 4 NIMMER ON COPYRIGHT § 13.01[B], at 13-8 ("NIMMER").
[26] E.g., Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir.2003); Boisson,
273 F.3d at 267-68 (citing Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d
Cir.1992)).
[27] See Def. Opening Mem. 7; Def. Supp. Mem. 5.
[28] Contrary to the implication in some of the plaintiff's papers, see Am. Cpt. ¶¶
27-29; Pl. Opening Mem. 6; Pl. Supp. Mem. 6-10; see also Tr. (1/27/05) 8-11, 14-
19, 25, 30-32, 34-36 ("Tr."), this case does not require a determination whether the
defendants have violated the plaintiff's exclusive right under 17 U.S.C. § 106(2) to
prepare derivative works based upon the Garnett Photograph. The image used on
the Iced Out Comp Board may have been a derivative work based upon the Garnett
Photograph, see 17 U.S.C. § 101 (2005), but CHWA obtained the right to use the
Garnett Photograph in connection with the Iced Out Comp Board.
The question whether the Coors Billboard is a derivative work based upon the
Garnett Photograph is immaterial. "[A] work will be considered a derivative work
only if it would be considered an infringing work" absent consent. 1 NIMMER §
3.01, at 3-4. That is, the infringement inquiry logically precedes or at least controls
the derivative work inquiry.
Finally — again contrary to the plaintiff's suggestion, see Pl. Opening Mem. 9; Pl.
Reply Mem. 2-4; Tr. 21-24 — also immaterial is the question whether the Coors
Billboard may infringe Mannion's copyright if the Coors Billboard is not
substantially similar to the Garnett Photograph but is substantially similar to the
Garnett Photograph's hypothesized derivative on the Iced Out Comp Board.
Mannion has no registered copyright in the image on the Iced Out Comp Board,
which precludes a suit for infringement based upon that image. Well-Made Toy Mfg.
Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115-117 (2d Cir.2003); 17 U.S.C. § 411(a)
(2005).
The only question in this case is whether the Coors Billboard infringes the
copyright in the Garnett Photograph. The only material comparison therefore is
ChapterNumber:
248
between those two images. Accordingly, the complaint is dismissed to the extent
that it asserts a violation of Mannion's exclusive right to prepare derivative works.
[29] Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282,
113 L.Ed.2d 358 (1991).
[30] Id. at 348, 111 S.Ct. 1282.
[31] Id. at 345, 111 S.Ct. 1282 (citing 1 NIMMER §§ 2.01[A], [B] (1990)).
[32] 1 NIMMER § 2.08[E][1], at 2-130.
[33] E.g., Caratzas v. Time Life, Inc., No. 92 Civ. 6346(PKL), 1992 WL 322033, at
*4 (S.D.N.Y. Oct.23, 1992) (observing, in the context of photographs of historic
sites, that "Justice Holmes made it clear almost ninety years ago that actionable
copying does not occur where a photographer takes a picture of the subject matter
depicted in a copyrighted photograph, so long as the second photographer does not
copy original aspects of the copyrighted work, such as lighting or placement of the
subject.").
[34] See Rogers v. Koons, 960 F.2d 301 (2d Cir.1992); Gross v. Seligman, 212 F.
930 (2d Cir.1914).
[35] 1 NIMMER § 2.08[E][1], at 2-129; see also Bridgeman Art Library, Ltd. v.
Corel Corp., 36 F.Supp.2d 191, 196 (S.D.N.Y.1999).
L.Ed. 349 (1884); SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301,
307-08 (S.D.N.Y.2000) (recounting the history of Burrow-Giles with reference to
THE WAKING DREAM: PHOTOGRAPHY'S FIRST CENTURY 339-40 (Met.
Museum of Art 1993)).
The photograph at issue in Burrow-Giles is reproduced in MELVILLE B. NIMMER

ET AL., CASES AND MATERIALS ON COPYRIGHT 11 (6th ed. 2000) ("CASES
AND MATERIALS ON COPYRIGHT").
[37] See Burrow-Giles Lithographic Co., 111 U.S. at 60, 4 S.Ct. 279 (originality of
Wilde portrait founded upon overall composition, including pose, clothing,
background, light, and shade, "suggesting and evoking the desired expression");
Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 116 (2d Cir.1998)
("Leibovitz is entitled to protection for such artistic elements as the particular
lighting, the resulting skin tone of the subject, and the camera angle that she
selected."); Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992) ("Elements of
originality in a photograph may include posing the subjects, lighting, angle,
selection of film and camera, evoking the desired expression, and almost any other
variant involved."); Gross v. Seligman, 212 F. 930, 931 (2d Cir.1914) ("exercise of
artistic talent" reflected in "pose, light, and shade, etc."); SHL Imaging, Inc. v.
Artisan House, Inc., 117 F.Supp.2d 301, 311 (S.D.N.Y.2000) ("What makes
plaintiff's photographs original is the totality of the precise lighting selection, angle
of the camera, lens and filter selection."); E. Am. Trio Prods., Inc. v. Tang Elec.
Corp., 97 F.Supp.2d 395, 417 (S.D.N.Y.2000) ("The necessary originality for a
photograph may be founded upon, among other things, the photographer's choice of
subject matter, angle of photograph, lighting, determination of the precise time
when the photograph is to be taken, the kind of camera, the kind of film, the kind of
lens, and the area in which the pictures are taken."); Kisch v. Ammirati & Puris
Inc., 657 F.Supp. 380, 382 (S.D.N.Y.1987) (copyrightable elements of a photograph
249
"include such features as the photographer's selection of lighting, shading,

positioning and timing.").
Even these lists are not complete. They omit such features as the amount of the
image in focus, its graininess, and the level of contrast.
[38] Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992).
[39] SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 311
(S.D.N.Y.2000).
[40] E. Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F.Supp.2d 395, 417
(S.D.N.Y.2000) (Kaplan, J.)
[41] Feist, 499 U.S. at 359-60, 111 S.Ct. 1282.
[42] 36 F.Supp.2d 191 (S.D.N.Y.1999).
[43] Id. at 197; Bridgeman Art Library, Ltd. v. Corel Corp., 25 F.Supp.2d 421, 427
& nn. 41, 47 (S.D.N.Y.1998).
[44] HON. SIR HUGH LADDIE ET AL., THE MODERN LAW OF COPYRIGHT
AND DESIGNS (3d ed. Butterworths 2000) ("LADDIE").
[45] See Copyright, Designs and Patents Act 1988, c. 48, § 1(1)(a); 1 LADDIE §
1.8.
[46] See 1 LADDIE § 4.57, at 229.
[47] Id.
[48] See Caratzas v. Time Life, Inc., No. 92 Civ. 6346(PKL), 1992 WL 322033, at
*4 (S.D.N.Y. Oct.23, 1992); Leigh v. Warner Bros., 212 F.3d 1210, 1214 (11th
Cir.2000); see also Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249,
23 S.Ct. 298, 47 L.Ed. 460 (1903) ("It is obvious also that the plaintiff's case is not
affected by the fact, if it be one, that the pictures represent actual groups — visible
things. They seem from the testimony to have been composed from hints or
description, not from sight.... But even if they had been drawn from the life, that
fact would not deprive them of protection. The opposite proposition would mean
that a portrait by Velasquez or Whistler was common property because others might
try their hand on the same face. Others are free to copy the original. They are not
free to copy the copy."); Franklin Mint Corp. v. Nat'l Wildlife Art Exchange, Inc.,
575 F.2d 62, 65 (3d Cir.1978) (same); F.W. Woolworth Co. v. Contemporary Arts,
193 F.2d 162, 164 (1st Cir.1951) ("It is the well established rule that a copyright on
a work of art does not protect a subject, but only the treatment of a subject.");
BENJAMIN KAPLAN, AN UNHURRIED VIEW OF COPYRIGHT 56 (1967)
(observing that, with respect to "works of `fine art,'" "the manner of execution is
usually of more interest than the subject pictured.").
[49] 117 F.Supp.2d 301 (S.D.N.Y.2000).
[50] Id. at 311.
[51] 1 LADDIE § 4.57, at 229.
[52] 234 F. 963 (S.D.N.Y.1916).
[53] Id. at 964.

ChapterNumber:
250
[54] A digital image of the photograph may be found at

http://www.fulcrumgallery.com/print — 38089.aspx (last visited July 20, 2005).
[55] A digital image appears at http://www.gallerym.com/work.cfm? ID=69 (last

visited July 20, 2005).
[56] See, e.g., http://www.raydoan.com/6140.asp (last visited July 20, 2005);

http://www .shusterimages.net/BearsätBrooksFalls.htm (last visited July 20, 2005).
[57] 1 LADDIE § 4.57, at 229.
[58] 960 F.2d 301 (2d Cir.1992).
[59] 212 F. 930 (2d Cir.1914).
[60] For a reproduction of the works at issue in Rogers v. Koons, see ROBERT C.
OSTERBERG & ERIC C. OSTERBERG, SUBSTANTIAL SIMILARITY IN
COPYRIGHT LAW A-24, A-25 (Practising Law Institute 2003).
[61] 960 F.2d at 304.
[62] See id. ("When Rogers went to [Jim Scanlon's] home... he decided that taking a
picture of the puppies alone [as Scanlon originally had requested] would not work
successfully, and chose instead to include [the Scanlons] holding them.... [Rogers]
selected the light, the location, the bench on which the Scanlons are seated and the
arrangement of the small dogs.").
[63] The two photographs are reproduced in CASES AND MATERIALS ON

COPYRIGHT 211.
[64] 212 F. at 930-31.
Also part of the court's analysis was the observation that there were "many close
identities of ... light[] and shade." Id.
[65] I recognize that the preceding analysis focuses on a medium — traditional

print photography — that is being supplanted in significant degree by digital
technology. These advancements may or may not demand a different analytical
framework.
[66] Mannion Decl. ¶¶ 4-7, 9.
[67] Def. Reply Mem. 10-11.
The defendants complain as well that Mannion's declaration does not mention,
among other things, the type of film, camera, and filters that he used to produce the
Garnett Photograph. Id. at 11. These omissions are irrelevant. As discussed above,
originality in the rendition is assessed with respect to the work, not the artist's
specific decisions in producing it.
[68] Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003 (2d Cir.1995) (citation
omitted).
[69] Def. Br. 6.
[70] See 4 NIMMER § 13.03[B][2][a]; 17 U.S.C. § 102(b).
[71] 4 NIMMER § 13.03[B][3].

251
[72] 133 F.Supp.2d 317 (S.D.N.Y.2001).
[73] The Kaplan decision itself characterized the "idea" as "a businessperson
contemplating a leap from a tall building onto the city street below," see id. at 323,
but this characterization does not fully account for the disposition of the case. The
court agreed with the defendants that:
"in order to most accurately express th[is] idea ..., the photograph must be
taken from the `jumper's' own viewpoint, which would (i) naturally
include the sheer side of the building and the traffic below, and (ii)
logically restrict the visible area of the businessperson's body to his shoes
and a certain portion of his pants legs.... Thus, the angle and viewpoint
used in both photographs are essential to, commonly associated with, and
naturally flow from the photograph's unprotectable subject matter.... [T]he
most common, and most effective, viewpoint from which the convey the
idea of the `jumper' ... remains that of the `jumper' himself." Id. at 326.
The Kaplan court's observations about the angle and viewpoint "essential to" and
"commonly associated with," that "naturally flow from," "most accurately express,"
and "most effective[ly]" convey the "idea of a businessperson's contemplation of a
leap" are unpersuasive. Thus, the opinion is best read to hold that the "idea"
expressed was that of a businessperson contemplating suicide as seen from his own
vantage point because only this reading explains the outcome.
[74] Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930) (citation
omitted).
This passage is often referred to as the abstractions test, but it is no such thing.
Judge Newman has lamented this parlance and the underlying difficulty it elides:
"Judge Hand manifestly did not think of his observations as the enunciation of
anything that might be called a `test.' His disclaimer (for himself and everyone else)
of the ability to `fix the boundary' should have been sufficient caution that no `test'
capable of yielding a result was intended." Hon. Jon O. Newman, New Lyrics for an
Old Melody: The Idea/Expression Dichotomy in the Computer Age, 17 CARDOZO
ARTS & ENT. L.J. 691, 694 (1999).
[75] Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d
Cir.1960).
[76] See, e.g., Attia v. Soc'y of the N.Y. Hosp., 201 F.3d 50, 54 (2d Cir.1999)
(quoting Peter Pan Fabrics0; Williams v. Crichton, 84 F.3d 581, 587-588 (2d
Cir.1996) ("The distinction between an idea and its expression is an elusive one.");
Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 912 (2d Cir.1980) (quoting Peter
Pan Fabrics and characterizing "the idea/expression distinction" as "an imprecise
tool"); Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir.1976)
(acknowledging that "the demarcation between idea and expression may not be
susceptible to overly helpful generalization"); Herbert Rosenthal Jewelry Corp. v.
Kalpakian, 446 F.2d 738, 742 (9th Cir.1971) ("At least in close cases, one may
suspect, the classification the court selects may simply state the result reached
rather than the reason for it."); Fournier v. Erickson, 202 F.Supp.2d 290, 295
(S.D.N.Y.2002) ("the distinction between the concept and the expression of a
concept is a difficult one"); see also BENJAMIN KAPLAN, AN UNHURRIED
VIEW OF COPYRIGHT 48 (1967) ("We are in a viscid quandary once we admit
that èxpression' can consist of anything not close aboard the particular collocation
ChapterNumber:
252
in its sequential order. The job of comparison is not much eased by speaking of
patterns, nor is the task of deciding when the monopoly would be too broad for the
public convenience made much neater by speaking of ideas and expression. The
polarity proposed by Hand is indeed related geneologically to the ancient
opposition of idea to form, but the ancestor is not readily recognized in the
ambiguous and elusive descendant.").
[77] "[W]hile we are as aware as any one that the line, whereever it is drawn, will
seem arbitrary, that is no excuse for not drawing it; it is a question such as courts
must answer in nearly all cases." Nichols, 45 F.2d at 122.
[78] There appears to be no Supreme Court case explicitly making the distinction
any earlier than Holmes v. Hurst, 174 U.S. 82, 19 S.Ct. 606, 43 L.Ed. 904 (1899), in
which the Court observed that the Copyright Act protects "that arrangement of
words which the author has selected to express his ideas." Id. at 86, 19 S.Ct. 606.
[79] One non-literary case in which the Supreme Court referred to the
idea/expression distinction was Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460,
98 L.Ed. 630 (1954), which is described below in footnote 80.
[80] In cases dealing with toys or products that have both functional and design
aspects, courts sometimes use "idea" to refer to a gimmick embodied in the product.
See, e.g., Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460, 98 L.Ed. 630 (1954)
(court, after introducing idea/expression dichotomy, stated that plaintiffs, who had
copyrights in statuettes of human figures used as table lamps, "may not exclude
others from using statuettes of human figures in table lamps; they may only prevent
use of copies of their statuettes as such or as incorporated in some other article.");
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971)
(bejeweled gold pin in the shape of a bee was an unprotected "idea"); Herbert
Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64, 65-66 (2d Cir.1974)
(same for turtle pins); Great Importations, Inc. v. Caffco Int'l, Inc., No. 95 Civ.
0514, 1997 WL 414111, at *4 (S.D.N.Y. July 24, 1997) (M.J.) ("To the degree the
similarities between the two sculptures herein are simply because they are both
three-piece sets of candleholders in the shape of the letters J, O and Y with baby
angels and holly, those similarities are non-copyrightable ideas....").
This case does not concern any kind of gimmick, and the Court ventures no opinion
about the applicability of the idea/expression dichotomy to any product that
embodies a gimmick, including toys or other objects that combine function and
design.
[81] See Gross v. Seligman, 212 F. 930, 931 (2d Cir.1914); Kaplan v. Stock Market
Photo Agency, Inc., 133 F.Supp.2d 317, 323 (S.D.N.Y.2001); Andersson v. Sony
Corp. of Am., No. 96 Civ. 7975(RO), 1997 WL 226310, at *2 (S.D.N.Y. May 2,
1997); Kisch v. Ammirati & Puris Inc., 657 F.Supp. 380, 382 (S.D.N.Y.1987);
Pagano v. Chas. Beseler Co., 234 F. 963, 964 (S.D.N.Y.1916).
[82] The terminology can be still more confused. Consider this sentence, in a
section of an opinion analyzing what was original, and hence protectible, in a
photograph created by a freelancer in accordance with instructions from a
defendant: "[D]efendants conclude that Fournier cannot assert copyright protection,
to the extent that he does, over the expression of businessmen in traditional dress on
their way to work, an idea which originated with McCann in any event." Fournier
v. Erickson, 202 F.Supp.2d 290, 295 (S.D.N.Y.2002) (emphases added).
253
[83] 274 F.2d at 489.
[85] 720 F.2d 231 (2d Cir.1983).
In that case, which considered the question whether the protagonist of the television
series The Greatest American Hero infringed the copyright in the Superman
character, Judge Newman observed that a tension between two different
propositions dealing with the significance of differences between an allegedly
infringing work and a copyrighted work "perhaps results from [those propositions']
formulation in the context of literary works and their subsequent application to
graphic and three-dimensional works." Id. at 241.
[87] Franklin Mint Corp. v. Nat'l Wildlife Art Exchange, Inc., 575 F.2d 62, 65 (3d
Cir.1978); accord Kisch v. Ammirati & Puris Inc., 657 F.Supp. 380, 383
(S.D.N.Y.1987).
[88] 960 F.2d at 308 (first emphasis added).
[89] Def. Br. 6. See supra.
[90] See SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 314
(S.D.N.Y.2000) ("defendants' instructions were so general as to fall within the
realm of unprotectible ideas. Thus, they cannot substantiate a work-for-hire
authorship defense." (emphasis added)); Andersson v. Sony Corp., No. 96 Civ.
7975(RO), 1997 WL 226310, at *3 (S.D.N.Y. May 2, 1997) ("What these two
photos may arguably share, the idea of a woman in futuristic garb becoming
fascinated with an object held in her hand, is simply not protectible." (emphasis
added)); Gentieu v. Tony Stone Images/Chicago, Inc., 255 F.Supp.2d 838, 849
(N.D.Ill.2003) ("Gentieu cannot claim a copyright in the idea of photographing
naked or diapered babies or in any elements of expression that are intrinsic to that
unprotected idea. Clearly the `poses' at issue in Gentieu's images capture the natural
movements and facial expressions of infants.... Such poses are implicit in the very
idea of a baby photograph and are not proper material for protection under
Gentieu's copyrights." (emphases added)).
[…]

7.2

Derivative Works

ChapterNumber:
254
7.2.1
Castle Rock Entertainment, Inc. v. Carol Pub.

Group, Inc.

Paragraphs 11-58

150 F.3d 132
No. 97-7992
1998-07-10
150 F.3d 132 (1998)
CASTLE ROCK ENTERTAINMENT, INC.,

Plaintiff-Appellee,
v.
CAROL PUBLISHING GROUP, INC.,
Defendant-Cross Claimant-Appellant,
Beth B. Golub, Defendant-Cross Defendant-
Appellant.
[…]
[…]
Decided July 10, 1998.
[…]
[135] JOHN M. WALKER, Jr., Circuit Judge:
This case presents two interesting and somewhat novel issues of copyright law. The
first is whether The Seinfeld Aptitude Test, a trivia quiz book devoted exclusively to
testing its readers' recollection of scenes and events from the fictional television
series Seinfeld, takes sufficient protected expression from the original, as evidenced
by the book's substantial similarity to the television series, such that, in the absence
of any defenses, the book would infringe the copyright in Seinfeld. The second is
whether The Seinfeld Aptitude Test (also referred to as The SAT) constitutes fair use
of the Seinfeld television series.
Defendants-appellants Carol Publishing Group, Inc. and Beth B. Golub appeal from
the July 23, 1997 judgment of the United States District Court for the Southern
District of New York (Sonia Sotomayor, District Judge) granting, pursuant to
Fed.R.Civ.P. 56, plaintiff-appellee Castle Rock Entertainment, Inc.'s ("Castle
Rock") motion for summary judgment; denying defendants' cross-motion for
summary judgment; awarding Castle Rock $403,000 for defendants' copyright
255
infringement; and permanently enjoining defendants from publishing The Seinfeld

Aptitude Test.
We conclude that The SAT unlawfully copies from Seinfeld and that its copying
does not constitute fair use and thus is an actionable infringement. Accordingly, we
affirm the judgment in favor of Castle Rock.
Background
The material facts in this case are undisputed. Plaintiff Castle Rock is the producer
and copyright owner of each episode of the Seinfeld television series. The series
revolves around the petty tribulations in the lives of four single, adult friends in
New York: Jerry Seinfeld, George Costanza, Elaine Benes, and Cosmo Kramer.
Defendants are Beth Golub, the author, and Carol Publishing Group, Inc., the
publisher, of The SAT, a 132-page book containing 643 trivia questions and answers
about the events and characters depicted in Seinfeld. These include 211 multiple
choice questions, in which only one out of three to five answers is correct; 93
matching questions; and a number of short-answer questions. The questions are
divided into five levels of difficulty, labeled (in increasing order of difficulty)
"Wuss Questions," "This, That, and the Other Questions," "Tough Monkey
Questions," "Atomic Wedgie Questions," and "Master of Your Domain Questions."
Selected examples from level 1 are indicative of the questions throughout The SAT:
1. To impress a woman, George passes himself off as
a) a gynecologist
b) a geologist
c) a marine biologist
d) a meteorologist
11. What candy does Kramer snack on while observing a surgical

procedure from an operating-room balcony?
12. Who said, "I don't go for those nonrefundable deals ... I can't commit
to a woman ... I'm not committing to an airline."?
a) Jerry
b) George
c) Kramer[2]
The book draws from 84 of the 86 Seinfeld episodes that had been broadcast as of
the [136] time The SAT was published. Although Golub created the incorrect
answers to the multiple choice questions, every question and correct answer has as
its source a fictional moment in a Seinfeld episode. Forty-one questions and/or
answers contain dialogue from Seinfeld. The single episode most drawn upon by
The SAT, "The Cigar Store Indian," is the source of 20 questions that directly quote
ChapterNumber:
256
between 3.6% and 5.6% of that episode (defendants' and plaintiffs calculations,
respectively).
The name "Seinfeld" appears prominently on the front and back covers of The SAT,
and pictures of the principal actors in Seinfeld appear on the cover and on several
pages of the book. On the back cover, a disclaimer states that "This book has not
been approved or licensed by any entity involved in creating or producing
Seinfeld." [3] The front cover bears the title "The Seinfeld Aptitude Test" and
describes the book as containing "[h]undreds of spectacular questions of minute
details from TV's greatest show about absolutely nothing." The back cover asks:
Just how well do you command the buzz-words, peccadilloes, petty

annoyances, and triflingly complex escapades of Jerry Seinfeld, Elaine
Benes, George Costanza, and Kramer — the fabulously neurotic foursome
that makes the offbeat hit TV series Seinfeld tick?
....
If you think you know the answers — and really keep track of Seinfeld
minutiae — challenge yourself and your friends with these 550 trivia
questions and 10 extra matching quizzes. No, The Seinfeld Aptitude Test
can't tell you whether you're Master of Your Domain, but it will certify
your status as King or Queen of Seinfeld trivia. So twist open a Snapple,
double-dip a chip, and open this book to satisfy your between-episode
cravings.
Golub has described The SAT as a "natural outgrowth" of Seinfeld which, "like the
Seinfeld show, is devoted to the trifling, picayune and petty annoyances
encountered by the show's characters on a daily basis." According to Golub, she
created The SAT by taking notes from Seinfeld programs at the time they were aired
on television and subsequently reviewing videotapes of several of the episodes, as
recorded by her or various friends.
The SAT's publication did not immediately provoke a challenge. The National
Broadcasting Corporation, which broadcasted Seinfeld, requested free copies of The
SAT from defendants and distributed them together with promotions for the
program. Seinfeld's executive producer characterized The SAT as "a fun little book."
There is no evidence that The SAT's publication diminished Seinfeld's profitability,
and in fact Seinfeld's audience grew after The SAT was first published.
Castle Rock has nevertheless been highly selective in marketing products associated
with Seinfeld, rejecting numerous proposals from publishers seeking approval for a
variety of projects related to the show. Castle Rock licensed one Seinfeld book, The
Entertainment Weekly Seinfeld Companion, and has licensed the production of a
CD-ROM product that includes discussions of Seinfeld episodes; the CD-ROM
allegedly might ultimately include a trivia bank. Castle Rock claims in this
litigation that it plans to pursue a more aggressive marketing strategy for Seinfeld-
related products, including "publication of books relating to Seinfeld."
In November 1994, Castle Rock notified defendants of its copyright and trademark
infringement claims. In February 1995, after defendants continued to distribute The
SAT, Castle Rock filed this action alleging federal copyright and trademark
infringement and state law unfair competition. Subsequently, both parties moved,
257
pursuant to Fed.R.Civ.P. 56, for summary judgment on both the copyright and
unfair competition claims.
The district court granted summary judgment to Castle Rock on the copyright
claim. It held that defendants had violated plaintiff's copyrights in Seinfeld and that
such copying did not constitute fair use. See Castle Rock Entertainment v. Carol
Publ'g Group, Inc., 955 F.Supp. 260, 274 (S.D.N.Y. 1997). The district court did
not grant summary [137] judgment to either party on the unfair competition claim.
See id. The parties then stipulated to damages and attorneys' fees on the copyright
infringement claim and, presumably to facilitate the appeal, to the dismissal without
prejudice of all remaining claims. Carol Publishing's cross-claims against Golub
were dismissed with prejudice. The district court entered final judgment on the
copyright infringement claim, awarded Castle Rock $403,000 with interest,
permanently enjoined defendants from publishing or distributing The SAT, and
ordered defendants to destroy all copies of The SAT in their custody or control.
Defendants now appeal.
Discussion
Standard of Review
Summary judgment is appropriate only if the moving party can show that there is
"no genuine issue as to any material fact and that the moving party is entitled to a
judgment as a matter of law." Fed.R.Civ.P. 56(c). The court "must draw all
reasonable inferences and resolve all ambiguities in favor of the non-moving party."
[ … ] Although "[f]air use is a mixed question of law and fact,"[ … ], this court has
on a number of occasions "resolved fair use determinations at the summary
judgment stage" where, as here, there are no genuine issues of material fact[ … ].
We review the district court's legal conclusions de novo and its findings of fact for
clear erro[ … ]4).
Copyright Infringement
The Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. §§ 101-803, grants
copyright owners a bundle of exclusive rights, including the rights to "reproduce
the copyrighted work in copies" and "to prepare derivative works based upon the
copyrighted work." Id. § 106. "Copyright infringement is established when the
owner of a valid copyright demonstrates unauthorized copying." Repp v. Webber,
132 F.3d 882, 889 (2d Cir.1997); see Feist Publications, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). There are two
main components of this prima facie case of infringement: "a plaintiff must first
show that his work was actually copied .... [and] then must show that the copying
amounts to an improper or unlawful appropriation." Laureyssens v. Idea Group,
Inc., 964 F.2d 131, 139-40 (2d Cir.1992) (quotation marks and citations omitted).
Actual copying may be established "either by direct evidence of copying or by
indirect evidence, including access to the copyrighted work, similarities that are
probative of copying between the works, and expert testimony." Id. at 140. As we
have noted before, "probative," rather than "substantial" similarity is the correct
ChapterNumber:
258
term in referring to the plaintiff's initial burden of proving actual copying by

indirect evidence. See Webber, 132 F.3d at 889 n. 1; Laureyssens, 964 F.2d at 140.
"It is only after actual copying is established that one claiming infringement" then
the second work bears "substantial similarity" to protected expression in the earlier
work. Webber, 132 F.3d at 889; Laureyssens, 964 F.2d at 140.
In the instant case, no one disputes that Castle Rock owns valid copyrights in the
Seinfeld television programs and that defendants actually copied from those
programs in creating The SAT. Golub freely admitted that she created The SAT by
taking notes from Seinfeld programs at the time they were aired on television and
subsequently reviewing videotapes of several of the episodes that she or her friends
recorded. Since the fact of copying is acknowledged and undisputed, the critical
question for decision is whether the copying was unlawful or improper in that it
took a sufficient amount of protected expression from Seinfeld as evidenced by its
substantial similarity to such expression.
[138]
Substantial Similarity
We have stated that "substantial similarity"
requires that the copying [be] quantitatively and qualitatively sufficient to

support the legal conclusion that infringement (actionable copying) has
occurred. The qualitative component concerns the copying of expression,
rather than ideas [, facts, works in the public domain, or any other non-
protectable elements].... The quantitative component generally concerns
the amount of the copyrighted work that is copied,
which must be more than "de minimis." Ringgold v. Black Entertainment Television,
Inc., 126 F.3d 70, 75 (2d Cir.1997) (emphasis added).
As to the quantitative element, we conclude that The SAT has crossed the de
minimis threshold. At the outset, we observe that the fact that the copying appears
in question and answer form is by itself without particular consequence: the trivia
quiz copies fragments of Seinfeld in the same way that a collection of Seinfeld jokes
or trivia would copy fragments of the series. In order to determine the quantitative
extent of the defendants' copying, we must then decide whether to analyze
separately the amount of expression copied from each individually copyrighted
Seinfeld episode, or to analyze in the aggregate the amount copied from the eighty-
four Seinfeld episodes. As defendants observe, 17 U.S.C. § 106 speaks throughout
in the singular, referring to the allegedly infringed "work," thus bolstering an
individual-episode analysis. Our precedents, however, tend to support the aggregate
analysis. See Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366,
1372-73, 1381 (2d Cir.1993) (finding substantial similarity between infringing book
and 8 episodes of Twin Peaks weekly television series seen as a whole, but
awarding statutory damages on per-episode basis); Wainwright Secs. Inc. v. Wall St.
Transcript Corp., 558 F.2d 91, 94 (2d Cir.1977) (abstracts of a number of research
reports treated cumulatively in fair use analysis); see also Craft v. Kobler, 667
F.Supp. 120, 124-25 (S.D.N.Y.1987) (passages taken from 15 separate books of
copyright holder treated cumulatively in finding infringement); cf. New Era
259
Publications Int'l, ApS v. Carol Publ'g Group, 904 F.2d 152, 158 (2d Cir.1990) (in
analyzing whether critical biography was fair use of 48 original writings, court
noted that biography "uses overall a small percentage of [plaintiff's] works" but also
noted that percentage of copying taken from each individual work was not "unfair")
(emphasis added); but see Salinger v. Random House, Inc., 811 F.2d 90, 98 (2d
Cir.1987) (copying of Salinger letters not fair use because, among other factors,
secondary work copied one-third of 17 letters and 10 percent of 42 letters).
As in Twin Peaks, for the purposes of the quantitative copying analysis we shall
treat Seinfeld — a discrete, continuous television series — as a single work. [4]
Where the secondary work focuses on an entire continuous television series such as
Seinfeld, there is no basis for looking in isolation at the amount copied from each
separately copyrighted episode. Although 17 U.S.C. § 106 speaks in terms of a
singular copyrighted "work," it would elevate form over substance to conclude that
The SAT's copying of 643 fragments from 84 individually copyrighted Seinfeld
episodes is indistinguishable from a case in which a 634-question trivia quiz book
poses a few questions from each of 84 unrelated television programs, books,
movies, or any combination of creative works that do not constitute a discrete series
of works. Had The SAT copied a few fragments from each of 84 unrelated television
programs (perhaps comprising the entire line-up on broadcast television),
defendants would have a stronger case under the de minimis doctrine. By copying
not a few but 643 fragments from the Seinfeld television series, however, The SAT
has plainly crossed the quantitative copying threshold under Ringgold.
As to Ringgold's qualitative component, each SAT trivia question is based directly

upon original, protectable expression in Seinfeld. As noted by the district court, The
SAT did not copy from Seinfeld unprotected [139] facts, but, rather, creative
expression. Cf. Feist, 499 U.S. at 364, 111 S.Ct. 1282 (finding no infringement
where defendant produced a multi-county phone directory, in part, by obtaining
names and phone numbers from plaintiffs' single-county directory). Unlike the facts
in a phone book, which "do not owe their origin to an act of authorship," id. at 347,
111 S.Ct. 1282, each "fact" tested by The SAT is in reality fictitious expression
created by Seinfeld's authors. The SAT does not quiz such true facts as the identity
of the actors in Seinfeld, the number of days it takes to shoot an episode, the
biographies of the actors, the location of the Seinfeld set, etc. Rather, The SAT tests
whether the reader knows that the character Jerry places a Pez dispenser on Elaine's
leg during a piano recital, that Kramer enjoys going to the airport because he's
hypnotized by the baggage carousels, and that Jerry, opining on how to identify a
virgin, said "It's not like spotting a toupee." Because these characters and events
spring from the imagination of Seinfeld's authors, The SAT plainly copies
copyrightable, creative expression. [5] See Feist, 499 U.S. at 347, 111 S.Ct. 1282
(discussing distinction between discovered facts, which do not "owe their origin to
an act of authorship" and therefore are not protected by copyright, and created facts,
which constitute original, protected expression).
We find support for this conclusion in a previous case in which we held that a series
of still photographs of a ballet may in some cases infringe the copyright in an
original choreographic work. See Horgan v. Macmillan, Inc., 789 F.2d 157, 163 (2d
Cir.1986). The defendants in Horgan claimed that still photographs could not
"capture the flow of movement, which is the essence of dance," that "the staged
performance could not be recreated from the photographs," and thus, that the
photographs were not substantially similar to the choreographic work. Id. at 161-62
(quotation marks omitted). Although noting that the issue "was not a simple one,"
ChapterNumber:
260
this court rejected that argument, holding that "the standard for determining
copyright infringement is not whether the original could be recreated from the
allegedly infringing copy, but whether the latter is substantially similar to the
former." Id. at 162 (quotation marks omitted). That observation applies with equal
force to the trivia quiz fragments in this case. Although Seinfeld could not be
"recreated" from The SAT, Castle Rock has nevertheless established both the
quantitative and qualitative components of the substantial similarity test,
establishing a prima facie case of copyright infringement.
Other Tests
As defendants note, substantial similarity usually "arises out of a claim of
infringement as between comparable works .... [where] because of the equivalent
nature of the competing works, the question of similarity can be tested
conventionally by comparing comparable elements of the two works." Because in
the instant case the original and secondary works are of different genres and to a
lesser extent because they are in different media, tests for substantial similarity
other than the quantitative/qualitative approach are not particularly helpful to our
analysis.
Under the "ordinary observer" test, for example, "[t]wo works are substantially
similar where `the ordinary observer, unless he set out to detect the disparities,
would be disposed to overlook them, and regard [the] aesthetic appeal [of the two
works] as the same.'" Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir.1992)
(quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d
Cir.1960) (L.Hand, J.) (comparing dress designs)) (alterations in original).
Undoubtedly, Judge Hand did not have in mind a comparison of aesthetic appeal as
between a television series and a trivia quiz and, in the usual case, we might [140]
question whether any "ordinary observer" would "regard [the] aesthetic appeal" in a
situation-comedy television program as being identical to that of any book, let
alone a trivia quiz book, about that program. Cf. Laureyssens, 964 F.2d at 132, 141
(applying "ordinary observer" test to compare two sets of foam rubber puzzles). We
note here, however, that plaintiff has a plausible claim that there is a common
aesthetic appeal between the two works based on The SAT's plain copying of
Seinfeld and Golub's statement on the back cover that the book was designed to
complement the aesthetic appeal of the television series. See The SAT ("So twist
open a Snapple, double-dip a chip, and open this book to satisfy your between
episode cravings.").
Under the "total concept and feel" test, urged by defendants, we analyze "the
similarities in such aspects as the total concept and feel, theme, characters, plot,
sequence, pace, and setting" of the original and the allegedly infringing works.
Williams v. Crichton, 84 F.3d 581, 588 (2d Cir.1996) (comparing children's books
with novel and movie); Reyher v. Children's Television Workshop, 533 F.2d 87, 91
(2d Cir.1976) (comparing children's book with story in Sesame Street Magazine).
Defendants contend that The SAT and the Seinfeld programs are incomparable in
conventional terms such as plot, sequence, themes, pace, and setting. For example,
The SAT has no plot; "[t]he notion of pace ... cannot be said even to exist in the
book"; The SAT's "sequence has no relationship to the sequences of any of the
Seinfeld episodes, since it is a totally random and scattered collection of questions
relating to events that occurred in the shows"; and The SAT's only theme "is how
261
much a Seinfeld fan can remember of 84 different programs." The total concept and
feel test, however, is simply not helpful in analyzing works that, because of their
different genres and media, must necessarily have a different concept and feel.
Indeed, many "derivative" works of different genres, in which copyright owners
have exclusive rights, see 17 U.S.C. § 106, may have a different total concept and
feel from the original work.
Finally, we do not apply the "fragmented literal similarity" test, [6] which focuses
upon copying of direct quotations or close paraphrasing, or the "comprehensive
nonliteral similarity" test, which examines whether "the fundamental essence or
structure of one work is duplicated in another." 4 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 13.03[A][1], at 13-29, § 13.03[A][2], at 13-45
(1997) (hereafter "Nimmer"); Twin Peaks, 996 F.2d at 1372-73(applying Nimmer
test); Warner Bros. Inc. v. American Broad. Cos., 720 F.2d 231, 240, 242 (2d
Cir.1983) (applying Nimmer test to compare Superman and The Greatest American
Hero). In the instant case, because the direct quotations or close paraphrases that
The SAT copied from the Seinfeld series are few and almost irrelevant to The SAT,
undue focus upon these isolated quotations could improperly distract us from
inquiring as to whether substantial similarity exists between Seinfeld and The SAT.
Castle Rock's comprehensive nonliteral similarity argument — that the defendants

"literally constructed the SAT with 643 fragments of Seinfeld's creative whole" —
is also unhelpful to our analysis and unnecessary to our determination that The SAT
is substantially similar to Seinfeld. Without having viewed Seinfeld itself, no SAT
reader could plausibly "construct" in his or her mind the plot of any Seinfeld
episode, nor any of Seinfeld's settings (the Seinfeld and Kramer apartments, the
foursome's restaurant hangout, George Steinbrenner's office, etc.), nor even the four
principal Seinfeld characters. Nor does The SAT "[duplicate] the fundamental
essence or structure" of Seinfeld. 4 Nimmer § 13.03[A][1], at 13-29; cf. Twin Peaks,
996 F.2d 1372-73 (finding "substantial similarity through comprehensive nonliteral
similarity" where chapter of infringing book "is essentially a detailed recounting of
the first eight episodes of the [television] series" and "[e]very intricate plot twist
and element of character development appear in the Book [141] in the same
sequence as in the teleplays"). However, "[t]he standard for determining copyright
infringement is not whether the original could be recreated from the allegedly
infringing copy, but whether the latter is `substantially similar' to the former,"
Horgan, 789 F.2d at 162, and in copying a sufficient amount of protected
expression from the Seinfeld television series, The SAT easily passes the threshold
of substantial similarity between the contents of the secondary work and the
protected expression in the original.
Fair Use
Defendants claim that, even if The SAT's copying of Seinfeld constitutes prima facie
infringement, The SAT is nevertheless a fair use of Seinfeld. "From the infancy of
copyright protection," the fair use doctrine "has been thought necessary to fulfill
copyright's very purpose, `[t]o promote the Progress of Science and useful Arts.'"
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127
L.Ed.2d 500 (1994) (quoting U.S. Const., art. I, § 8, cl. 8). As noted in Campbell,
"in truth, in literature, in science and in art, there are, and can be, few, if any,
things, which in an abstract sense, are strictly new and original throughout. Every
ChapterNumber:
262
book in literature, science and art, borrows, and must necessarily borrow, and use
much which was well known and used before." Id. (quotation marks omitted). Until
the 1976 Copyright Act, the doctrine of fair use grew exclusively out of the
common law. See id. at 576, 114 S.Ct. 1164; Folsom v. Marsh, 9 F.Cas. 342, 348
(C.D.Mass.1900) (CCD Mass. 1841) (Story, J.) (stating fair use test); Pierre N.
Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1105 (1990) ("Leval").
In the Copyright Act, Congress restated the common law tradition of fair use:
[T]he fair use of a copyrighted work ... for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for
classroom use), scholarship, or research, is not an infringement of
copyright. In determining whether the use made of a work in any
particular case is a fair use the factors to be considered shall include —
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the
(4) the effect of the use upon the potential market for or value of the
copyrighted work.
17 U.S.C. § 107. This section "intended that courts continue the common law
tradition of fair use adjudication" and "permits and requires courts to avoid rigid
application of the copyright statute, when, on occasion, it would stifle the very
creativity which that law is designed to foster." Campbell, 510 U.S. at 577, 114
S.Ct. 1164 (quotation marks omitted). Fair use analysis, therefore, always "calls for
case-by-case analysis." Id. The fair use examples provided in § 107 are "illustrative
and not limitative" and "provide only general guidance about the sorts of copying
that courts and Congress most commonly had found to be fair uses." Id. at 577-78,
114 S.Ct. 1164. Similarly, the four listed statutory factors in § 107 guide but do not
control our fair use analysis and "are to be explored, and the results weighed
together, in light of the purposes of copyright." Id.; see 4 Nimmer § 13.05[A], at
13-153 ("[T]he factors contained in Section 107 are merely by way of example, and
are not an exhaustive enumeration."). The ultimate test of fair use, therefore, is
whether the copyright law's goal of "promot[ing] the Progress of Science and useful
Arts," U.S. Const., art. I, § 8, cl. 8, "would be better served by allowing the use
than by preventing it." Arica, 970 F.2d at 1077.
Purpose/Character of Use
The first fair use factor to consider is "the purpose and character of the [allegedly
infringing] use, including whether such use is of a commercial nature or is for
nonprofit educational purposes." 17 U.S.C. § 107(1). That The SAT's use is
commercial, at most, "tends to weigh against a finding of fair use." [142] Campbell,
510 U.S. at 585, 114 S.Ct. 1164 (quotation marks omitted); Texaco, 60 F.3d at 921.
But we do not make too much of this point. As noted in Campbell, "nearly all of the
263
illustrative uses listed in the preamble paragraph of § 107, including news

reporting, comment, criticism, teaching, scholarship, and research ... are generally
conducted for profit in this country," 510 U.S. at 584, 114 S.Ct. 1164 (quotation
marks omitted), and "no man but a blockhead ever wrote, except for money," id.
(quoting 3 Boswell's Life of Johnson 19 (G. Hill ed.1934)). We therefore do not
give much weight to the fact that the secondary use was for commercial gain.
The more critical inquiry under the first factor and in fair use analysis generally is
whether the allegedly infringing work "merely supersedes" the original work "or
instead adds something new, with a further purpose or different character, altering
the first with new ... meaning [] or message," in other words "whether and to what
extent the new work is `transformative.'" Id. at 579, 114 S.Ct. 1164 (quoting Leval
at 1111). If "the secondary use adds value to the original — if [copyrightable
expression in the original work] is used as raw material, transformed in the creation
of new information, new aesthetics, new insights and understandings — this is the
very type of activity that the fair use doctrine intends to protect for the enrichment
of society." Leval at 1111. In short, "the goal of copyright, to promote science and
the arts, is generally furthered by the creation of transformative works." Campbell,
510 U.S. at 579, 114 S.Ct. 1164.
Defendants claim two primary "transformative" qualities of The SAT. First, as noted
by the district court, "a text testing one's knowledge of Joyce's Ulysses, or
Shakespeare's Hamlet, would qualify as `criticism, comment, scholarship, or
research,' or such. The same must be said, then, of a text testing one's knowledge of
Castle Rock's Seinfeld." Castle Rock, 955 F.Supp. at 268 (citing Twin Peaks, 996
F.2d at 1374 ("A comment is as eligible for fair use protection when it concerns
`Masterpiece Theater' and appears in the New York Review of Books as when it
concerns Às the World Turns' and appears in Soap Opera Digest.")). In other
words, the fact that the subject matter of the quiz is plebeian, banal, or ordinary
stuff does not alter the fair use analysis. Criticism, comment, scholarship, research,
and other potential fair uses are no less protectable because their subject is the
ordinary.
Second, defendants style The SAT as a work "decod[ing] the obsession with ... and
mystique that surround[s] `Seinfeld,'" by "critically restructur[ing] [ Seinfeld's
mystique] into a system complete with varying levels of `mastery' that relate the
reader's control of the show's trivia to knowledge of and identification with their
hero, Jerry Seinfeld." Citing one of their own experts for the proposition that "[t]he
television environment cannot speak for itself but must be spoken for and about,"
defendants argue that "The SAT is a quintessential example of critical text of the TV
environment .... expos[ing] all of the show's nothingness to articulate its true
motive forces and its social and moral dimensions." (Quotation marks omitted).
Castle Rock dismisses these arguments as post hoc rationalizations, claiming that
had defendants been half as creative in creating The SAT as were their lawyers in
crafting these arguments about transformation, defendants might have a colorable
fair use claim.
Any transformative purpose possessed by The SAT is slight to non-existent. We

reject the argument that The SAT was created to educate Seinfeld viewers or to
criticize, "expose," or otherwise comment upon Seinfeld. The SAT's purpose, as
evidenced definitively by the statements of the book's creators and by the book
itself, is to repackage Seinfeld to entertain Seinfeld viewers. The SAT's back cover
makes no mention of exposing Seinfeld to its readers, for example, as a pitiably
vacuous reflection of a puerile and pervasive television culture, but rather urges
ChapterNumber:
264
SAT readers to "open this book to satisfy [their] between-episode [Seinfeld]

cravings." Golub, The SAT's author, described the trivia quiz book not as a
commentary or a Seinfeld research tool, but as an effort to "capture Seinfeld's flavor
in quiz book fashion." Finally, even viewing The SAT in the light most favorable to
defendants, we find scant [143] reason to conclude that this trivia quiz book seeks
to educate, criticize, parody, comment, report upon, or research Seinfeld, or
otherwise serve a transformative purpose. [7] The book does not contain commentary
or analysis about Seinfeld, nor does it suggest how The SAT can be used to research
Seinfeld; rather, the book simply poses trivia questions. The SAT's plain purpose,
therefore, is not to expose Seinfeld's "nothingness," but to satiate Seinfeld fans'
passion for the "nothingness" that Seinfeld has elevated into the realm of
protectable creative expression.
Although a secondary work need not necessarily transform the original work's
expression to have a transformative purpose, [ … ] the fact that The SAT so
minimally alters Seinfeld's original expression in this case is further evidence of
The SAT's lack of transformative purpose. To be sure, the act of testing trivia about
a creative work, in question and answer form, involves some creative expression.
While still minimal, it does require posing the questions and hiding the correct
answer among three or four incorrect ones. [8] Also, dividing the trivia questions into
increasing levels of difficulty is somewhat more original than arranging names in a
telephone book in alphabetical order. See Feist, 499 U.S. at 362-63, 111 S.Ct. 1282.
The SAT's incorrect multiple choice answers are also original. However, the work as
a whole, drawn directly from the Seinfeld episodes without substantial alteration, is
far less transformative than other works we have held not to constitute fair use. See,
e.g., Twin Peaks, 996 F.2d at 1378 (book about Twin Peaks television series that
discusses show's popularity, characters, actors, plots, creator, music, and poses
trivia questions about show held not to be fair use).
Finally, we note a potential source of confusion in our copyright jurisprudence over

the use of the term "transformative." A "derivative work," over which a copyright
owner has exclusive control, is defined as
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.
17 U.S.C. §§ 101, 106(2) (emphasis added). Although derivative works that are
subject to the author's copyright transform an original work into a new mode of
presentation, such works — unlike works of fair use — take expression for
purposes that are not "transformative." [9] In the instant case, since The SAT has
transformed Seinfeld's expression into trivia quiz book form with little, if any,
transformative purpose, the first fair use factor weighs against defendants.
Nature of the Copyrighted Work

The second statutory factor, "the nature of the copyrighted work," 17 U.S.C. §
107(2), "calls for recognition that some works are closer to the core of intended
copyright protection than others, with the consequence that fair use is more difficult
to establish when the former works are copied." Campbell, 510 U.S. at 586, 114
265
S.Ct. 1164. Defendants concede that the scope of fair use is somewhat narrower
with respect to fictional works, such as Seinfeld, than to factual works. [ … ] Twin
Peaks, 996 F.2d at 1376 (second factor "favor[s] ... creative and fictional work").
Although this factor may be of less (or even of no) importance when assessed in the
context of certain transformative uses,[ … ], the fictional nature of the copyrighted
work remains significant in the instant case, where the secondary use is at best
minimally transformative. Thus, the second statutory factor favors the plaintiff.
Amount and Substantiality of the Portion

Used in Relation to the Copyrighted Work as
a Whole
As a preliminary matter, the district court held that its determination that The SAT
is substantially similar to Seinfeld "`should suffice for a determination that the third
fair use factor favors the plaintiff.'" Castle Rock, 955 F.Supp. at 269-70 (quoting
Twin Peaks, 996 F.2d at 1377). However, because secondary users need invoke the
fair use defense only where there is substantial similarity between the original and
allegedly infringing works, and thus actionable copying, the district court's analysis
is of little if any assistance. Under the district court's analysis, the third fair use
factor would always and unfairly favor the original copyright owner claiming no
fair use. [ … ]
In Campbell, a decision post-dating Twin Peaks, the Supreme Court clarified that
the third factor — the amount and substantiality of the portion of the copyrighted
work used — must be examined in context. The inquiry must focus upon whether
"[t]he extent of ... copying" is consistent with or more than necessary to further "the
purpose and character of the use." 510 U.S. at 586-87, 114 S.Ct. 1164; see Sony
Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 449-50, 104 S.Ct.
774, 78 L.Ed.2d 574 (1984) (reproduction of entire work "does not have its
ordinary effect of militating against a finding of fair use" as to home videotaping of
television programs); Harper & Row, 471 U.S. at 564, 105 S.Ct. 2218 ("[E]ven
substantial quotations might qualify as fair use in a review of a published work or a
news account of a speech" but not in a scoop of a soon-to-be-published memoir.).
"[B]y focussing [sic] on the amount and substantiality of the original work used by
the secondary user, we gain insight into the purpose and character of the use as we
consider whether the quantity of the material used was reasonable in relation to the
purpose of the copying." Texaco, 60 F.3d at 926 (quotation marks omitted). In
Campbell, for example, the Supreme Court determined that a "parody must be able
to `conjure up' at least enough of [the] original [work] to make the object of its
critical wit recognizable" and then determined whether the amount used of the
original work was "no more than necessary" to satisfy the purpose of parody. 510
U.S. at 588-89, 114 S.Ct. 1164.
In the instant case, it could be argued that The SAT could not expose Seinfeld's
"nothingness" without repeated, indeed exhaustive examples deconstructing
Seinfeld's humor, thereby emphasizing Seinfeld's meaninglessness to The SAT's
readers. That The SAT posed as many as 643 trivia questions to make this rather
straightforward point, however, suggests that The SAT's purpose was entertainment,
not commentary. Such an argument has not been advanced on appeal, but if it had
been, it would not disturb our conclusion that, under any fair reading, The SAT does
ChapterNumber:
266
not serve a critical or otherwise transformative purpose. Accordingly, the third

factor weighs against fair use.
Effect of Use Upon Potential Market for or

Value of Copyrighted Work
Defendants claim that the fourth factor favors their case for fair use because Castle
Rock has offered no proof of actual market harm to Seinfeld caused by The SAT. To
the contrary, Seinfeld's audience grew after publication of The SAT, and Castle
Rock has evidenced no interest in publishing Seinfeld [145] trivia quiz books and
only minimal interest in publishing Seinfeld-related books.
The Supreme Court has recently retreated from its earlier cases suggesting that the
fourth statutory factor is the most important element of fair use, see Harper & Row,
471 U.S. at 566, 105 S.Ct. 2218, recognizing instead that "[a]ll [factors] are to be
explored, and the results weighed together, in light of the purposes of copyright,"
Campbell, 510 U.S. at 578, 114 S.Ct. 1164; see Texaco, 60 F.3d at 926 (applying
Campbell approach). Under this factor, we "consider not only the extent of market
harm caused by the particular actions of the alleged infringer, but also whether
unrestricted and widespread conduct of the sort engaged in by the defendant ...
would result in a substantially adverse impact on the potential market for the
original." Campbell, 510 U.S. at 590, 114 S.Ct. 1164 (quotation marks and citation
omitted). The fourth factor must also "take account ... of harm to the market for
derivative works," id., defined as those markets "that creators of original works
would in general develop or license others to develop," id. at 592, 114 S.Ct. 1164.
In considering the fourth factor, our concern is not whether the secondary use
suppresses or even destroys the market for the original work or its potential
derivatives, but whether the secondary use usurps or substitutes for the market of
the original work. Id. at 593, 114 S.Ct. 1164. The more transformative the
secondary use, the less likelihood that the secondary use substitutes for the original.
Id. at 591, 114 S.Ct. 1164. As noted by the district court, "[b]y the very nature of
[transformative] endeavors, persons other than the copyright holder are undoubtedly
better equipped, and more likely, to fill these particular market and intellectual
niches." Castle Rock, 955 F.Supp. at 271. And yet the fair use, being
transformative, might well harm, or even destroy, the market for the original. See
Campbell, 510 U.S. at 591-92, 114 S.Ct. 1164 ("[A] lethal parody, like a scathing
theater review, kills demand for the original, [but] does not produce a harm
cognizable under the Copyright Act."); New Era Publications, 904 F.2d at 160 ("a
critical biography serves a different function than does an authorized, favorable
biography, and thus injury to the potential market for the favorable biography by
the publication of the unfavorable biography does not affect application of factor
four"). [10]
Unlike parody, criticism, scholarship, news reporting, or other transformative uses,

The SAT substitutes for a derivative market that a television program copyright
owner such as Castle Rock "would in general develop or license others to develop."
Campbell, 510 U.S. at 592, 114 S.Ct. 1164. [11] Because The SAT borrows
exclusively from Seinfeld and not from any other television or entertainment
programs, The SAT is likely to fill a market niche that Castle Rock would in general
develop. Moreover, as noted by the district court, this "Seinfeld trivia game is not
267
critical of the program, nor does it parody the program; if anything, SAT pays
homage to Seinfeld." Castle Rock, 955 F.Supp. at 271-72. Although Castle Rock has
evidenced little if any interest in exploiting this market for derivative works based
on Seinfeld, such as by creating and publishing Seinfeld trivia books (or at least
trivia books that endeavor to "satisfy" the "between-episode [146] cravings" of
Seinfeld lovers), the copyright law must respect that creative and economic choice.
"It would ... not serve the ends of the Copyright Act — i.e., to advance the arts — if
artists were denied their monopoly over derivative versions of their creative works
merely because they made the artistic decision not to saturate those markets with
variations of their original." Castle Rock, 955 F.Supp. at 272; see Salinger, 811
F.2d at 99 ("The need to assess the effect on the market for Salinger's letters is not
lessened by the fact that their author has disavowed any intention to publish them
during his lifetime."). The fourth statutory factor therefore favors Castle Rock.
Other Factors
As we have noted, the four statutory fair use factors are non-exclusive and serve
only as a guide to promote the purposes underlying the copyright law. One factor
that is of no relevance to the fair use equation, however, is defendants' continued
distribution of The SAT after Castle Rock notified defendants of its copyright
infringement claim, because "[i]f the use is otherwise fair, then no permission need
be sought or granted.... [B]eing denied permission to use a work does not weigh
against a finding of fair use." [ … ]
We also note that free speech and public interest considerations are of little
relevance in this case, which concerns garden-variety infringement of creative
fictional works. See 4 Nimmer § 13.05[B][4], at 13-205 ("The public interest is also
a factor that continually informs the fair use analysis."); cf. Time Inc. v. Bernard
Geis Assocs., 293 F.Supp. 130, 146 (S.D.N.Y.1968) (discussing importance of
access to information about President Kennedy assassination in fair use analysis of
home video of assassination).
Aggregate Assessment
Considering all of the factors discussed above, we conclude that the copyright law's
objective "[t]o promote the Progress of Science and useful Arts" would be
undermined by permitting The SAT's copying of Seinfeld, see Arica, 970 F.2d at
1077, and we therefore reject defendants' fair use defense. Finally, we note that
defendants do not assert that Castle Rock abandoned, forfeited, or misused
copyrights in Seinfeld, and that defendants have asserted no defense on appeal other
than that of fair use.
Conclusion
Undoubtedly, innumerable books could "expose" the "nothingness" or otherwise
comment upon, criticize, educate the public about, or research Seinfeld and
contemporary television culture. The SAT, however, is not such a book. For the
reasons set forth above, the judgment of the district court is affirmed. [12]
ChapterNumber:
268
[*] The Honorable Jed S. Rakoff, of the United States District Court for the
Southern District of New York, sitting by designation.
[2] An example of the trivia quiz book's matching questions (entitled "Family
Trees") is as follows:
1. Cousin Jeffrey 2. Uncle Leo 3. Manya 4. Isaac 5. Mr. Seinfeld 6. Mrs. Seinfeld 7.
Mr. Benes 8. Mr. Costanza 9. Mrs. Costanza 10. Mrs. Kramer.
(a) Former condo association president
(b) Drinks Colt 45 in the nude
(c) Arm-grabbing, loquacious garbage can picker
(d) Leaves a rent-controlled New York City apartment for the Phoenix sunshine
(e) Gruff-talking, well-known novelist
(f) New York City employee who watches the Nature Channel
(g) Wears sneakers in the swimming pool and has to "get the good spot in front of
the good building in the good neighborhood"
(h) Enjoys the heat and never uses air conditioning
(i) Elderly immigrant whose beloved pony was "the pride of Krakow"
(j) Nagging, shrill-voiced Glamour magazine reader who was hospitalized for a
back injury
[3] As noted later, this opinion does not address issues of trademark or unfair
competition.
[4] Because the parties have stipulated to damages, we need not address, as did
Twin Peaks, whether damages should be assessed on a perepisode basis.
[5] We appreciate that the line between unprotected fact and protected creative
expression may in some instances be less clear. Where a "fictional" single mother in
a popular television series engages in real political discourse with a real Vice-
President of the United States, for example, it is less clear whether the television
"script" is fiction — in the sense that it is only a television script, or fact — in the
sense that it is a real dialogue with a real political figure about contemporary issues.
Whatever the line between historical fact and creative expression, however,
Seinfeld is securely on the side of creative expression.
[6] We do not understand Ringgold's quantitative analysis to be the same as a

fragmented similarity analysis. The former considers the amount of copying not
only of direct quotations and close paraphrasing, but also of all other protectable
expression in the original work.
[7] Had The SAT's incorrect answer choices attempted to parody Seinfeld, for
example, defendants would have a stronger case for fair use. See Campbell, 510
U.S. at 588, 114 S.Ct. 1164.
[8] In the time it took to write this last sentence, for example, one could have easily
created the following trivia question about the film trilogy Star Wars: "Luke
Skywalker was aghast to learn that Darth Vader was Luke's (a) father (b) father-in-
269
law (c) best friend (d) Jerry Seinfeld," and innumerable other such trivia questions
about original creative works.
[9] Indeed, if the secondary work sufficiently transforms the expression of the
original work such that the two works cease to be substantially similar, then the
secondary work is not a derivative work and, for that matter, does not infringe the
copyright of the original work. See 1 Nimmer § 3.01, at 3-3 (stating that "a work
will be considered a derivative work only if it would be considered an infringing
work" if it were unauthorized).
[10] By the same token, because a "film producer's appropriation of a composer's

previously unknown song that turns the song into a commercial success" is a market
substitute, that use is not made fair because it increases the market for the original
work. Campbell, 510 U.S. at 591 n. 21, 114 S.Ct. 1164.
[11] Just as secondary users may not exploit markets that original copyright owners
would "in general develop or license others to develop" even if those owners had
not actually done so, copyright owners may not preempt exploitation of
transformative markets, which they would not "in general develop or license others
to develop," by actually developing or licensing others to develop those markets.
Thus, by developing or licensing a market for parody, news reporting, educational
or other transformative uses of its own creative work, a copyright owner plainly
cannot prevent others from entering those fair use markets. See 4 Nimmer §
13.05[A][4], at 13-181-13-182 (recognizing "danger of circularity" where original
copyright owner redefines "potential market" by developing or licensing others to
develop that market); Texaco, 60 F.3d at 930 ("Only an impact on potential
licensing revenues for traditional, reasonable, or likely to be developed markets" is
relevant to fourth factor.).
[12] For any reader of this opinion still possessed by post-Seinfeld "cravings," the
answers to the trivia questions posed supra, at 3-4 & n. 2, are: 1-c, 11-"Junior
Mints," 12-a; matching: 1-f, 2-c, 3-i, 4-d, 5-a, 6-h, 7-e, 8-g, 9-j, 10-b.

7.2.2
Lee v. A.R.T. Company

United States Court of Appeals for the Seventh Circuit

125 F.3d 580
No. 96-2522
1997-09-18
125 F.3d 580
235 Copr.L.Dec. P 27,686, 44 U.S.P.Q.2d 1153
ChapterNumber:
270
Annie LEE and Annie Lee & Friends

Company, Inc., Plaintiffs-Appellants,
v.
A.R.T. COMPANY, also known as
Albuquerque A.R.T. Company,
Defendant-Appellee.
No. 96-2522.
United States Court of Appeals, Seventh Circuit.
Argued Feb. 10, 1997.
Decided Sept. 18, 1997.
[…]
EASTERBROOK, Circuit Judge.
Annie Lee creates works of art, which she sells through her firm Annie Lee &
Friends. Deck the Walls, a chain of outlets for modestly priced art, is among the
buyers of her works, which have been registered with the Register of Copyrights.
One Deck the Walls store sold some of Lee's notecards and small lithographs to
A.R.T. Company, which mounted the works on ceramic tiles (covering the art with
transparent epoxy resin in the process) and resold the tiles. Lee contends that these
tiles are derivative works, which under 17 U.S.C. § 106(2) may not be prepared
without the permission of the copyright proprietor. She seeks both monetary and
injunctive relief. Her position has the support of two cases holding that A.R.T.'s
business violates the copyright laws. [ … ] Mirage Editions, the only full appellate
discussion, dealt with pages cut from books and mounted on tiles; the court of
appeals' brief order in Muoz concludes that the reasoning of Mirage Editions is
equally applicable to works [581] of art that were sold loose. Our district court
disagreed with these decisions and entered summary judgment for the defendant.
925 F. Supp. 576 (N.D. Ill. 1996).
Now one might suppose that this is an open and shut case under the doctrine of first
sale, codified at 17 U.S.C. § 109(a). A.R.T. bought the work legitimately, mounted
it on a tile, and resold what it had purchased. Because the artist could capture the
value of her art's contribution to the finished product as part of the price for the
original transaction, the economic rationale for protecting an adaptation as
"derivative" is absent. [ … ]An alteration that includes (or consumes) a complete
copy of the original lacks economic significance. One work changes hands multiple
times, exactly what § 109(a) permits, so it may lack legal significance too. But §
106(2) creates a separate exclusive right, to "prepare derivative works", and Lee
believes that affixing the art to the tile is "preparation," so that A.R.T. would have
violated § 106(2) even if it had dumped the finished tiles into the Marianas Trench.
For the sake of argument we assume that this is so and ask whether card-on-a-tile is
a "derivative work" in the first place.
"Derivative work" is a defined term:
A "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,
271
annotations, elaborations, or other modifications which, as a whole,

represent an original work of authorship, is a "derivative work".
17 U.S.C. § 101. The district court concluded that A.R.T.'s mounting of Lee's works
on tile is not an "original work of authorship" because it is no different in form or
function from displaying a painting in a frame or placing a medallion in a velvet
case. No one believes that a museum violates § 106(2) every time it changes the
frame of a painting that is still under copyright, although the choice of frame or
glazing affects the impression the art conveys, and many artists specify frames (or
pedestals for sculptures) in detail. Munoz and Mirage Editions acknowledge that
framing and other traditional means of mounting and displaying art do not infringe
authors' exclusive right to make derivative works. Nonetheless, the ninth circuit
held, what A.R.T. does creates a derivative work because the epoxy resin bonds the
art to the tile. Our district judge thought this a distinction without a difference, and
we agree. If changing the way in which a work of art will be displayed creates a
derivative work, and if Lee is right about what "prepared" means, then the
derivative work is "prepared" when the art is mounted; what happens later is not
relevant, because the violation of the § 106(2) right has already occurred. If the
framing process does not create a derivative work, then mounting art on a tile,
which serves as a flush frame, does not create a derivative work. What is more, the
ninth circuit erred in assuming that normal means of mounting and displaying art
are easily reversible. A painting is placed in a wooden "stretcher" as part of the
framing process; this leads to some punctures (commonly tacks or staples), may
entail trimming the edges of the canvas, and may affect the surface of the painting
as well. Works by Jackson Pollock are notoriously hard to mount without damage,
given the thickness of their paint. As a prelude to framing, photographs, prints, and
posters may be mounted on stiff boards using wax sheets, but sometimes glue or
another more durable substance is employed to create the bond.
Lee wages a vigorous attack on the district court's conclusion that A.R.T.'s
mounting process cannot create a derivative work because the change to the work
"as a whole" is not sufficiently original to support a copyright. Cases such as
Gracen v. The Bradford Exchange, Inc., 698 F.2d 300 (7th Cir. 1983) , show that
neither A.R.T. nor Lee herself could have obtained a copyright in the card-on-a-tile,
thereby not only extending the period of protection for the images but also
eliminating competition in one medium of display. After the ninth circuit held that
its [582] mounting process created derivative works, A.R.T. tried to obtain a
copyright in one of its products; the Register of Copyrights sensibly informed
A.R.T. that the card-on-a-tile could not be copyrighted independently of the note
card itself. But Lee says that this is irrelevant--that a change in a work's appearance
may infringe the exclusive right under § 106(2) even if the alteration is too trivial to
support an independent copyright. Pointing to the word "original" in the second
sentence of the statutory definition, the district judge held that "originality" is
essential to a derivative work. This understanding has the support of both cases and
respected commentators. [ … ] Pointing to the fact that the first sentence in the
statutory definition omits any reference to originality, Lee insists that a work may
be derivative despite the mechanical nature of the transformation. This view, too,
has the support of both cases and respected commentators. [ … ]
Fortunately, it is not necessary for us to choose sides. Assume for the moment that
the first sentence recognizes a set of non-original derivative works. To prevail,
then, Lee must show that A.R.T. altered her works in one of the ways mentioned in
the first sentence. The tile is not an "art reproduction"; A.R.T. purchased and
ChapterNumber:
272
mounted Lee's original works. That leaves the residual clause: "any other form in
which a work may be recast, transformed, or adapted." None of these words fits
what A.R.T. did. Lee's works were not "recast" or "adapted". "Transformed" comes
closer and gives the ninth circuit some purchase for its view that the permanence of
the bond between art and base matters. Yet the copyrighted note cards and
lithographs were not "transformed" in the slightest. The art was bonded to a slab of
ceramic, but it was not changed in the process. It still depicts exactly what it
depicted when it left Lee's studio.[ … ] If mounting works a "transformation," then
changing a painting's frame or a photograph's mat equally produces a derivative
work. Indeed, if Lee is right about the meaning of the definition's first sentence,
then any alteration of a work, however slight, requires the author's permission. We
asked at oral argument what would happen if a purchaser jotted a note on one of the
note cards, or used it as a coaster for a drink, or cut it in half, or if a collector
applied his seal (as is common in Japan); Lee's counsel replied that such changes
prepare derivative works, but that as a practical matter artists would not file suit. A
definition of derivative work that makes criminals out of art collectors and tourists
is jarring despite Lee's gracious offer not to commence civil litigation.
If Lee (and the ninth circuit) are right about what counts as a derivative work, then
the United States has established through the back door an extraordinarily broad
version of authors' moral rights, under which artists may block any modification of
their works of which they disapprove. No European version of droit moral goes this
far. Until recently it was accepted wisdom that the United States did not enforce
any claim of moral rights; even bowdlerization of a work was permitted unless the
modifications produced a new work so different that it infringed the exclusive right
under § 106(2). [ … ] The Visual Artists Rights Act of 1990, Pub. L. 101-650, 104
Stat. 5089, 5123-33, moves federal law in the direction of moral rights, but the
cornerstone of the new statute, 17 U.S.C. § 106A, does not assist [583] Lee. Section
106A(a)(3)(A) gives an artist the right to "prevent any intentional distortion,
mutilation, or other modification of that work which would be prejudicial to his or
her honor or reputation". At oral argument Lee's lawyer disclaimed any contention
that the sale of her works on tile has damaged her honor or reputation. What is
more, § 106A applies only to a "work of visual art", a new term defined in § 101 to
mean either a unique work or part of a limited edition (200 copies or fewer) that has
been "signed and consecutively numbered by the author". Lee's note cards and
lithographs are not works of visual art under this definition, so she could not invoke
§ 106A even if A.R.T.'s use of her works to produce kitsch had damaged her
reputation. It would not be sound to use § 106(2) to provide artists with exclusive
rights deliberately omitted from the Visual Artists Rights Act. We therefore decline
to follow Munoz and Mirage Editions.[2]
AFFIRMED.
[1] Scholarly disapproval of Mirage Editions has been widespread. Goldstein § 5.3
at 5:81-82; Nimmer & Nimmer § 3.03; Wendy J. Gordon, On Owning Information:
Intellectual Property and the Restitutionary Impulse, 78 Va. L. Rev. 149, 255 n. 401
(1992).
[2] Because this opinion creates a conflict among the circuits, it has been circulated
to all judges in active service. See Circuit Rule 40(e). No judge requested a hearing
en banc.

273
7.2.3
Micro Star v. FormGen Inc.

154 F.3d 1107
MICRO STAR
v.
FORMGEN INC., [ … ]
United States Court of Appeals,
Ninth Circuit.
Argued and Submitted Nov. 4, 1997.

[…]
KOZINSKI, Circuit Judge.
Duke Nukem routinely vanquishes Octabrain and the Protozoid Slimer. But what
about the dreaded Micro Star?
I
FormGen Inc., GT Interactive Software Corp. and Apogee Software, Ltd.
(collectively FormGen) made, distributed and own the rights to Duke Nukem 3D
(D/N-3D), an immensely popular (and very cool) computer game. D/N-3D is played
from the first-person perspective; the player assumes the personality and point of
view of the title character, who is seen on the screen only as a pair of hands and an
occasional boot, much as one might see oneself in real life without the aid of a
mirror. [1] Players explore a futuristic city infested with evil aliens and other hazards.
The goal is to zap them before they zap you, while searching for the hidden passage
to the next level. The basic game comes with twenty-nine levels, each with a
different combination of scenery, aliens, and other challenges. The game also
includes a "Build Editor," a utility that enables players to create their own levels.
With FormGen's encouragement, players frequently post levels they have created on
the Internet where others can download them. Micro Star, a computer software
distributor, did just that: It downloaded 300 user-created levels and stamped them
onto a CD, which it then sold commercially as Nuke It (N/I). N/I is packaged in a
box decorated with numerous "screen shots," pictures of what the new levels look
like when played.
Micro Star filed suit in district court, seeking a declaratory judgment that N/I did
not infringe on any of FormGen's copyrights. FormGen counterclaimed, seeking a
preliminary injunction barring further production and distribution of N/I. Relying
on Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965 (9th Cir.1992),
ChapterNumber:
274
the district court held that N/I was not a derivative work and therefore did not
infringe FormGen's copyright. The district court did, however, grant a preliminary
injunction as to the screen shots, finding that N/I's packaging violated FormGen's
copyright by reproducing pictures of D/N-3D characters without a license. The
court rejected Micro Star's fair use claims. Both sides appeal their losses.
II
A party seeking a preliminary injunction must show "either a likelihood of success
on the merits and the possibility of irreparable injury, or that serious questions
going to the merits were raised and the balance of hardships tips sharply in its
favor." Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173,
1174 (9th Cir.1989). Because "in a copyright infringement claim, a showing of a
reasonable likelihood of success on the merits raises a presumption of irreparable
harm," id., FormGen need only show a likelihood of success on the merits to get the
preliminary injunction it seeks (barring the manufacture and distribution of N/I) and
to preserve the preliminary injunction it already won (barring the screen shots on
N/I's packaging).
III
To succeed on the merits of its claim that N/I infringes FormGen's copyright,
FormGen must show (1) ownership of the copyright to D/N-3D, and (2) copying of
protected expression by Micro Star. See Triad Systems Corp. v. Southeastern
Express Co., 64 F.3d 1330, 1335 (9th Cir.1995). FormGen's [1110] copyright
registration creates a presumption of ownership, see id., and we are satisfied that
FormGen has established its ownership of the copyright. We therefore focus on the
latter issue.
FormGen alleges that its copyright is infringed by Micro Star's unauthorized

commercial exploitation of user-created game levels. In order to understand
FormGen's claims, one must first understand the way D/N-3D works. The game
consists of three separate components: the game engine, the source art library and
the MAP files. [2] The game engine is the heart of the computer program; in some
sense, it is the program. It tells the computer when to read data, save and load
games, play sounds and project images onto the screen. In order to create the
audiovisual display for a particular level, the game engine invokes the MAP file
that corresponds to that level. Each MAP file contains a series of instructions that
tell the game engine (and, through it, the computer) what to put where. For
instance, the MAP file might say scuba gear goes at the bottom of the screen. The
game engine then goes to the source art library, finds the image of the scuba gear,
and puts it in just the right place on the screen. [3] The MAP file describes the level
in painstaking detail, but it does not actually contain any of the copyrighted art
itself; everything that appears on the screen actually comes from the art library.
Think of the game's audiovisual display as a paint-by-numbers kit. The MAP file
might tell you to put blue paint in section number 565, but it doesn't contain any
blue paint itself; the blue paint comes from your palette, which is the low-tech
analog of the art library, while you play the role of the game engine. When the
275
player selects one of the N/I levels, the game engine references the N/I MAP files,
but still uses the D/N-3D art library to generate the images that make up that level.
FormGen points out that a copyright holder enjoys the exclusive right to prepare
derivative works based on D/N-3D. See 17 U.S.C. § 106(2) (1994). According to
FormGen, the audiovisual displays generated when D/N-3D is run in conjunction
with the N/I CD MAP files are derivative works that infringe this exclusivity. Is
FormGen right? The answer is not obvious.
The Copyright Act defines a derivative work as

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 an original work of authorship,
is a "derivative work."
Id. § 101. The statutory language is hopelessly overbroad, however, for "[e]very
book in literature, science and art, borrows and must necessarily borrow, and use
much which was well known and used before." Emerson v. Davies, 8 F. Cas. 615,
619 (C.C.D.Mass.1845) (No. 4436), quoted in 1 Nimmer on Copyright, § 3.01, at 3-
2 (1997). To narrow the statute to a manageable level, we have developed certain
criteria a work must satisfy in order to qualify as a derivative work. One of these is
that a derivative work must exist in a "concrete or permanent form," Galoob, 964
F.2d at 967 (internal quotation marks omitted), and must substantially incorporate
protected material from the preexisting work, see Litchfield v. Spielberg, 736 F.2d
1352, 1357 (9th Cir.1984). Micro Star argues that N/I is not a derivative work
because the audiovisual displays generated when D/N-3D is run with N/I's MAP
files are [1111] not incorporated in any concrete or permanent form, and the MAP
files do not copy any of D/N-3D's protected expression. It is mistaken on both
counts.
The requirement that a derivative work must assume a concrete or permanent form
was recognized without much discussion in Galoob. There, we noted that all the
Copyright Act's examples of derivative works took some definite, physical form
and concluded that this was a requirement of the Act. See Galoob, 964 F.2d at 967-
68; see also Edward G. Black & Michael H. Page, Add-On Infringements, 15
Hastings Comm/Ent. L.J. 615, 625 (1993) (noting that in Galoob the Ninth Circuit
"re-examined the statutory definition of derivative works offered in section 101 and
found an independent fixation requirement of sorts built into the statutory definition
of derivative works"). Obviously, N/I's MAP files themselves exist in a concrete or
permanent form; they are burned onto a CD-ROM. See ProCD, Inc. v. Zeidenberg,
86 F.3d 1447, 1453 (7th Cir.1996) (computer files on a CD are fixed in a tangible
medium of expression). But what about the audiovisual displays generated when
D/N-3D runs the N/I MAP files--i.e., the actual game level as displayed on the
screen? Micro Star argues that, because the audiovisual displays in Galoob didn't
meet the "concrete or permanent form" requirement, neither do N/I's.
In Galoob, we considered audiovisual displays created using a device called the

Game Genie, which was sold for use with the Nintendo Entertainment System. The
Game Genie allowed players to alter individual features of a game, such as a
character's strength or speed, by selectively "blocking the value for a single data
ChapterNumber:
276
byte sent by the game cartridge to the [Nintendo console] and replacing it with a
new value." Galoob, 964 F.2d at 967. Players chose which data value to replace by
entering a code; over a billion different codes were possible. The Game Genie was
dumb; it functioned only as a window into the computer program, allowing players
to temporarily modify individual aspects of the game. See Lewis Galoob Toys, Inc.
v. Nintendo of Am., Inc., 780 F.Supp. 1283, 1289 (N.D.Cal.1991).
Nintendo sued, claiming that when the Game Genie modified the game system's
audiovisual display, it created an infringing derivative work. We rejected this claim
because "[a] derivative work must incorporate a protected work in some concrete or
permanent form." Galoob, 964 F.2d at 967 (internal quotation marks omitted). The
audiovisual displays generated by combining the Nintendo System with the Game
Genie were not incorporated in any permanent form; when the game was over, they
were gone. Of course, they could be reconstructed, but only if the next player chose
to reenter the same codes. [4]
Micro Star argues that the MAP files on N/I are a more advanced version of the
Game Genie, replacing old values (the MAP files in the original game) with new
values (N/I's MAP files). But, whereas the audiovisual displays created by Game
Genie were never recorded in any permanent form, the audiovisual displays
generated by D/N-3D from the N/I MAP files are in the MAP files themselves. In
Galoob, the audiovisual display was defined by the original game cartridge, not by
the Game Genie; no one could possibly say that the data values inserted by the
Game Genie described the audiovisual display. In the present case the audiovisual
display that appears on the computer monitor when a N/I level is played is
described--in exact detail--by a N/I MAP file.
This raises the interesting question whether an exact, down to the last detail,
description of an audiovisual display (and--by definition--we know that MAP files
do describe audiovisual displays down to the last detail) [1112] counts as a
permanent or concrete form for purposes of Galoob. We see no reason it shouldn't.
What, after all, does sheet music do but describe in precise detail the way a
copyrighted melody sounds? See 1 William F. Patry, Copyright Law and Practice
168 (1994) ("[A] musical composition may be embodied in sheet music...."). To be
copyrighted, pantomimes and dances may be "described in sufficient detail to
enable the work to be performed from that description." Id. at 243 (citing
Compendium II of Copyright Office Practices § 463); see also Horgan v.
Macmillan, Inc., 789 F.2d 157, 160 (2d Cir.1986). Similarly, the N/I MAP files
describe the audiovisual display that is to be generated when the player chooses to
play D/N-3D using the N/I levels. Because the audiovisual displays assume a
concrete or permanent form in the MAP files, Galoob stands as no bar to finding
that they are derivative works.
In addition, "[a] work will be considered a derivative work only if it would be

considered an infringing work if the material which it has derived from a
preexisting work had been taken without the consent of a copyright proprietor of
such preexisting work." Mirage Editions v. Albuquerque A.R.T. Co., 856 F.2d
1341, 1343 (quoting 1 Nimmer on Copyright § 3.01 (1986)) (internal quotation
marks omitted). "To prove infringement, [FormGen] must show that [D/N-3D's and
N/I's audiovisual displays] are substantially similar in both ideas and expression."
Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir.1984) (emphasis omitted).
Similarity of ideas may be shown by comparing the objective details of the works:
plot, theme, dialogue, mood, setting, characters, etc. See id. Similarity of
expression focuses on the response of the ordinary reasonable person, and considers
277
the total concept and feel of the works. See id. at 1356-57. FormGen will doubtless
succeed in making these showings since the audiovisual displays generated when
the player chooses the N/I levels come entirely out of D/N-3D's source art library.
Cf. Atari, Inc. v. North Am. Philips Consumer Elec. Corp., 672 F.2d 607, 620 (7th
Cir.1982) (finding two video games substantially similar because they shared the
same "total concept and feel").
Micro Star further argues that the MAP files are not derivative works because they
do not, in fact, incorporate any of D/N-3D's protected expression. In particular,
Micro Star makes much of the fact that the N/I MAP files reference the source art
library, but do not actually contain any art files themselves. Therefore, it claims,
nothing of D/N-3D's is reproduced in the MAP files. In making this argument,
Micro Star misconstrues the protected work. The work that Micro Star infringes is
the D/N-3D story itself--a beefy commando type named Duke who wanders around
post-Apocalypse Los Angeles, shooting Pig Cops with a gun, lobbing hand
grenades, searching for medkits and steroids, using a jetpack to leap over obstacles,
blowing up gas tanks, avoiding radioactive slime. A copyright owner holds the right
to create sequels, see Trust Co. Bank v. MGM/UA Entertainment Co., 772 F.2d 740
(11th Cir.1985), and the stories told in the N/I MAP files are surely sequels, telling
new (though somewhat repetitive) tales of Duke's fabulous adventures. A book
about Duke Nukem would infringe for the same reason, even if it contained no
pictures. [5]
Micro Star nonetheless claims that its use of D/N-3D's protected expression falls
within the doctrine of fair use, which permits unauthorized use of copyrighted
works "for purposes such as criticism, comment, news reporting, teaching
(including multiple copies for classroom use), scholarship, or research." 17 U.S.C.
§ 107; see Narell v. Freeman, 872 F.2d 907, 913 (9th Cir.1989). Section 107
instructs courts "determining whether the use made of a work in any particular case
is a fair use" to consider four factors: (1) the purpose and character of the use,
including whether it is commercial in nature; (2) the nature of the copyrighted
work; (3) the amount and substantiality of the copied material in relation to the
copyrighted work as a whole; and (4) the effect of the use on the potential market
for the copyrighted work. 17 U.S.C. § 107.
[1113] As a preliminary matter, Micro Star asks us to focus on the player's use of
the N/I CD in evaluating the fair use claim, because-according to Micro Star-the
player actually creates the derivative work. In Galoob, after we assumed for
purposes of argument that the Game Genie did create derivative works, we went on
to consider the fair use defense from the player's point of view. See Galoob, 964
F.2d at 970. But the fair use analysis in Galoob was not necessary and therefore is
clearly dicta. More significantly, Nintendo alleged only contributory infringement--
that Galoob was helping consumers create derivative works; FormGen here alleges
direct infringement by Micro Star, because the MAP files encompass new Duke
stories, which are themselves derivative works.
Our examination of the section 107 factors yields straightforward results. Micro
Star's use of FormGen's protected expression was made purely for financial gain.
While that does not end our inquiry, see Campbell v. Acuff-Rose Music, Inc., 510
U.S. 569, 584, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994), "every commercial use of
copyrighted material is presumptively an unfair exploitation of the monopoly
privilege that belongs to the owner of the copyright." Sony Corp. of Am. v.
Universal City Studios, Inc., 464 U.S. 417, 451, 104 S.Ct. 774, 78 L.Ed.2d 574
(1984). [6] The Supreme Court has explained that the second factor, the nature of the
ChapterNumber:
278
copyrighted work, is particularly significant because "some works are closer to the
core of intended copyright protection than others, with the consequence that fair use
is more difficult to establish when the former works are copied." Campbell, 510
U.S. at 586, 114 S.Ct. 1164. The fair use defense will be much less likely to
succeed when it is applied to fiction or fantasy creations, as opposed to factual
works such as telephone listings. See United Tel. Co. v. Johnson Publ'g Co., 855
F.2d 604, 609 (8th Cir.1988); see also Stewart v. Abend, 495 U.S. 207, 237, 110
S.Ct. 1750, 109 L.Ed.2d 184 (1990). Duke Nukem's world is made up of aliens,
radioactive slime and freezer weapons-clearly fantasies, even by Los Angeles
standards. N/I MAP files "expressly use[ ] the [D/N-3D] story's unique setting,
characters, [and] plot," Stewart, 495 U.S. at 238, 110 S.Ct. 1750; both the quantity
and importance of the material Micro Star used are substantial. Finally, by selling
N/I, Micro Star "impinged on [FormGen's] ability to market new versions of the
[D/N-3D] story." Stewart, 495 U.S. at 238, 110 S.Ct. 1750; see also Twin Peaks
Productions, Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1377 (2d Cir.1993).
Only FormGen has the right to enter that market; whether it chooses to do so is
entirely its business. "[N/I] neither falls into any of the categories enumerated in
section 107 nor meets the four criteria set forth in section 107." Stewart, 495 U.S. at
237, 110 S.Ct. 1750. It is not protected by fair use.
Micro Star also argues that it is the beneficiary of the implicit license FormGen
gave to its customers by authorizing them to create new levels. Section 204 of the
Copyright Act requires the transfer of the exclusive rights granted to copyright
owners (including the right to prepare derivative works) to be in writing. See 17
U.S.C. § 204(a); Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 556 (9th Cir.1990).
A nonexclusive license may, however, be granted orally or implied by conduct. See
Effects, 908 F.2d at 558. Nothing indicates that FormGen granted Micro Star any
written license at all; nor is there evidence of a nonexclusive oral license. The only
written license FormGen conceivably granted was to players who designed their
own new levels, but that license contains a significant limitation: Any new levels
the players create "must be offered [to others] solely for free." The parties dispute
whether the license is binding, but it doesn't matter. If the license is valid, it clearly
prohibits commercial distribution of levels; if it doesn't, FormGen hasn't granted
any written licenses at all. [7]
[1114] In case FormGen didn't license away its rights, Micro Star argues that, by
providing the Build Editor and encouraging players to create their own levels,
FormGen abandoned all rights to its protected expression. It is well settled that
rights gained under the Copyright Act may be abandoned. But abandonment of a
right must be manifested by some overt act indicating an intention to abandon that
right. [ … ] Given that it overtly encouraged players to make and freely distribute
new levels, FormGen may indeed have abandoned its exclusive right to do the
same. But abandoning some rights is not the same as abandoning all rights, and
FormGen never overtly abandoned its rights to profit commercially from new
levels. Indeed, FormGen warned players not to distribute the levels commercially
and has actively enforced that limitation by bringing suits such as this one.
IV
Because FormGen will likely succeed at trial in proving that Micro Star has
infringed its copyright, we reverse the district court's order denying a preliminary
279
injunction and remand for entry of such an injunction. Of course, we affirm the
grant of the preliminary injunction barring Micro Star from selling N/I in boxes
covered with screen shots of the game. [8]
AFFIRMED in part, REVERSED in part, and REMANDED. Micro Star to bear

costs of both appeals.
[…]

7.3

Indian materials

7.3.1
R.G. Anand v. Delux Films


7.3.2
Star India v. Leo Burnett


7.3.3
Zee Telefilms v. Sundial Telecommunications

http://indiankanoon.org/doc/603848

ChapterNumber:
280

281
8
Week 8

ChapterNumber:
282

8.1

Distribution and First Sale

8.1.1
Hotaling v. Church of Jesus Christ of Latter-Day

Saints

United States Court of Appeals for the Fourth Circuit

118 F.3d 199
No. 96-1399
1997-06-30
118 F.3d 199
[ … ]9
Donna R. HOTALING; William W. Hotaling,

Jr.; James P.
Maher; Dorothy C. Sherwood, Plaintiffs-
Appellants,
v.
CHURCH OF JESUS CHRIST OF LATTER-
DAY SAINTS, Defendant-Appellee [ … ]
.
United States Court of Appeals,
Fourth Circuit.
Argued Jan. 29, 1997.
Decided June 30, 1997[ … ]
Before HALL and LUTTIG, Circuit Judges, and BUTZNER, Senior Circuit
Judge[ … ]
N
BUTZNER, Senior Circuit Judge:
283
In this appeal we hold that a library distributes a published work, within the
meaning of the Copyright Act, 17 U.S.C. §§ 101 et seq., when it places an
unauthorized copy of the work in its collection, includes the copy in its catalog or
index system, and makes the copy available to the public. Because the district court
ruled that these actions, by themselves, were insufficient to constitute distribution,
we reverse the district court's summary judgment for the library and remand this
case for further proceedings.
Summary judgment is appropriate only if the record reveals no genuine issues of

material fact and the moving party is entitled to judgment as a matter of law.
Fed.R.Civ.P. 56(c). We review the entry of summary judgment de novo, applying
the same standard as the district court.[ … ].
I
We present the facts in the light most favorable to the plaintiffs, Donna Hotaling,
William Hotaling, Jr., James Maher, and Dorothy Sherwood (collectively the
Hotalings).[ … ]. The Hotalings compiled and copyrighted a number of
genealogical research materials. The validity of the copyrights is not at issue at this
stage of the litigation. The Hotaling research materials were published in
microfiche form and marketed by All-Ireland Heritage, Inc. At some point, most
likely between 1985 and 1989, the defendant, the Church of Jesus Christ of Latter-
Day Saints (Church), acquired a single legitimate copy of the microfiche and added
it to its main library's collection in Salt Lake City, Utah. Sometime before 1992, the
Church made microfiche copies of the works without the Hotalings' permission and
sent the copies to several of its branch libraries, located throughout the country.
The legitimately acquired copy had a black background, and the copies that were
made by the Church had purple backgrounds.
In July, 1991, Donna Hotaling learned that the Church was making copies and
placing them in its branch libraries. She contacted the Church and demanded that it
stop this activity. After receiving her complaint, the Church recalled and destroyed
many of the copies that it had made. According to the [202] affidavits submitted by
the Church, it did not make any copies after 1991, and there is no evidence to
contradict that assertion.
In 1992, All-Ireland Heritage, Inc., sued the Church for copyright infringement
based on the Church's copying and distribution of the Hotaling works. The district
court dismissed the action because All-Ireland Heritage, Inc., did not own the
copyright. As a result of the lawsuit, the Church became concerned that nine of its
branch libraries might still possess copies of the Hotaling works. In October, 1993,
the Church sent a memorandum to those branch libraries asking them to search their
microfiche inventories for copies of the works. Six libraries found and returned one
microfiche copy each. Upon receipt, the main library destroyed these copies.
In 1994, Donna Hotaling visited a branch library in Rhode Island. During her visit,
she discovered a paper copy of one of the Hotaling works. According to the Rhode
Island library director, a patron made the copy and left it in an infrequently used
section of the library. The director had been unaware, and believes the other staff
members had been unaware, of the copy's existence. When the copy was
discovered, the director destroyed it. Prior to April 1992, the Rhode Island library
ChapterNumber:
284
had returned to the Church's main library the microfiche from which the patron
apparently had made the paper copy.
In 1995, Donna Hotaling went to the Church's main library in Salt Lake City. There
she observed that the library maintained a microfiche copy of the Hotaling works in
its collection. She examined a portion of the microfiche and noticed that it had a
purple background. The Church acknowledges that the single copy it keeps in its
collection is one that it made. The library retained this copy, the Church explains,
because the copy it originally acquired was destroyed inadvertently.
In August, 1995, the Hotalings filed this suit. Following discovery, the Church
moved for summary judgment, arguing that the record did not include any evidence
of an infringing act within the three year statute of limitations. The district court
granted the motion, and the Hotalings appealed.
II
The applicable statute of limitations bars civil copyright actions brought more than
three years after the claim accrues. 17 U.S.C. § 507(b). "A cause of action for
copyright infringement accrues when one has knowledge of a violation or is
chargeable with such knowledge." Roley v. New World Pictures, Ltd., 19 F.3d 479,
481 (9th Cir.1994). A party does not waive the right to sue for infringements that
accrue within three years of filing by not asserting related claims that accrued
beyond three years.[ … ]. In addition, under the prevailing view, a party cannot
reach back, based on acts of infringement that accrued within the limitations period,
and recover for claims that accrued outside the limitations period. [ … ].
Hotaling filed this lawsuit in August, 1995. As a result, the statute of limitations
bars recovery on claims that accrued before August, 1992. It is undisputed that any
claim based on the Church's copying of Hotaling's works, which ceased by 1991, or
on the original distribution of those copies from the main library to the branch
libraries, which took place in or before 1991, is untimely. Those claims accrued in
1991 when Hotaling learned that the Church was copying and distributing her
works.
In support of its summary judgment motion, the Church argued that there is no
evidence of an infringing act within the limitations period. The district court found
that the evidence, construed in Hotaling's favor, showed at most that the branch
libraries possessed copies within the limitations period. The court granted the
motion because it concluded that, without any evidence of copying or specific
instances of distribution to the public within the limitations period, Hotaling could
not prevail.[203]
III
A copyright infringement is a violation of "any of the exclusive rights of the
copyright owner." 17 U.S.C. § 501(a). One of those exclusive rights is the right "to
distribute copies ... of the copyrighted work to the public by sale or other transfer of
ownership, or by rental, lease, or lending[.]" 17 U.S.C. § 106(3). Generally, as
permitted by what is known as the first-sale doctrine, the copyright owner's right to
285
distribute a copyrighted work does not prevent the owner of a lawful copy of the
work from selling, renting, lending, or otherwise disposing of the lawful copy. 17
U.S.C. § 109(a[ … ]). For example, a library may lend an authorized copy of a book
that it lawfully owns without violating the copyright laws.[ … ]. However,
distributing unlawful copies of a copyrighted work does violate the copyright
owner's distribution right and, as a result, constitutes copyright infringement. In
order to establish "distribution" of a copyrighted work, a party must show that an
unlawful copy was disseminated "to the public." 17 U.S.C. § 106(3[ … ]7.
The Hotalings assert that the Church's libraries infringed their copyrights by
distributing unauthorized copies of their works to the public. The libraries did not
record public use of the microfiche. Consequently, the Hotalings concede that the
record does not contain any evidence showing specific instances within the
limitations period in which the libraries loaned the infringing copies to members of
the public. But, they argue that proving the libraries held unauthorized copies in
their collections, where they were available to the public, is sufficient to establish
distribution within the meaning of the statute.
The Church, on the other hand, argues that holding a work in a library collection
that is open to the public constitutes, at most, an offer to distribute the work. In
order to establish distribution, the Church argues, the evidence would need to show
that a member of the public accepted such an offer.
On this issue, we agree with the Hotalings. When a public library adds a work to its
collection, lists the work in its index or catalog system, and makes the work
available to the borrowing or browsing public, it has completed all the steps
necessary for distribution to the public. At that point, members of the public can
visit the library and use the work. Were this not to be considered distribution within
the meaning of § 106(3), a copyright holder would be prejudiced by a library that
does not keep records of public use, and the library would unjustly profit by its own
omission.
IV
The Church argues that, even if holding a copyrighted work in a library's collection
does constitute distribution within the meaning of the statute, there is no evidence
showing that, within the limitations period, unauthorized copies of the Hotaling
works were available to the public at any of its libraries. In response, the Hotalings
point to the copy Donna Hotaling examined in Salt Lake City in 1995, the paper
copy she found in Rhode Island in 1994, and the six copies that were returned and
destroyed in 1993.
The Hotalings presented sufficient evidence to create a genuine issue over whether
the copy Donna Hotaling examined in Salt Lake City was being distributed to the
public in 1995. According to Donna Hotaling's personal observations, that copy was
part of the library's collection, listed in the card file, and available to the public. In
addition, she asserts that the copy she inspected had a purple background. Based on
this evidence, a reasonable jury could conclude that the library held an
unauthorized copy of the Hotaling works in its publicly-accessible collection within
the limitations period. Because the evidence is sufficient to show that this
potentially infringing copy was being distributed to the public as recently as 1995,
it provides a timely basis for Hotaling's suit.
ChapterNumber:
286
[204] Although the Church acknowledges that its sole remaining copy is not the one
it originally acquired from All-Ireland Heritage, Inc., it maintains that the
remaining copy does not infringe Hotaling's copyright because it is a replacement
copy, authorized by 17 U.S.C. § 108. The Copyright Act does permit libraries to
make a replacement copy of a copyrighted work that has been published, but only if
the library "has, after a reasonable effort, determined that an unused replacement
cannot be obtained at a fair price," § 108(c), and the library has complied with other
pertinent provisions of § 108. Because the district court did not reach this issue, we
decline to address it for the first time on appeal[ … ]
[…]
VI
The Hotalings presented evidence that suggests the Church distributed at its main
library one potentially infringing copy of the Hotaling works to the public within
the limitations period. For that reason, dismissal of [205] the suit based on the
statute of limitations was inappropriate. Accordingly, we reverse and remand to the
district court for adjudication of the Hotalings' surviving claim. If the district court
finds that the Church complied with § 108, it should dismiss this action. If the court
finds that the Church did not comply with § 108, it should conduct further
proceedings on outstanding claims, including the validity of the copyright.
REVERSED AND REMANDE[ … ]
.

8.1.2
Kirtsaeng v. John Wiley & Sons, Inc.

568 U.S. ____ (2013)
KIRTSAENG, DBA BLUECHRISTINE99

v.
JOHN WILEY & SONS, INC.
SUPREME COURT OF THE UNITED STATES
[…]
Argued October 29, 2012—Decided March 19, 2013
[…]
287
Opinion
[1] JUSTICE BREYER delivered the opinion

of the Court.
Section 106 of the Copyright Act grants “the owner of copyright under this title”
certain “exclusive rights,” including the right “to distribute copies . . . of the
copyrighted work to the public by sale or other transfer of ownership.” 17 U. S. C.
§106(3). These rights are qualified, however, by the application of various
limitations set forth in the next several sections of the Act, §§107 through 122.
Those sections, typically entitled “Limitations on exclusive rights,” include, for
example, the principle of “fair use” (§107), permission for limited library archival
reproduction, (§108), and the doctrine at issue here, the “first sale” doctrine (§109).
Section 109(a) sets forth the “first sale” doctrine as follows:
“Notwithstanding the provisions of section 106(3) [the section that grants

the owner exclusive distribution rights], the owner of a particular copy or
phonorecord lawfully made under this title . . . is entitled, without the
authority of the copyright owner, to sell or otherwise dispose of the
possession of that copy or [2] phonorecord.” (Emphasis added.)
Thus, even though §106(3) forbids distribution of a copy of, say, the copyrighted
novel Herzog without the copyright owner’s permission, §109(a) adds that, once a
copy of Herzog has been lawfully sold (or its ownership otherwise lawfully
transferred), the buyer of that copy and subsequent owners are free to dispose of it
as they wish. In copyright jargon, the “first sale” has “exhausted” the copyright
owner’s §106(3) exclusive distribution right.
What, however, if the copy of Herzog was printed abroad and then initially sold
with the copyright owner’s permission? Does the “first sale” doctrine still apply? Is
the buyer, like the buyer of a domestically manufactured copy, free to bring the
copy into the United States and dispose of it as he or she wishes?
To put the matter technically, an “importation” provision, §602(a)(1), says that
“[i]mportation into the United States, without the authority of the owner
of copyright under this title, of copies . . . of a work that have been
acquired outside the United States is an infringement of the exclusive right
to distribute copies . . . under section 106 . . . .” 17 U. S. C. §602(a)(1)
(2006 ed., Supp. V) (emphasis added).
Thus §602(a)(1) makes clear that importing a copy without permission violates the
owner’s exclusive distribution right. But in doing so, §602(a)(1) refers explicitly to
the §106(3) exclusive distribution right. As we have just said, §106 is by its terms
“[s]ubject to” the various doctrines and principles contained in §§107 through 122,
including §109(a)’s “first sale” limitation. Do those same modifications apply—in
particular, does the “first sale” modification apply—when considering whether
§602(a)(1) prohibits importing a copy?
In Quality King Distributors, Inc. v. L’anza Research [3] Int’l, Inc., 523 U. S. 135,
145 (1998), we held that §602(a)(1)’s reference to §106(3)’s exclusive distribution
ChapterNumber:
288
right incorporates the later subsections’ limitations, including, in particular, the

“first sale” doctrine of §109. Thus, it might seem that, §602(a)(1) notwithstanding,
one who buys a copy abroad can freely import that copy into the United States and
dispose of it, just as he could had he bought the copy in the United States.
But Quality King considered an instance in which the copy, though purchased
abroad, was initially manufactured in the United States (and then sent abroad and
sold). This case is like Quality King but for one important fact. The copies at issue
here were manufactured abroad. That fact is important because §109(a) says that
the “first sale” doctrine applies to “a particular copy or phonorecord lawfully made
under this title.” And we must decide here whether the five words, “lawfully made
under this title,” make a critical legal difference.
Putting section numbers to the side, we ask whether the “first sale” doctrine applies
to protect a buyer or other lawful owner of a copy (of a copyrighted work) lawfully
manufactured abroad. Can that buyer bring that copy into the United States (and
sell it or give it away) without obtaining permission to do so from the copyright
owner? Can, for example, someone who purchases, say at a used bookstore, a book
printed abroad subsequently resell it without the copyright owner’s permission?
In our view, the answers to these questions are, yes. We hold that the “first sale”
doctrine applies to copies of a copyrighted work lawfully made abroad.
I
A
Respondent, John Wiley & Sons, Inc., publishes academic textbooks. Wiley obtains
from its authors various foreign and domestic copyright assignments, licenses and
[4] permissions—to the point that we can, for present purposes, refer to Wiley as
the relevant American copyright owner. See 654 F. 3d 210, 213, n. 6 (CA2 2011).
Wiley often assigns to its wholly owned foreign subsidiary, John Wiley & Sons
(Asia) Pte Ltd., rights to publish, print, and sell Wiley’s English language textbooks
abroad. App. to Pet. for Cert. 47a–48a. Each copy of a Wiley Asia foreign edition
will likely contain language making clear that the copy is to be sold only in a
particular country or geographical region outside the United States. 654 F. 3d, at
213.
For example, a copy of Wiley’s American edition says, “Copyright © 2008 John
Wiley & Sons, Inc. All rights reserved. . . . Printed in the United States of
America.” J. Walker, Fundamentals of Physics, p. vi (8th ed. 2008). A copy of
Wiley Asia’s Asian edition of that book says:
“Copyright © 2008 John Wiley & Sons (Asia) Pte Ltd[.] All rights
reserved. This book is authorized for sale in Europe, Asia, Africa, and the
Middle East only and may be not exported out of these territories.
Exportation from or importation of this book to another region without the
Publisher’s authorization is illegal and is a violation of the Publisher’s
rights. The Publisher may take legal action to enforce its rights. . . .
Printed in Asia.” J. Walker, Fundamentals of Physics, p. vi (8th ed. 2008
Wiley Int’l Student ed.).
Both the foreign and the American copies say:

289
“No part of this publication may be reproduced, stored in a retrieval

system, or transmitted in any form or by any means . . . except as
permitted under Sections 107 or 108 of the 1976 United States Copyright
Act.” Compare, e.g., ibid. (Int’l ed.), with Walker, supra, at vi (American
ed.).
The upshot is that there are two essentially equivalent versions of a Wiley textbook,
654 F. 3d, at 213, each [5] version manufactured and sold with Wiley’s permission:
(1) an American version printed and sold in the United States, and (2) a foreign
version manufactured and sold abroad. And Wiley makes certain that copies of the
second version state that they are not to be taken (without permission) into the
United States. Ibid.
Petitioner, Supap Kirtsaeng, a citizen of Thailand, moved to the United States in

1997 to study mathematics at Cornell University. Ibid. He paid for his education
with the help of a Thai Government scholarship which required him to teach in
Thailand for 10 years on his return. Brief for Petitioner 7. Kirtsaeng successfully
completed his undergraduate courses at Cornell, successfully completed a Ph. D.
program in mathematics at the University of Southern California, and then, as
promised, returned to Thailand to teach. Ibid. While he was studying in the United
States, Kirtsaeng asked his friends and family in Thailand to buy copies of foreign
edition English language textbooks at Thai book shops, where they sold at low
prices, and mail them to him in the United States. Id., at 7–8. Kirtsaeng would then
sell them, reimburse his family and friends, and keep the profit. App. to Pet. for
Cert. 48a–49a.
B
In 2008 Wiley brought this federal lawsuit against Kirtsaeng for copyright
infringement. 654 F. 3d, at 213. Wiley claimed that Kirtsaeng’s unauthorized
importation of its books and his later resale of those books amounted to an
infringement of Wiley’s §106(3) exclusive right to distribute as well as §602’s
related import prohibition. [ … ]Kirtsaeng replied that the books he had acquired
were “ ‘lawfully made’ ” and that he had acquired them legitimately. Record in No.
1:08–CV–7834–DCP [6] (SDNY), Doc. 14, p. 3. Thus, in his view, §109(a)’s “first
sale” doctrine permitted him to resell or otherwise dispose of the books without the
copyright owner’s further permission. Id., at 2–3.
The District Court held that Kirtsaeng could not assert the “first sale” defense
because, in its view, that doctrine does not apply to “foreign-manufactured goods”
(even if made abroad with the copyright owner’s permission). App. to Pet. for Cert.
72a. The jury then found that Kirtsaeng had willfully infringed Wiley’s American
copyrights by selling and importing without authorization copies of eight of
Wiley’s copyrighted titles. And it assessed statutory damages of $600,000 ($75,000
per work). 654 F. 3d, at 215.
On appeal, a split panel of the Second Circuit agreed with the District Court. [ … ]
We granted Kirtsaeng’s petition for certiorari to consider this question in light of

different views among the Circuits. Compare id., at 221 (case below) (“first sale”
doctrine does not apply to copies manufactured outside the United States), with
Omega S. A. v. Costco Wholesale Corp., 541 F. 3d 982, 986 (CA9 2008) (“first
ChapterNumber:
290
sale” doctrine applies to copies manufactured outside the United States only if an
authorized first sale occurs within the United [7] States), aff ’d by an equally
divided court, 562 U. S. (2010), and Sebastian Int’l, Inc. v. Consumer Contacts
(PTY) Ltd., 847 F. 2d 1093, 1098, n. 1 (CA3 1988) (limitation of the first sale
doctrine to copies made within the United States “does not fit comfortably within
the scheme of the Copyright Act”).
II
We must decide whether the words “lawfully made under this title” restrict the
scope of §109(a)’s “first sale” doctrine geographically. The Second Circuit, the
Ninth Circuit, Wiley, and the Solicitor General (as amicus) all read those words as
imposing a form of geographical limitation. The Second Circuit held that they limit
the “first sale” doctrine to particular copies “made in territories in which the
Copyright Act is law,” which (the Circuit says) are copies “manufactured
domestically,” not “outside of the United States.” 654 F. 3d, at 221–222 (emphasis
added). Wiley agrees that those five words limit the “first sale” doctrine “to copies
made in conformance with the [United States] Copyright Act where the Copyright
Act is applicable,” which (Wiley says) means it does not apply to copies made
“outside the United States” and at least not to “foreign production of a copy for
distribution exclusively abroad.” Brief for Respondent 15–16. Similarly, the
Solicitor General says that those five words limit the “first sale” doctrine’s
applicability to copies “ ‘made subject to and in compliance with [the Copyright
Act],’ ” which (the Solicitor General says) are copies “made in the United States.”
Brief for United States as Amicus Curiae 5 (hereinafter Brief for United States)
(emphasis added). And the Ninth Circuit has held that those words limit the “first
sale” doctrine’s applicability (1) to copies lawfully made in the United States, and
(2) to copies lawfully made outside the United States but initially sold in the United
States with the copyright owner’s permission. [ … ]
Under any of these geographical interpretations, §109(a)’s “first sale” doctrine

would not apply to the Wiley Asia books at issue here. And, despite an American
copyright owner’s permission to make copies abroad, one who buys a copy of any
such book or other copyrighted work— whether at a retail store, over the Internet,
or at a library sale—could not resell (or otherwise dispose of) that particular copy
without further permission.
Kirtsaeng, however, reads the words “lawfully made under this title” as imposing a
non-geographical limitation. He says that they mean made “in accordance with” or
“in compliance with” the Copyright Act. Brief for Petitioner 26. In that case,
§109(a)’s “first sale” doctrine would apply to copyrighted works as long as their
manufacture met the requirements of American copyright law. In particular, the
doctrine would apply where, as here, copies are manufactured abroad with the
permission of the copyright owner. See §106 (referring to the owner’s right to
authorize).
In our view, §109(a)’s language, its context, and the common-law history of the
“first sale” doctrine, taken together, favor a non-geographical interpretation. We
also doubt that Congress would have intended to create the practical copyright-
related harms with which a geographical interpretation would threaten ordinary
scholarly, artistic, commercial, and consumer activities. See Part II– D, infra. We
291
consequently conclude that Kirtsaeng’s nongeographical reading is the better

reading of the Act.
A
The language of §109(a) read literally favors Kirtsaeng’s nongeographical
interpretation, namely, that “lawfully made under this title” means made “in
accordance with” or “in compliance with” the Copyright Act. The language of [9]
§109(a) says nothing about geography. The word “under” can mean “[i]n
accordance with.” 18 Oxford English Dictionary 950 (2d ed. 1989). See also
Black’s Law Dictionary 1525 (6th ed. 1990) (“according to”). And a
nongeographical interpretation provides each word of the five-word phrase with a
distinct purpose. The first two words of the phrase, “lawfully made,” suggest an
effort to distinguish those copies that were made lawfully from those that were not,
and the last three words, “under this title,” set forth the standard of “lawful[ness].”
Thus, the nongeographical reading is simple, it promotes a traditional copyright
objective (combatting piracy), and it makes word-by-word linguistic sense.
The geographical interpretation, however, bristles with linguistic difficulties. [ … ]
B
Both historical and contemporary statutory context indicate that Congress, when
writing the present version of §109(a), did not have geography in mind. In respect
to history, we compare §109(a)’s present language with the language of its
immediate predecessor. That predecessor said:
“[N]othing in this Act shall be deemed to forbid, prevent, or restrict the

transfer of any copy of a copyrighted work the possession of which has
been lawfully obtained.” Copyright Act of 1909, §41, 35 Stat. 1084
(emphasis added).
See also Copyright Act of 1947, §27, 61 Stat. 660. The predecessor says nothing
about geography (and Wiley does not argue that it does). So we ask whether
Congress, in changing its language implicitly introduced a geographical limitation
that previously was lacking. [ … ] A comparison of language indicates that it did
not. The [13] predecessor says that the “first sale” doctrine protects “the transfer of
any copy the possession of which has been lawfully obtained.” The present version
says that “the owner of a particular copy or phonorecord lawfully made under this
title is entitled to sell or otherwise dispose of the possession of that copy or
phonorecord.” What does this change in language accomplish?
The language of the former version referred to those who are not owners of a copy,
but mere possessors who “lawfully obtained” a copy. The present version covers
only those who are owners of a “lawfully made” copy. Whom does the change leave
out? Who might have lawfully obtained a copy of a copyrighted work but not
owned that copy? One answer is owners of movie theaters, who during the 1970’s
(and before) often leased films from movie distributors or filmmakers. [ … ]
Because the theater owners had “lawfully obtained” their copies, the earlier version
could be read as allowing them to sell that copy, i.e., it might have given them “first
ChapterNumber:
292
sale” protection. Because the theater owners were lessees, not owners, of their
copies, the change in language makes clear that they (like bailees and other lessees)
cannot take advantage of the “first sale” doctrine.[ … ]
This objective perfectly well explains the new language of the present version,
including the five words here at issue. Section 109(a) now makes clear that a lessee
of a copy will not receive “first sale” protection but one who owns a copy will
receive “first sale” protection, provided, of course, that the copy was “lawfully
made” and not pirated. The new language also takes into account that a copy may
be “lawfully made under this title” when the copy, say of a phonorecord, comes into
its owner’s possession through use of a compulsory license, which “this title”
provides for elsewhere, namely, in §115. [ … ]
Other provisions of the present statute also support a nongeographical

interpretation. For one thing, the statute phases out the “manufacturing clause,” a
clause that appeared in earlier statutes and had limited importation of many copies
(of copyrighted works) printed outside the United States. [ … ]The phasing out of
this clause sought to equalize treatment of copies manufactured in America and
copies manufactured abroad. See H. R. Rep. No. 94–1476, at 165–166.
[15] The “equal treatment” principle, however, is difficult to square with a

geographical interpretation of the “first sale” clause that would grant the holder of
an American copyright (perhaps a foreign national, see supra, at 10) permanent
control over the American distribution chain (sales, resales, gifts, and other
distribution) in respect to copies printed abroad but not in respect to copies printed
in America. And it is particularly difficult to believe that Congress would have
sought this unequal treatment while saying nothing about it and while, in a related
clause (the manufacturing phase-out), seeking the opposite kind of policy goal.
[…]
Finally, we normally presume that the words “lawfully made under this title” carry
the same meaning when they appear in different but related sections. [ … ] But
doing so here produces surprising consequences. Consider:
(1) Section 109(c) says that, despite the copyright owner’s exclusive right
“to display” a copyrighted work (provided in §106(5)), the owner of a
particular copy “lawfully made under this title” may publicly display it
without further authorization. To interpret these words geographically
would mean that one who buys a copyrighted work of art, a poster, or even
a bumper sticker, in Canada, in Europe, in Asia, could not display it in
America without the copyright owner’s further authorization.
(2) Section 109(e) specifically provides that the owner [16] of a particular
copy of a copyrighted video arcade game “lawfully made under this title”
may “publicly perform or display that game in coin-operated equipment”
without the authorization of the copyright owner. To interpret these words
geographically means that an arcade owner could not (“without the
authority of the copyright owner”) perform or display arcade games
(whether new or used) originally made in Japan. Cf. Red Baron Franklin
Park, Inc. v. Taito Corp., 883 F. 2d 275 (CA4 1989).
(3) Section 110(1) says that a teacher, without the copyright owner’s
authorization, is allowed to perform or display a copyrighted work (say,
an audiovisual work) “in the course of face-to-face teaching activities”—
293
unless the teacher knowingly used “a copy that was not lawfully made
under this title.” To interpret these words geographically would mean that
the teacher could not (without further authorization) use a copy of a film
during class if the copy was lawfully made in Canada, Mexico, Europe,
Africa, or Asia.
(4) In its introductory sentence, §106 provides the Act’s basic exclusive
rights to an “owner of a copyright under this title.” The last three words
cannot support a geographic interpretation.
Wiley basically accepts the first three readings, but argues that Congress intended
the restrictive consequences. And it argues that context simply requires that the
words of the fourth example receive a different interpretation. Leaving the fourth
example to the side, we shall explain in Part II–D, infra, why we find it unlikely
that Congress would have intended these, and other related consequences.
[17] C
A relevant canon of statutory interpretation favors a nongeographical reading.
“[W]hen a statute covers an issue previously governed by the common law,” we
must presume that “Congress intended to retain the substance of the common law.”
Samantar v. Yousuf, 560 U. S. _ , n. 13 (2010) (slip op., at 14, n. 13). [ … ]
The “first sale” doctrine is a common-law doctrine with an impeccable historic

pedigree. In the early 17th century Lord Coke explained the common law’s refusal
to permit restraints on the alienation of chattels. Referring to Littleton, who wrote
in the 15th century, Gray, Two Contributions to Coke Studies, 72 U. Chi. L. Rev.
1127, 1135 (2005), Lord Coke wrote:
“[If] a man be possessed of . . . a horse, or of any other chattell . . . and

give or sell his whole interest . . . therein upon condition that the Donee or
Vendee shall not alien[ate] the same, the [condition] is voi[d], because his
whole interest . . . is out of him, so as he hath no possibilit[y] of a
Reverter, and it is against Trade and Traffi[c], and bargaining and
contracting betwee[n] man and man: and it is within the reason of our
Author that it should ouster him of all power given to him.” 1 E. Coke,
Institutes of the Laws of England §360, p. 223 (1628).
A law that permits a copyright holder to control the resale or other disposition of a
chattel once sold is similarly “against Trade and Traffi[c], and bargaining and
contracting.” Ibid.
With these last few words, Coke emphasizes the im-[18]-portance of leaving buyers
of goods free to compete with each other when reselling or otherwise disposing of
those goods. American law too has generally thought that competition, including
freedom to resell, can work to the advantage of the consumer. [ … ]
The “first sale” doctrine also frees courts from the administrative burden of trying
to enforce restrictions upon difficult-to-trace, readily movable goods. And it avoids
the selective enforcement inherent in any such effort. Thus, it is not surprising that
for at least a century the “first sale” doctrine has played an important role in
ChapterNumber:
294
American copyright law. See Bobbs-Merrill Co. v. Straus, 210 U. S. 339 (1908)[ …
].
The common-law doctrine makes no geographical distinctions; nor can we find any
in Bobbs-Merrill (where this Court first applied the “first sale” doctrine) or in
§109(a)’s predecessor provision, which Congress enacted a year later. See supra, at
12. Rather, as the Solicitor General acknowledges, “a straightforward application of
Bobbs-Merrill” would not preclude the “first sale” defense from applying to
authorized copies made overseas. Brief for [19] United States 27. And we can find
no language, context, purpose, or history that would rebut a “straightforward
application” of that doctrine here.
The dissent argues that another principle of statutory interpretation works against
our reading, and points out that elsewhere in the statute Congress used different
words to express something like the non-geographical reading we adopt. Post, at 8–
9 (quoting §602(a)(2) (prohibiting the importation of copies “the making of which
either constituted an infringement of copyright, or which would have constituted an
infringement of copyright if this title had been applicable” (emphasis deleted))).
Hence, Congress, the dissent believes, must have meant §109(a)’s different
language to mean something different (such as the dissent’s own geographical
interpretation of §109(a)). We are not aware, however, of any canon of
interpretation that forbids interpreting different words used in different parts of the
same statute to mean roughly the same thing. Regardless, were there such a canon,
the dissent’s interpretation of §109(a) would also violate it. That is because
Congress elsewhere in the 1976 Act included the words “manufactured in the
United States or Canada,” 90 Stat. 2588, which express just about the same
geographical thought that the dissent reads into §109(a)’s very different language.
D
Associations of libraries, used-book dealers, technology companies, consumer-
goods retailers, and museums point to various ways in which a geographical
interpretation would fail to further basic constitutional copyright objectives, in
particular “promot[ing] the Progress of Science and useful Arts.” U. S. Const., Art.
I, §8, cl. 8.
The American Library Association tells us that library collections contain at least
200 million books published abroad (presumably, many were first published in one
of [20] the nearly 180 copyright-treaty nations and enjoy American copyright
protection under 17 U. S. C. §104, see supra, at 10); that many others were first
published in the United States but printed abroad because of lower costs; and that a
geographical interpretation will likely require the libraries to obtain permission (or
at least create significant uncertainty) before circulating or otherwise distributing
these books. [ … ]
How, the American Library Association asks, are the libraries to obtain permission
to distribute these millions of books? How can they find, say, the copyright owner
of a foreign book, perhaps written decades ago? They may not know the copyright
holder’s present address. [ … ] And, even where addresses can be found, the costs
of finding them, contacting owners, and negotiating may be high indeed. Are the
libraries to stop circulating or distributing or displaying the millions of books in
their collections that were printed abroad?
295
Used-book dealers tell us that, from the time when Benjamin Franklin and Thomas
Jefferson built commercial and personal libraries of foreign books, American
readers have bought used books published and printed abroad. [ … ]But under a
geographical interpretation a contemporary [21] tourist who buys, say, at
Shakespeare and Co. (in Paris), a dozen copies of a foreign book for American
friends might find that she had violated the copyright law. The used book dealers
cannot easily predict what the foreign copyright holder may think about a reader’s
effort to sell a used copy of a novel. And they believe that a geographical
interpretation will injure a large portion of the used-book business.
Technology companies tell us that “automobiles, microwaves, calculators, mobile

phones, tablets, and personal computers” contain copyrightable software programs
or packaging. [ … ] Many of these items are made abroad with the American
copyright holder’s permission and then sold and imported (with that permission) to
the United States. Brief for Retail Litigation Center, Inc., et al. as Amici Curiae 4.
A geographical interpretation would prevent the resale of, say, a car, without the
permission of the holder of each copyright on each piece of copyrighted automobile
software. Yet there is no reason to believe that foreign auto manufacturers regularly
obtain this kind of permission from their software component suppliers, and Wiley
did not indicate to the contrary when asked. See Tr. of Oral Arg. 29–30. Without
that permission a foreign car owner could not sell his or her used car.
Retailers tell us that over $2.3 trillion worth of foreign goods were imported in
2011. Brief for Retail Litigation Center 8. American retailers buy many of these
goods after a first sale abroad. Id., at 12. And, many of these items bear, carry, or
contain copyrighted “packaging, logos, labels, and product inserts and instructions
for [the use of ] everyday packaged goods from floor cleaners and health and beauty
products to breakfast cereals.” Id., at 10–11. The retailers add that American sales
of more [22] traditional copyrighted works, “such as books, recorded music, motion
pictures, and magazines” likely amount to over $220 billion. Id., at 9. See also id.,
at 10 (electronic game industry is $16 billion). A geographical interpretation would
subject many, if not all, of them to the disruptive impact of the threat of
infringement suits. Id., at 12.
Art museum directors ask us to consider their efforts to display foreign-produced

works by, say, Cy Twombly, René Magritte, Henri Matisse, Pablo Picasso, and
others. See supra, at 10 (describing how §104 often makes such works “subject to”
American copyright protection). A geographical interpretation, they say, would
require the museums to obtain permission from the copyright owners before they
could display the work, see supra, at 15—even if the copyright owner has already
sold or donated the work to a foreign museum. Brief for Association of Art
Museum Directors et al. as Amici Curiae 10–11. What are the museums to do, they
ask, if the artist retained the copyright, if the artist cannot be found, or if a group of
heirs is arguing about who owns which copyright? Id., at 14.
These examples, and others previously mentioned, help explain why Lord Coke
considered the “first sale” doctrine necessary to protect “Trade and Traffi[c], and
bargaining and contracting,” and they help explain why American copyright law has
long applied that doctrine. Cf. supra, at 17–18.
Neither Wiley nor any of its many amici deny that a geographical interpretation
could bring about these “horribles”—at least in principle. Rather, Wiley essentially
says that the list is artificially invented. Brief for Respondent 51–52. It points out
that a federal court first adopted a geographical interpretation more than 30 years
ChapterNumber:
296
ago. [ … ] Yet, it adds, these problems have not occurred. Why not? Because, says
Wiley, the prob-[23]-lems and threats are purely theoretical; they are unlikely to
reflect reality. See also post, at 30–31.
We are less sanguine. For one thing, the law has not been settled for long in
Wiley’s favor. [ … ]
For another thing, reliance upon the “first sale” doctrine is deeply embedded in the
practices of those, such as book sellers, libraries, museums, and retailers, who have
long relied upon its protection. Museums, for example, are not in the habit of
asking their foreign counterparts to check with the heirs of copyright owners before
sending, e.g., a Picasso on tour. Brief for Association of Art Museum Directors 11–
12. That inertia means a dramatic change is likely necessary before these
institutions, instructed by their counsel, would begin to engage in the complex
permission-verifying process that a geographical interpretation would demand. And
this Court’s adoption of the geographical interpretation could provide that dramatic
change. These intolerable consequences (along with the absurd result that the
copyright owner can exercise downstream control even when it authorized the
import or first sale) have understandably led the Ninth Circuit, the Solicitor General
as amicus, and the dissent to [24] adopt textual readings of the statute that attempt
to mitigate these harms. Brief for United States 27–28; post, at 24–28. But those
readings are not defensible, for they require too many unprecedented jumps over
linguistic and other hurdles that in our view are insurmountable. See, e.g., post, at
26 (acknowledging that its reading of §106(3) “significantly curtails the
independent effect of §109(a)”).
Finally, the fact that harm has proved limited so far may simply reflect the
reluctance of copyright holders so far to assert geographically based resale rights.
They may decide differently if the law is clarified in their favor. Regardless, a
copyright law that can work in practice only if unenforced is not a sound copyright
law. It is a law that would create uncertainty, would bring about selective
enforcement, and, if widely unenforced, would breed disrespect for copyright law
itself.
Thus, we believe that the practical problems that petitioner and his amici have
described are too serious, too extensive, and too likely to come about for us to
dismiss them as insignificant—particularly in light of the evergrowing importance
of foreign trade to America. [ … ]
IV
For these reasons we conclude that the considerations supporting Kirtsaeng’s
nongeographical interpretation of the words “lawfully made under this title” are the
more persuasive. The judgment of the Court of Appeals is reversed, and the case is
remanded for further proceedings consistent with this opinion.
It is so ordered.
---------
[…]
297
Dissenting Opinion
[1] JUSTICE GINSBURG, with whom

JUSTICE KENNEDY joins, and with whom
JUSTICE SCALIA joins except as to Parts III
and V–B–1, dissenting.
“In the interpretation of statutes, the function of the courts is easily stated. It is to
construe the language so as to give effect to the intent of Congress.” United States
v. American Trucking Assns., Inc., 310 U. S. 534, 542 (1940). Instead of adhering
to the Legislature’s design, the Court today adopts an interpretation of the
Copyright Act at odds with Congress’ aim to protect copyright owners against the
unauthorized importation of low-priced, foreign made copies of their copyrighted
works. The Court’s bold departure from Congress’ design is all the more stunning,
for it places the United States at the vanguard of the movement for “international
exhaustion” of copyrights—a movement the United States has steadfastly resisted
on the world stage.
To justify a holding that shrinks to insignificance copyright protection against the

unauthorized importation of foreign-made copies, the Court identifies several
“practical problems.” Ante, at 24. The Court’s parade of horribles, however, is
largely imaginary. Congress’ objective in enacting 17 U. S. C. §602(a)(1)’s
importation prohibition can be honored without generating the absurd consequences
hypothesized in the Court’s opinion. I dissent [2] from the Court’s embrace of
“international exhaustion,” and would affirm the sound judgment of the Court of
Appeals.
I
Because economic conditions and demand for particular goods vary across the
globe, copyright owners have a financial incentive to charge different prices for
copies of their works in different geographic regions. Their ability to engage in
such price discrimination, however, is undermined if arbitrageurs are permitted to
import copies from low-price regions and sell them in high-price regions. The
question in this case is whether the unauthorized importation of foreign-made
copies constitutes copyright infringement under U. S. law.
To answer this question, one must examine three provisions of Title 17 of the U. S.
Code: §§106(3), 109(a), and 602(a)(1). Section 106 sets forth the “exclusive rights”
of a copyright owner, including the right “to distribute copies or phonorecords of
the copyrighted work to the public by sale or other transfer of ownership, or by
rental, lease, or lending.” §106(3). This distribution right is limited by §109(a),
which provides: “Notwithstanding the provisions of section 106(3), the owner of a
particular copy or phonorecord lawfully made under this title . . . is entitled,
without the authority of the copyright owner, to sell or otherwise dispose of the
possession of that copy or phonorecord.” Section 109(a) codifies the “first sale
doctrine,” a doctrine articulated in Bobbs-Merrill Co. v. Straus, 210 U. S. 339, 349–
351 (1908), which held that a copyright owner could not control the price at which
retailers sold lawfully purchased copies of its work. The first sale doctrine
ChapterNumber:
298
recognizes that a copyright owner should not be permitted to exercise perpetual

control over the distribution of copies of a copyrighted work. At some point—
ordinarily the time of the first commercial sale— [3] the copyright owner’s
exclusive right under §106(3) to control the distribution of a particular copy is
exhausted, and from that point forward, the copy can be resold or otherwise
redistributed without the copyright owner’s authorization.
Section 602(a)(1) (2006 ed., Supp. V) [1] —last, but most critical, of the three
copyright provisions bearing on this case—is an importation ban. It reads:
“Importation into the United States, without the authority of the owner of
copyright under this title, of copies or phonorecords of a work that have
been acquired outside the United States is an infringement of the exclusive
right to distribute copies or phonorecords under section 106, actionable
under section 501.”
In Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 523 U. S. 135,
143–154 (1998), the Court held that a copyright owner’s right to control
importation under §602(a)(1) is a component of the distribution right set forth in
§106(3) and is therefore subject to §109(a)’s codification of the first sale doctrine.
Quality King thus held that the importation of copies made in the United States but
sold abroad did not rank as copyright infringement under §602(a)(1). Id., at 143–
154. See also id., at 154 (GINSBURG, J., concurring) (Quality King “involve[d] a
‘round trip’ journey, travel of the copies in question from the United States to
places abroad, then back again”). [2]
Important to the Court’s holding, the copies at issue in Quality King had been “
‘lawfully made under [Title 17]’ ”—a prerequisite for application of §109(a). Id., at
143, n. 9 (quoting §109(a)). Section 602(a)(1), the Court noted, would apply to
“copies that were ‘lawfully made’ not under the United States Copyright Act, but
instead, under the law of some other country.” Id., at 147. Drawing on an example
discussed during a 1964 public meeting on proposed revisions to the U. S.
copyright laws, [3] the Court stated:
“If the author of [a] work gave the exclusive United States distribution
rights—enforceable under the Act—to the publisher of the United States
edition and the exclusive British distribution rights to the publisher of the
British edition, . . . presumably only those [copies] made by the publisher
of the United States edition would be ‘lawfully made under this title’
within the meaning of §109(a). The first sale doctrine would not provide
the publisher of the British edition who decided to sell in the American
market with a defense to an action under §602(a) (or, for that matter, [4]
to an action under §106(3), if there was a distribution of the copies).” Id.,
at 148.
[…]
The Court does not deny that under the language I have quoted from Quality King,
Wiley would prevail. Ante, at 27. Nevertheless, the Court dismisses this language,
to which all Members of the Quality King Court subscribed, as ill-considered
dictum. Ante, at 27–28. I agree that the discussion was dictum in the sense that it
was not essential to the Court’s judgment. [ … ]But I disagree with the Court’s
conclusion that this dictum was ill considered. Instead, for the reasons explained
299
below, I would hold, consistently with Quality King’s dictum, that §602(a)(1)
authorizes a copyright owner to bar the importation of a copy manufactured abroad
for sale abroad.
II
The text of the Copyright Act demonstrates that Congress intended to provide
copyright owners with a potent [6] remedy against the importation of foreign-made
copies of their copyrighted works. As the Court recognizes, ante, at 3, this case
turns on the meaning of the phrase “lawfully made under this title” in §109(a). In
my view, that phrase is most sensibly read as referring to instances in which a
copy’s creation is governed by, and conducted in compliance with, Title 17 of the
U. S. Code. This reading is consistent with the Court’s interpretation of similar
language in other statutes. [ … ]It also accords with dictionary definitions of the
word “under.” See, e.g., American Heritage Dictionary 1887 (5th ed. 2011)
(“under” means, among other things, “[s]ubject to the authority, rule, or control of
”).
Section 109(a), properly read, affords Kirtsaeng no defense against Wiley’s claim
of copyright infringement. The Copyright Act, it has been observed time and again,
does not apply extraterritorially. [ … ]The printing of Wiley’s foreign manufactured
textbooks therefore was not governed by Title 17. The textbooks thus were not
“lawfully made [7] under [Title 17],” the crucial precondition for application of
§109(a). And if §109(a) does not apply, there is no dispute that Kirtsaeng’s conduct
constituted copyright infringement under §602(a)(1).
The Court’s point of departure is similar to mine. According to the Court, the
phrase “ ‘lawfully made under this title’ means made ‘in accordance with’ or ‘in
compliance with’ the Copyright Act.” Ante, at 8. But the Court overlooks that,
according to the very dictionaries it cites, ante, at 9, the word “under” commonly
signals a relationship of subjection, where one thing is governed or regulated by
another. [ … ]Only by disregarding this established meaning of “under” can the
Court arrive at the conclusion that Wiley’s foreign-manufactured textbooks were
“lawfully made under” U. S. copyright law, even though that law did not govern
their creation. It is anomalous, however, to speak of particular conduct as “lawful”
under an inapplicable law. For example, one might say that driving on the right side
of the road in England is “lawful” under U. S. law, but that would be so only
because U. S. law has nothing to say about the subject. The governing law is
English law, and English law demands that driving be done on the left side of the
road. [4]
[8] The logical implication of the Court’s definition of the word “under” is that any
copy manufactured abroad—even a piratical one made without the copyright
owner’s authorization and in violation of the law of the country where it was
created—would fall within the scope of §109(a). Any such copy would have been
made “in accordance with” or “in compliance with” the U. S. Copyright Act, in the
sense that manufacturing the copy did not violate the Act (because the Act does not
apply extraterritorially).
The Court rightly refuses to accept such an absurd conclusion. Instead, it interprets
§109(a) as applying only to copies whose making actually complied with Title 17,
or would have complied with Title 17 had Title 17 been applicable (i.e., had the
ChapterNumber:
300
copies been made in the United States). [ … ] Congress, however, used express
language when it called for such a counterfactual inquiry in 17 U. S. C. §§602(a)(2)
and (b). See §602(a)(2) (“Importation into the United States or exportation from the
United States, without the authority of the owner of copyright under this title, of
copies or phonorecords, the making of which either constituted an infringement of
copyright, or which would have constituted an infringement of copyright if this title
had been applicable, is an infringement of the exclusive right to distribute copies or
phonorecords under section 106.” (emphasis added)); §602(b) (“In a case where the
making [9] of the copies or phonorecords would have constituted an infringement of
copyright if this title had been applicable, their importation is prohibited.”
(emphasis added)). Had Congress intended courts to engage in a similarly
hypothetical inquiry under §109(a), Congress would presumably have included
similar language in that section.[ … ]
[10] Not only does the Court adopt an unnatural construction of the §109(a) phrase
“lawfully made under this title.” Concomitantly, the Court reduces §602(a)(1) to
insignificance. As the Court appears to acknowledge, see ante, at 26, the only
independent effect §602(a)(1) has under today’s decision is to prohibit unauthorized
importations carried out by persons who merely have possession of, but do not own,
the imported copies. See 17 U. S. C. §109(a) (§109(a) applies to any “owner of a
particular copy or phonorecord lawfully made under this title” (emphasis added)). [6]
If this is enough to avoid rendering §602(a)(1) entirely “superfluous,” ante, at 26, it
hardly suffices to give the owner’s importation right the scope Congress intended it
to have. Congress used broad language in §602(a)(1); it did so to achieve a broad
objective. Had Congress intended simply to provide a copyright remedy against
larcenous lessees, licensees, consignees, and bailees of films and other copyright-
protected goods, see ante, at 13–14, 26, it likely would have used language tailored
to that narrow purpose. [ … ]
The Court’s decision also overwhelms 17 U. S. C. §602(a)(3)’s exceptions to

§602(a)(1)’s importation prohibition. 2 P. Goldstein, Copyright §7.6.1.2(a), p.
7:141 (3d ed. 2012) (hereinafter Goldstein). [8] Those exceptions permit the
importation of copies without the copyright owner’s authorization for certain
governmental, personal, scholarly, educational, and religious purposes. 17 U. S. C.
§602(a)(3). Copies imported under these exceptions “will often be lawfully made
gray market goods purchased through normal market channels abroad.” 2 Goldstein
[12] §7.6.1.2(a), at 7:141. [9] But if, as the Court holds, such copies can in any event
be imported by virtue of §109(a), §602(a)(3)’s work has already been done. For
example, had Congress conceived of §109(a)’s sweep as the Court does, what
earthly reason would there be to provide, as Congress did in §602(a)(3)(C), that a
library may import “no more than five copies” of a non-audiovisual work for its
“lending or archival purposes”?
The far more plausible reading of §§109(a) and 602(a), then, is that Congress
intended §109(a) to apply to copies made in the United States, not to copies
manufactured and sold abroad. That reading of the first sale and importation
provisions leaves §602(a)(3)’s exceptions with real, meaningful work to do. [ … ]
In the range of circumstances covered by the exceptions, §602(a)(3) frees
individuals and entities who purchase foreign-made copies abroad from the
requirement they would otherwise face under §602(a)(1) of obtaining the copyright
owner’s permission to import the copies into the United States. [10]
301
[13] III
The history of §602(a)(1) reinforces the conclusion I draw from the text of the
relevant provisions: §109(a) does not apply to copies manufactured abroad. Section
602(a)(1) was enacted as part of the Copyright Act of 1976, 90 Stat. 2589–2590.
That Act was the product of a lengthy revision effort overseen by the U. S.
Copyright Office. See Mills Music, Inc. v. Snyder, 469 U. S. 153, 159–160 (1985).
In its initial 1961 report on recommended revisions, the Copyright Office noted that
publishers had “suggested that the [then-existing] import ban on piratical copies
should be extended to bar the importation of . . . foreign edition[s]” in violation of
“agreements to divide international markets for copyrighted works.” [ … ]The
Copyright Office originally recommended against such an extension of the
importation ban, reasoning that enforcement of territorial restrictions was best left
to contract law. Copyright Law Revision 126.
Publishing-industry representatives argued strenuously against the position initially

taken by the Copyright Office.[ … ]
After considering comments on its 1961 report, the Copyright Office “prepared a
preliminary draft of provisions for a new copyright statute.” Copyright Law
Revision Part 3: Preliminary Draft for Revised U. S. Copyright Law and
Discussions and Comments on the Draft, 88th Cong., 2d Sess., V (H. R. Judiciary
Comm. Print 1964). Section 44 of the draft statute addressed the concerns raised by
publishing-industry representatives. In particular, §44(a) provided:
“Importation into the United States of copies or records of a work for the
purpose of distribution to the public shall, if such articles are imported
without the authority of the owner of the exclusive right to distribute
copies or records under this title, constitute an infringement of copyright
actionable under section 35 [i.e., the section providing for a private cause
of action for copyright infringement].” Id., at 32–33.
[…]
The next step in the copyright revision process was the introduction in Congress of
a draft bill on July 20, 1964. See Copyright Law Revision Part 5: 1964 Revision
Bill with Discussions and Comments, 89th Cong., 1st Sess., III (H. R. Judiciary
Comm. Print 1965). After another round of public comments, a revised bill was
introduced on February 4, 1965. [ … ]In language closely resembling the statutory
text later enacted by Congress, §602(a) of the 1965 bill provided:
“Importation into the United States, without the authority of the owner of
copyright under this title, of copies or phonorecords of a work for the
purpose of distribution to the public is an infringement of the exclusive
right to distribute copies or phonorecords under section 106, actionable
under section 501.” Id., at 292. [12]
[…]
The current text of §602(a)(1) was finally enacted into law in 1976. See Copyright
Act of 1976, §602(a), 90 Stat. 2589–2590. The House and Senate Committee
Reports on the 1976 Act demonstrate that Congress understood, as did the
Copyright Office, just what that text meant. Both Reports state:
ChapterNumber:
302
“Section 602 [deals] with two separate situations: importation of

‘piratical’ articles (that is, copies or phonorecords made without any
authorization of the [18] copyright owner), and unauthorized importation
of copies or phonorecords that were lawfully made. The general approach
of section 602 is to make unauthorized importation an act of infringement
in both cases, but to permit the Bureau of Customs to prohibit importation
only of ‘piratical’ articles.” [ … ]
In sum, the legislative history of the Copyright Act of 1976 is hardly

“inconclusive.” Ante, at 28. To the contrary, it confirms what the plain text of the
Act conveys: Congress intended §602(a)(1) to provide copyright owners with a
remedy against the unauthorized importation of foreign-made copies of their works,
even if those copies were made and sold abroad with the copyright owner’s
authorization. [13]
IV
Unlike the Court’s holding, my position is consistent with the stance the United
States has taken in international trade negotiations. This case bears on the highly
contentious trade issue of interterritorial exhaustion. The issue arises because
intellectual property law is territorial in nature, see supra, at 6, which means that
creators of intellectual property “may hold a set of parallel” intellectual property
rights under the laws of different nations. Chiappetta, The Desirability of Agreeing
to Disagree: The WTO, TRIPS, International IPR Exhaustion and a Few Other
Things, 21 Mich. J. Int’l L. 333, 340–341 (2000) (hereinafter Chiappetta). There is
no international con-[19]-sensus on whether the sale in one country of a good
incorporating protected intellectual property exhausts the intellectual property
owner’s right to control the distribution of that good elsewhere. Indeed, the
members of the World Trade Organization, “agreeing to disagree,” [14] provided in
Article 6 of the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS), Apr. 15, 1994, 33 I. L. M. 1197, 1200, that “nothing in this
Agreement shall be used to address the issue of . . . exhaustion.” See Chiappetta
346 (observing that exhaustion of intellectual property rights was “hotly debated”
during the TRIPS negotiations and that Article 6 “reflects [the negotiators’]
ultimate inability to agree” on a single international standard). Similar language
appears in other treaties to which the United States is a party. See World
Intellectual Property Organization (WIPO) Copyright Treaty, Art. 6(2), Dec. 20,
1996, S. Treaty Doc. No. 105–17, p. 7 (“Nothing in this Treaty shall affect the
freedom of Contracting Parties to determine the conditions, if any, under which the
exhaustion of the right [to control distribution of copies of a copyrighted work]
applies after the first sale or other transfer of ownership of the original or a copy of
the work with the authorization of the author.”); WIPO Performances and
Phonograms Treaty, Art. 8(2), Dec. 20, 1996, S. Treaty Doc. No. 105–17, p. 28
(containing language nearly identical to Article 6(2) of the WIPO Copyright
Treaty).
In the absence of agreement at the international level, each country has been left to
choose for itself the exhaustion framework it will follow. One option is a national
exhaustion regime, under which a copyright owner’s right [20] to control
distribution of a particular copy is exhausted only within the country in which the
copy is sold. [ … ] Another option is a rule of international exhaustion, under which
303
the authorized distribution of a particular copy anywhere in the world exhausts the
copyright owner’s distribution right everywhere with respect to that copy. See ibid.
The European Union has adopted the intermediate approach of regional exhaustion,
under which the sale of a copy anywhere within the European Economic Area
exhausts the copyright owner’s distribution right throughout that region. See id., at
430, 445. Section 602(a)(1), in my view, ties the United States to a national-
exhaustion framework. The Court’s decision, in contrast, places the United States
solidly in the international exhaustion camp.
Strong arguments have been made both in favor of, and in opposition to,
international exhaustion. [ … ] International exhaustion subjects copyright-
protected goods to competition from lower priced imports and, to that extent,
benefits consumers. Correspondingly, copyright owners profit from a national-
exhaustion regime, which also enlarges the monetary incentive to create new
copyrightable works. [ … ]
Weighing the competing policy concerns, our Government reached the conclusion
that widespread adoption of the international-exhaustion framework would be
inconsistent with the long-term economic interests of the United States. [ … ]
Accordingly, the United States has steadfastly “taken the position in international
trade negotiations that domestic copyright owners should . . . have the right to
prevent the unauthorized importation of copies of their work sold abroad.” Id., at
22. The United States has “advanced this position in multilateral trade
negotiations,” including the negotiations on the TRIPS Agreement. Id., at 24. See
also D. Gervais, The TRIPS Agreement: Drafting History and Analysis §2.63, p.
199 (3d ed. 2008). It has also taken a dim view of our trading partners’ adoption of
legislation incorporating elements of international exhaustion. [ … ]
Even if the text and history of the Copyright Act were ambiguous on the answer to
the question this case presents— which they are not, see Parts II–III, supra[16] —I
would resist a holding out of accord with the firm position the United States has
taken on exhaustion in international negotiations. Quality King, I acknowledge,
discounted the Government’s concerns about potential inconsistency with United
States obligations under certain bilateral trade agreements. See 523 U. S., at 153–
154. See also Quality King Brief 22–24 (listing the agreements). That decision,
however, dealt only with copyright-protected products made in the United States.
See 523 U. S., at 154 (GINSBURG, J., concurring). Quality King left open the
question whether owners of U. S. copyrights could retain control over the
importation of copies manufactured and sold abroad—a point the Court obscures,
see ante, at 33 (arguing that Quality King “significantly eroded” the national-
exhaustion principle that, in my view, §602(a)(1) embraces). The Court today
answers that question with a resounding “no,” and in doing so, it risks undermining
the United States’ credibility on the world stage. While the Government has urged
our trading partners to refrain from adopting international-exhaustion regimes that
could benefit consumers within their borders but would impact adversely on
intellectual-property producers in the United States, the Court embraces an
international-exhaustion rule that could benefit U. S. consumers but would likely
[23] disadvantage foreign holders of U. S. copyrights. This dissonance scarcely
enhances the United States’ “role as a trusted partner in multilateral endeavors.”
Vimar Seguros y Reaseguros, S. A. v. M/V Sky Reefer, 515 U. S. 528, 539 (1995).
V
ChapterNumber:
304
I turn now to the Court’s justifications for a decision difficult to reconcile with the
Copyright Act’s text and history.
[…]
B
The Court sees many “horribles” following from a holding that the §109(a) phrase
“lawfully made under this title” does not encompass foreign-made copies. Ante, at
22 (internal quotation marks omitted). If §109(a) excluded foreign-made copies, the
Court fears, then copyright owners could exercise perpetual control over the
downstream distribution or public display of such copies. A ruling in Wiley’s favor,
the Court asserts, would shutter libraries, put used-book dealers out of business,
cripple art muse ums, and prevent the resale of a wide range of consumer goods,
from cars to calculators. [ … ] Copyright law and precedent, however, erect barriers
to the anticipated horribles. [18]
1
Recognizing that foreign-made copies fall outside the ambit of §109(a) would not
mean they are forever free of the first sale doctrine. As earlier observed, see supra,
at 2, the Court stated that doctrine initially in its 1908 Bobbs-[25]-Merrill decision.
At that time, no statutory provision expressly codified the first sale doctrine.
Instead, copy right law merely provided that copyright owners had “the sole liberty
of printing, reprinting, publishing, completing, copying, executing, finishing, and
vending” their works. Copyright Act of 1891, §1, 26 Stat. 1107.
In Bobbs-Merrill, the Court addressed the scope of the statutory right to “ven[d].”
In granting that right, the Court held, Congress did not intend to permit copyright
owners “to fasten . . . a restriction upon the subsequent alienation of the subject-
matter of copyright after the owner had parted with the title to one who had
acquired full dominion over it and had given a satisfactory price for it.” 210 U. S.,
at 349–350. “[O]ne who has sold a copyrighted article . . . without restriction,” the
Court explained, “has parted with all right to control the sale of it.” Id., at 350.
Thus, “[t]he purchaser of a book, once sold by authority of the owner of the
copyright, may sell it again, although he could not publish a new edition of it.”
Ibid.
Under the logic of Bobbs-Merrill, the sale of a foreign-manufactured copy in the

United States carried out with the copyright owner’s authorization would exhaust
the copyright owner’s right to “vend” that copy. The copy could thenceforth be
resold, lent out, or otherwise redistributed without further authorization from the
copyright owner. Although §106(3) uses the word “distribute” rather than “vend,”
there is no reason to think Congress intended the word “distribute” to bear a
meaning different from the construction the Court gave to the word “vend” in
Bobbs-Merrill. See ibid. (emphasizing that the question before the Court was
“purely [one] of statutory construction”). [19] [26] Thus, in accord with Bobbs-
Merrill, the first authorized distribution of a foreign-made copy in the United States
exhausts the copyright owner’s distribution right under §106(3). After such an
305
authorized distribution, a library may lend, or a used-book dealer may resell, the
foreign made copy without seeking the copyright owner’s permission. Cf. ante, at
19–21.
For example, if Wiley, rather than Kirtsaeng, had imported into the United States
and then sold the foreign made textbooks at issue in this case, Wiley’s §106(3)
distribution right would have been exhausted under the rationale of Bobbs-Merrill.
Purchasers of the textbooks would thus be free to dispose of the books as they
wished without first gaining a license from Wiley.
This line of reasoning, it must be acknowledged, significantly curtails the

independent effect of §109(a). If, as I maintain, the term “distribute” in §106(3)
incorporates the first sale doctrine by virtue of Bobbs-Merrill, then §109(a)’s
codification of that doctrine adds little to the regulatory regime. [20] Section 109(a),
however, does serve [27] as a statutory bulwark against courts deviating from
Bobbs-Merrill in a way that increases copyright owners’ control over downstream
distribution, and legislative history indicates that is precisely the role Congress
intended §109(a) to play. [ … ]
In any event, the reading of the Copyright Act to which I subscribe honors
Congress’ aim in enacting §109(a) while the Court’s reading of the Act severely
diminishes §602(a)(1)’s role. See supra, at 10–12. [ … ]
2
Other statutory prescriptions provide further protection against the absurd
consequences imagined by the Court. For example, §602(a)(3)(C) permits “an
organization operated for scholarly, educational, or religious purposes” to import,
without the copyright owner’s authorization, up to five foreign-made copies of a
non-audiovisual work— notably, a book—for “library lending or archival
purposes.” B[ … ]
The Court also notes that amici representing art museums fear that a ruling in
Wiley’s favor would prevent museums from displaying works of art created abroad.
Ante, at 22 (citing Brief for Association of Art Museum Directors et al.). These
amici observe that a museum’s right to display works of art often depends on 17 U.
S. C. §109(c). See Brief for Association of Art Museum Directors et al. 11–13. [23]
That provision addresses exhaustion of [29] a copyright owner’s exclusive right
under §106(5) to publicly display the owner’s work. Because §109(c), like §109(a),
applies only to copies “lawfully made under this title,” amici contend that a ruling
in Wiley’s favor would prevent museums from invoking §109(c) with respect to
foreign-made works of art. Id., at 11–13. [24]
Limiting §109(c) to U. S.-made works, however, does not bar art museums from
lawfully displaying works made in other countries. Museums can, of course, seek
the copyright owner’s permission to display a work. Furthermore, the sale of a work
of art to a U. S. museum may carry with it an implied license to publicly display the
work. [ … ] Displaying a work of art as part of a museum exhibition might also
qualify as a “fair use” under 17 U. S. C. §107. Cf. Bouchat v. Baltimore Ravens
Ltd. Partnership, 619 F. 3d 301, 313–316 (CA4 2010) (display of copyrighted logo
in museum-like exhibition constituted “fair use”).
ChapterNumber:
306
The Court worries about the resale of foreign-made consumer goods “contain[ing]
copyrightable software programs or packaging.” Ante, at 21. F[ … ] Must a car
owner, the Court asks, obtain permission from all of these various copyright owners
before reselling her car? Ibid. Although this question strays far from the one
presented in this case and briefed by the parties, principles of fair use and implied
[30] license (to the extent that express licenses do not exist) would likely permit the
car to be resold without the copyright owners’ authorization. [25]
Most telling in this regard, no court, it appears, has been called upon to answer any
of the Court’s “horribles” in an actual case. Three decades have passed since a
federal court first published an opinion reading §109(a) as applicable exclusively to
copies made in the United States. See Columbia Broadcasting System, Inc. v.
Scorpio Music Distributors, Inc., 569 F. Supp. 47, 49 (ED Pa. 1983), summarily aff
’d, 738 F. 2d 424 (CA3 1984) (table). Yet Kirtsaeng and his supporting amici cite
not a single case in which the owner of a consumer good authorized for sale in the
United States has been sued for copyright infringement after reselling the item or
giving it away as a gift or to charity. The absence of such lawsuits is unsurprising.
Routinely suing one’s customers is hardly a best business [31] practice. [26]
Manufacturers, moreover, may be hesitant to do business with software
programmers taken to suing consumers. Manufacturers may also insist that software
programmers agree to contract terms barring such lawsuits.
[…]
VI
To recapitulate, the objective of statutory interpretation is “to give effect to the
intent of Congress.” American Trucking Assns., 310 U. S., at 542. Here, two
congressional aims are evident. First, in enacting §602(a)(1), Congress intended to
grant copyright owners permission to segment international markets by barring the
importation of foreign-made copies into the United States. Second, as codification
of the first sale doctrine underscores, Congress did not want the exclusive
distribution right conferred in §106(3) to be boundless. Instead of harmonizing
these objectives, the Court subordinates the first entirely to the second. [ … ]
Rather than adopting the very international-exhaustion rule the United States has
consistently resisted in international-trade negotiations, I would adhere to the
national-exhaustion framework set by the Copyright Act’s text and history. Under
that regime, codified in §602(a)(1), Kirtsaeng’s unauthorized importation of the
foreign-made textbooks involved in this case infringed Wiley’s copyrights. I would
therefore affirm the Second Circuit’s judgment.
----------
[1] Although Quality King concluded that the statute’s text foreclosed that outcome,
see 523 U. S., at 151–152, the Solicitor General offered a cogent argument to the
contrary. He reasoned that §109(a) does not limit §602(a)(1) because the former
authorizes owners only to “sell” or “dispose” of copies—not to import them: The
Act’s first-sale provision and its importation ban thus regulate separate, non-
overlapping spheres of conduct. See Brief for United States as Amicus Curiae in
Quality King, O. T. 1996, No. 96–1470, pp. 5, 8–10. That reading remains the
Government’s preferred way of construing the statute. See Tr. of Oral Arg. 44
307
(“[W]e think that we still would adhere to our view that section 109(a) should not
be read as a limitation on section 602(a)(1)”); see also ante, at 32–33; post, at 21, n.
15 (GINSBURG, J., dissenting).
[2] Indeed, allowing the copyright owner to restrict imports irrespective of the first-
sale doctrine—i.e., reversing Quality King—would yield a far more sensible
scheme of market segmentation than would adopting John Wiley’s argument here.
That is because only the former approach turns on the intended market for copies;
the latter rests instead on their place of manufacture. To see the difference, imagine
that John Wiley prints all its textbooks in New York, but wants to distribute certain
versions only in Thailand. Without Quality King, John Wiley could do so—i.e.,
produce books in New York, ship them to Thailand, and prevent anyone from
importing them back into the United States. But with Quality King, that course is
not open to John Wiley even under its reading of §109(a): To prevent someone like
Kirtsaeng from re- importing the books—and so to segment the Thai market—John
Wiley would have to move its printing facilities abroad. I can see no reason why
Congress would have conditioned a copyright owner’s power to divide markets on
outsourcing its manufacturing to a foreign country.
[…]
[1] In 2008, Congress renumbered what was previously §602(a) as §602(a)(1). See
Prioritizing Resources and Organization for Intellectual Property Act of 2008
(PROIPA), §105(b)(2), 122 Stat. 4259. Like the Court, I refer to the provision by its
current numbering.
[2] Although JUSTICE KAGAN’s concurrence suggests that Quality King erred in
“holding that §109(a) limits §602(a)(1),” ante, at 2, that recent, unanimous holding
must be taken as a given. See John R. Sand & Gravel Co. v. United States, 552 U.
S. 130, 139 (2008) (“[S]tare decisis in respect to statutory interpretation has
‘special force,’ for ‘Congress remains free to alter what we have done.’ ” (quoting
Patterson v. McLean Credit Union, 491 U. S. 164, 172–173 (1989))). The Court’s
objective in this case should be to avoid unduly “constrict[ing] the scope of §602(a)
(1)’s ban on unauthorized importation,” ante, at 1 (opinion of KAGAN, J.), while at
the same time remaining faithful to Quality King’s holding and to the text and
history of other Copyright Act provisions. This aim is not difficult to achieve. See
Parts II–V, infra. JUSTICE KAGAN and I appear to agree to this extent: Congress
meant the ban on unauthorized importation to have real force. See ante, at 3
(acknowledging that “Wiley may have a point about what §602(a)(1) was designed
to do”).
[3] See Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 523 U. S.
135, 148, n. 20 (1998) (quoting Copyright Law Revision Part 4: Further
Discussions and Comments on Preliminary Draft for Revised U. S. Copyright Law,
88th Cong., 2d Sess., 119 (H. R. Judiciary Comm. Print 1964) (hereinafter
Copyright Law Revision Part 4) (statement of Harriet Pilpel)).
[4] The Court asserts that my position gives the word “lawfully” in §109(a) “little,
if any, linguistic work to do.” Ante, at 9. That is not so. My reading gives meaning
to each word in the phrase “lawfully made under this title.” The word “made”
signifies that the conduct at issue is the creation or manufacture of a copy. See
Webster’s Third New International Dictionary 1356 (1961) (defining “made” as
“artificially produced by a manufacturing process”). The word “lawfully” indicates
that for §109(a) to apply, the copy’s creation must have complied with some body
ChapterNumber:
308
of law. Finally, the prepositional phrase “under this title” clarifies what that body of
law is—namely, the copyright prescriptions contained in Title 17 of the U. S. Code.
[5] Attempting to show that my reading of §109(a) is susceptible to the same

criticism, the Court points to the now-repealed “manufacturing clause,” which
required “copies of a work consisting preponderantly of nondramatic literary
material . . . in the English language” to be “manufactured in the United States or
Canada.” Copyright Act of 1976, §601(a), 90 Stat. 2588. Because Congress
expressly referred to manufacturing in this provision, the Court contends, the
phrase “lawfully made under this title” in §109(a) cannot mean “manufactured in
the United States.” Ante, at 19. This argument is a non sequitur. I do not contend
that the phrases “lawfully made under this title” and “manufactured in the United
States” are interchangeable. To repeat, I read the phrase “lawfully made under this
title” as referring to instances in which a copy’s creation is governed by, and
conducted in compliance with, Title 17 of the U. S. Code. See supra, at 6. Not all
copies “manufactured in the United States” will satisfy this standard. For example,
piratical copies manufactured in the United States without the copyright owner’s
authorization are not “lawfully made under [Title 17].” Nor would the phrase
“lawfully manufactured in the United States” be an exact substitute for “lawfully
made under this title.” The making of a copy may be lawful under Title 17 yet still
violate some other provision of law. Consider, for example, a copy made with the
copyright owner’s authorization by workers who are paid less than minimum wage.
The copy would be “lawfully made under [Title 17]” in the sense that its creation
would not violate any provision of that title, but the copy’s manufacturing would
nonetheless be unlawful due to the violation of the minimum-wage laws.
[6] When §602(a)(1) was originally enacted in 1976, it played an additional role—
providing a private cause of action against importers of piratical goods. See Quality
King, 523 U. S., at 146. In 2008, however, Congress amended §602 to provide for
such a cause of action in §602(a)(2), which prohibits the unauthorized
“[i]mportation into the United States . . . of copies or phonorecords, the making of
which either constituted an infringement of copyright, or which would have
constituted an infringement of copyright if [Title 17] had been applicable.” See
PROIPA, §105(b)(3), 122 Stat. 4259–4260. Thus, under the Court’s interpretation,
the only conduct reached by §602(a)(1) but not §602(a)(2) is a nonowner’s
unauthorized importation of a nonpiratical copy.
[7] Notably, the Court ignores the history of §602(a)(1), which reveals that the
primary purpose of the prescription was not to provide a remedy against rogue
licensees, consignees, and bailees, against whom copyright owners could frequently
assert breach-of-contract claims even in the absence of §602(a)(1). Instead, the
primary purpose of §602(a)(1) was to reach third-party importers, enterprising
actors like Kirtsaeng, against whom copyright owners could not assert contract
claims due to lack of privity. See Part III, infra.
[8] Section 602(a)(3) provides:
This subsection [i.e., §602(a)] does not apply to—
(A) importation or exportation of copies or phonorecords under the

authority or for the use of the Government of the United States or of any
State or political subdivision of a State, but not including copies or
phonorecords for use in schools, or copies of any audiovisual work
imported for purposes other than archival use
309
(B) importation or exportation, for the private use of the importer or

exporter and not for distribution, by any person with respect to no more
than one copy or phonorecord of any one work at any one time, or by any
person arriving from outside the United States or departing from the
United States with respect to copies or phonorecords forming part of such
person’s personal baggage; or
(C) importation by or for an organization operated for scholarly,

educational, or religious purposes and not for private gain, with respect to
no more than one copy of an audiovisual work solely for its archival
purposes, and no more than five copies or phonorecords of any other work
for its library lending or archival purposes, unless the importation of such
copies or phonorecords is part of an activity consisting of systematic
reproduction or distribution, engaged in by such organization in violation
of the provisions of section 108(g)(2).
[9] The term “gray market good” refers to a good that is “imported outside the
distribution channels that have been contractually negotiated by the intellectual
property owner.” Forsyth & Rothnie, Parallel Imports, in The Interface Between
Intellectual Property Rights and Competition Policy 429 (S. Andermaned. 2007).
Such goods are also commonly called “parallel imports.” Ibid.
[10] The Court asserts that its reading of §109(a) is bolstered by §104, which
extends the copyright “protection[s]” of Title 17 to a wide variety of foreign works.
See ante, at 10–11. The “protection under this title” afforded by §104, however, is
merely protection against infringing conduct within the United States, the only
place where Title 17 applies. See 4 W. Patry, Copyright §13:44.10, pp. 13–128 to
13–129 (2012) (hereinafter Patry). Thus, my reading of the phrase “under this title”
in §109(a) is consistent with Congress’ use of that phrase in §104. Fur thermore,
§104 describes which works are entitled to copyright protection under U. S. law.
But no one disputes that Wiley’s copyrights in the works at issue in this case are
valid. The only question is whether Kirtsaeng’s importation of copies of those
works infringed Wiley’s copyrights. It is basic to copyright law that “[o]wnership
of a copyright. . . is distinct from ownership of any material object in which the
work is embodied.” 17 U. S. C. §202. See also §101 (“ ‘Copies’ are material
objects, other than phonorecords, in which a work is fixed by any method now
known or later developed, and from which the work can be perceived, reproduced,
or otherwise communicated, either directly or with the aid of a machine or
device.”). Given the distinction copyright law draws between works and copies,
§104 is inapposite to the question here presented. 4 Patry §13:44.10, at 13–129
(“There is no connection, linguistically or substantively, between Section[s] 104
and 109: Section 104 deals with national eligibility for the intangible work of
authorship; Section 109(a) deals with the tangible, physical embodiment of the
work, the ‘copy.’ ”).
[11] As the Court observes, ante, at 29, Irwin Karp of the Authors League of
America stated at the 1964 panel discussion that §44(a) ran counter to “the very
basic concept of copyright law that, once you’ve sold a copy legally, you can’t
restrict its resale.” Copyright Law Revision Part 4, at 212. When asked if he was
“presenting . . . an argument against” §44(a), however, Karp responded that he was
“neutral on th[e] provision.” Id., at 211. There is thus little reason to believe that
any changes to the wording of §44(a) before its codification in §602(a) were made
ChapterNumber:
310
in response to Karp’s discussion of “the problem of restricting [the] transfer of . . .

lawfully obtained [foreign] copies.” Ibid.
[12] There is but one difference between this language from the 1965 bill and the
corresponding language in the current version of §602(a)(1):
In the current version, the phrase “for the purpose of distribution to the
public” is omitted and the phrase “that have been acquired outside the
United States” appears in its stead. There are no material differences
between the quoted language from the 1965 bill and the corresponding
language contained in the 1964 bill. See Copyright Law Revision Part 6:
Supplementary Report of the Register of Copyrights on the General
Revision of the U. S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st
Sess., 292–293 (H. R. Judiciary Comm. Print 1965).
[13] The Court purports to find support for its position in the House and Senate
Committee Reports on the 1976 Copyright Act. Ante, at 30–31. It fails to come up
with anything in the Act’s legislative history, however, showing that Congress
understood the words “lawfully made under this title” in §109(a) to encompass
foreign-made copies.
[14] Chiappetta, The Desirability of Agreeing to Disagree: The WTO, TRIPS,

International IPR Exhaustion and a Few Other Things, 21 Mich. J. Int’l L. 333, 340
(2000) (hereinafter Chiappetta) (internal quotation marks omitted).
[15] The Court states that my “reliance on the Solicitor General’s position in
Quality King is undermined by his agreement in that case with [the] reading of
§109(a)” that the Court today adopts. Ante, at 33. The United States’ principal
concern in both Quality King and this case, however, has been to protect copyright
owners’ “right to prevent parallel imports.” Brief for United States as Amicus
Curiae in Quality King, O. T. 1997, No. 96–1470, p. 6 (hereinafter Quality King
Brief). See also Brief for United States as Amicus Curiae 14 (arguing that
Kirtsaeng’s interpretation of §109(a), which the Court adopts, would “subver[t]
Section 602(a)(1)’s ban on unauthorized importation”). In Quality King, the
Solicitor General urged this Court to hold that §109(a)’s codification of the first
sale doctrine does not limit the right to control importation set forth in §602(a).
Quality King Brief 7–30. After Quality King rejected that contention, the United
States reconsidered its position, and it now endorses the interpretation of the
§109(a) phrase “lawfully made under this title” I would adopt. Brief for United
States as Amicus Curiae 6–7, 13–14.
[16] Congress hardly lacks capacity to provide for international exhaustion when
that is its intent. Indeed, Congress has expressly provided for international
exhaustion in the narrow context of semiconductor chips embodying protected
“mask works.” See 17 U. S. C. §§905(2), 906(b). See also 2 M. Nimmer & D.
Nimmer, Copyright §8A.06[E], p. 8A–37 (2012) (hereinafter Nimmer) (“[T]he first
sale doctrine under [§906(b)] expressly immunizes unauthorized importation.”).
[17] Despite the Court’s suggestion to the contrary, this case in no way implicates
the per se antitrust prohibition against horizontal “ ‘[a]greements between
competitors to allocate territories to minimize competition.’ ” Ante, at 32 (quoting
Palmer v. BRG of Ga., Inc., 498 U. S. 46, 49 (1990) (per curiam)). Wiley is not
requesting authority to enter into collusive agreements with other textbook
publishers that would, for example, make Wiley the exclusive supplier of textbooks
311
on particular subjects within particular geographic regions. Instead, Wiley asserts

no more than the prerogative to impose vertical restraints on the distribution of its
own textbooks. See Hovenkamp, Post-Sale Restraints and Competitive Harm: The
First Sale Doctrine in Perspec tive, 66 N. Y. U. Ann. Survey Am. L. 487, 488
(2011) (“vertical restraints” include “limits [on] the way a seller’s own product can
be distributed”).
[18] As the Court observes, ante, at 32–33, the United States stated at oral
argument that the types of “horribles” predicted in the Court’s opinion would, if
they came to pass, be “worse than the frustration of market segmentation” that will
result from the Court’s interpretation of §109(a). Tr. of Oral Arg. 51. The United
States, however, recognized that this purported dilemma is a false one. As the
United States explained, the Court’s horribles can be avoided while still giving
meaningful effect to §602(a)(1)’s ban on unauthorized importation. Ibid.
[19] It appears that the Copyright Act of 1976 omitted the word “vend” and
introduced the word “distribute” to avoid the “redundan[cy]” present in pre-1976
law. Copyright Law Revision: Report of the Register of Copyrights on the General
Revision of the U. S. Copyright Law, 87th Cong., 1st Sess., 21 (H. R. Judiciary
Comm. Print 1961) (noting that the exclusive rights to “publish” and “vend” works
under the Copyright Act of 1947, §1(a), 61 Stat. 652–653, were “redundant”).
[20] My position that Bobbs-Merrill lives on as a limiting construction of the

§106(3) distribution right does not leave §109(a) with no work to do. There can be
little doubt that the books at issue in Bobbs-Merrill were published and first sold in
the United States. See Bobbs-Merrill Co. v. Straus, 139 F. 155, 157 (CC SDNY
1905) (the publisher claiming copyright infringement in Bobbs-Merrill was
incorporated and had its principal office in Indiana). See also Copyright Act of
1891, §3, 26 Stat. 1107–1108 (generally prohibiting importation, even by the
copyright owner, of foreign-manufactured copies of copyrighted books); 4 Patry
§13:40, at 13–111 (under the Copyright Act of 1891, “copies of books by both
foreign and U. S. authors had to be printed in the United States”). But cf. ante, at
18 (asserting, without acknowledging the 1891 Copy right Act’s general prohibition
against the importation of foreign-made copies of copyrighted books, that the Court
is unable to find any “geo graphical distinctions . . . in Bobbs-Merrill ”). Thus,
exhaustion occurs under Bobbs-Merrill only when a copy is distributed within the
United States with the copyright owner’s permission, not when it is distributed
abroad. But under §109(a), as interpreted in Quality King, any author ized
distribution of a U. S.-made copy, even a distribution occurring in a foreign
country, exhausts the copyright owner’s distribution right under §106(3). See 523
U. S., at 145, n. 14. Section 109(a) therefore provides for exhaustion in a
circumstance not reached by Bobbs-Merrill.
[21] Section 41 of the 1909 Act provided: “[N]othing in this Act shall be deemed to
forbid, prevent, or restrict the transfer of any copy of a copyrighted work the
possession of which has been lawfully obtained.” 35 Stat. 1084. This language was
repeated without material change in §27 of the Copyright Act of 1947, 61 Stat. 660.
As noted above, see supra, at 2, 17 U. S. C. §109(a) sets out the current
codification of the first sale doctrine.
[22] A group of amici representing libraries expresses the concern that lower courts
might interpret §602(a)(3)(C) as authorizing only the importing, but not the
lending, of foreign-made copies of non-audiovisual works. See Brief for American
Library Association et al. 20. The United States maintains, and I agree, however,
ChapterNumber:
312
that §602(a)(3)(C) “is fairly (and best) read as implicitly authorizing lending, in
addition to importation, of all works other than audiovisual works.” Brief for
United States as Amicus Curiae 30, n. 6.
[23] Title 17 U. S. C. §109(c) provides: “Notwithstanding the provisions of section

106(5), the owner of a particular copy lawfully made under this title, or any person
authorized by such owner, is entitled, without the authority of the copyright owner,
to display that copy publicly, either directly or by the projection of no more than
one image at a time, to viewers present at the place where the copy is located.”
[24]The word “copy,” as it appears in §109(c), applies to the original of a work of

art because the Copyright Act defines the term “copies” to “includ[e] the material
object . . . in which the work is first fixed.” §101.
[25] Principles of fair use and implied license may also allow a U. S. tourist “who
buys a copyrighted work of art, a poster, or . . . a bumper sticker” abroad to
publicly “display it in America without the copyright owner’s further
authorization.” Ante, at 15. (The tourist could lawfully bring the work of art, poster,
or bumper sticker into the United States under 17 U. S. C. §602(a)(3)(B), which
provides that §602(a)(1)’s importation ban does not apply to “importation . . . by
any person arriving from outside the United States . . . with respect to copies . . .
forming part of such person’s personal baggage.”). Furthermore, an individual
clearly would not incur liability for infringement merely by displaying a foreign-
made poster or other artwork in her home. See §106(5) (granting the owners of
copyrights in “literary, musical, dramatic, and choreographic works, pantomimes,
and pictorial, graphic, or sculptural works” the exclusive right “to display the
copyrighted work publicly” (emphasis added)). See also §101 (a work is displayed
“publicly” if it is displayed “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 is gathered” (emphasis added)). Cf. 2 Nimmer §8.14[C][1], at 8–
192.2(1) (“[A] performance limited to members of the family and invited guests is
not a public performance.” (footnote omitted)).
[26] Exerting extensive control over secondary markets may not always be in a
manufacturer’s best interest. Carmakers, for example, often trumpet the resale value
of their vehicles. See, e.g., Nolan, UD grad leads Cadillac marketing, Dayton Daily
News, Apr. 2, 2009, p. A8 (“Cadillac plays up its warranty coverage and reliable
resale value to prospective customers.”). If the transaction costs of reselling
vehicles were to rise, consumers’ perception of a new car’s value, and thus the price
they are willing to pay for such a car, might fall—an outcome hardly favorable to
automobile manufacturers.
[27] It should not be overlooked that the ability to prevent importation of foreign-
made copies encourages copyright owners such as Wiley to offer copies of their
works at reduced prices to consumers in less developed countries who might
otherwise be unable to afford them. The Court’s holding, however, prevents
copyright owners from barring the importation of such low-priced copies into the
United States, where they will compete with the higher priced editions copyright
owners make available for sale in this country. To protect their profit margins in the
U. S. market, copyright owners may raise prices in less developed countries or may
withdraw from such markets altogether. See Brief for United States as Amicus
Curiae 26; Brief for Text and Academic Authors Association as Amicus Curiae 12;
Brief for Association of American Publishers as Amicus Curiae 37. See also
Chiappetta 357–358 (a rule of national exhaustion “encourages entry and
313
participation in developing markets at lower, locally more affordable prices by

eliminating them as risky sources of cheaper parallel imports back into premium
markets”). Such an outcome would disserve consumers—and especially students—
in developing nations and would hardly advance the “American foreign policy
goals” of supporting education and economic development in such countries.
Quality King Brief 25–26.

8.1.3
Eurokids International Pvt. Ltd. vs India Book

Distributors


8.1.4
Penguin Books v. India Book Distribution


8.1.5
Warner Bros. v. Santosh V.G.


8.1.6
John Wiley & Sons Inc. & others. v. Prabhat

Chander Kumar Jain & others


ChapterNumber:
314
8.2
Performances and Displays

8.2.1
American Broadcasting Companies, Inc. v. Aereo,

Inc.

134 S.Ct. 2498 (2014)
AMERICAN BROADCASTING
COMPANIES, INC., ET AL., PETITIONERS,
v.
AEREO, INC., FKA BAMBOOM LABS, INC.
No. 13-461.
Supreme Court of the United States.
Argued April 22, 2014.

Decided June 25, 2014.
BREYER, J., delivered the opinion of the Court, in which ROBERTS, C. J., and
KENNEDY, GINSBURG, SOTOMAYOR, and KAGAN, JJ., joined. SCALIA, J.,
filed a dissenting opinion, in which THOMAS and ALITO, JJ., joined.
JUSTICE BREYER, delivered the opinion of

the Court.
The Copyright Act of 1976 gives a copyright owner the "exclusive righ[t]" to
"perform the copyrighted work publicly." 17 U. S. C. §106(4). The Act's Transmit
Clause defines that exclusive right as including the right to
"transmit or otherwise communicate a performance. . . of the

[copyrighted] work . . . to the public, by means of any device or process,
whether the members of the public capable of receiving the
performance . . . receive it in the same place or in separate places and at
the same time or at different times." §101.
We must decide whether respondent Aereo, Inc., infringes this exclusive right by
selling its subscribers a technologically complex service that allows them to watch
315
television programs over the Internet at about the same time as the programs are
broadcast over the air. We conclude that it does.
A
For a monthly fee, Aereo offers subscribers broadcast television programming over
the Internet, virtually as the programming is being broadcast. Much of this
program-ming is made up of copyrighted works. Aereo neither owns the copyright
in those works nor holds a license from the copyright owners to perform those
works publicly.
Aereo's system is made up of servers, transcoders, and thousands of dime-sized

antennas housed in a central warehouse. It works roughly as follows: First, when a
subscriber wants to watch a show that is currently being broadcast, he visits Aereo's
website and selects, from a list of the local programming, the show he wishes to
see.
Second, one of Aereo's servers selects an antenna, which it dedicates to the use of
that subscriber (and that subscriber alone) for the duration of the selected show. A
server then tunes the antenna to the over-the-air broadcast carrying the show. The
antenna begins to receive the broadcast, and an Aereo transcoder translates the
signals received into data that can be transmitted over the Internet.
Third, rather than directly send the data to the subscriber, a server saves the data in
a subscriber-specific folder on Aereo's hard drive. In other words, Aereo's system
creates a subscriber-specific copy—that is, a "personal" copy—of the subscriber's
program of choice.
Fourth, once several seconds of programming have been saved, Aereo's server
begins to stream the saved copy of the show to the subscriber over the Internet.
(The subscriber may instead direct Aereo to stream the program at a later time, but
that aspect of Aereo's service is not before us.) The subscriber can watch the
streamed program on the screen of his personal computer, tablet, smart phone,
Internet-connected television, or other Internet-connected device. The streaming
continues, a mere few seconds behind the over-the-air broadcast, until the
subscriber has received the entire show.[ … ].
Aereo emphasizes that the data that its system streams to each subscriber are the
data from his own personal copy, made from the broadcast signals received by the
particular antenna allotted to him. Its system does not transmit data saved in one
subscriber's folder to any other subscriber. When two subscribers wish to watch the
same program, Aereo's system activates two separate antennas and saves two
separate copies of the program in two separate folders. It then streams the show to
the subscribers through two separate transmissions—each from the subscriber's
personal copy.
B
ChapterNumber:
316
Petitioners are television producers, marketers, distributors, and broadcasters who

own the copyrights in many of the programs that Aereo's system streams to its
subscribers. They brought suit against Aereo for copyright infringement in Federal
District Court. They sought a preliminary injunction, arguing that Aereo was
infringing their right to "perform" their works "publicly," as the Transmit Clause
defines those terms.
The District Court denied the preliminary injunction.[ … ] Relying on prior Circuit
precedent, a divided panel of the Second Circuit affirmed.[ … ] In the Second
Circuit's view, Aereo does not perform publicly within the meaning of the Transmit
Clause because it does not transmit "to the public." Rather, each time Aereo streams
a program to a subscriber, it sends a private transmission that is available only to
that subscriber.[ … ] We granted certiorari.
II
This case requires us to answer two questions: First, in operating in the manner
described above, does Aereo "perform" at all? And second, if so, does Aereo do so
"publicly"? We address these distinct questions in turn.
Does Aereo "perform"?[ … ] Phrased another way, does Aereo "transmit . . . a

performance" when a subscriber watches a show using Aereo's system, or is it only
the subscriber who transmits? In Aereo's view, it does not perform. It does no more
than supply equipment that "emulate[s] the operation of a home antenna and [digital
video recorder (DVR)]."[ … ]. Like a home antenna and DVR, Aereo's equipment
simply responds to its subscribers' directives. So it is only the subscribers who
"perform" when they use Aereo's equipment to stream television programs to
themselves.
Considered alone, the language of the Act does not clearly indicate when an entity
"perform[s]" (or "transmit[s]") and when it merely supplies equipment that allows
others to do so. But when read in light of its purpose, the Act is unmistakable: An
entity that engages in activities like Aereo's performs.
A
History makes plain that one of Congress' primary purposes in amending the
Copyright Act in 1976 was to overturn this Court's determination that community
antenna television (CATV) systems (the precursors of modern cable systems) fell
outside the Act's scope. In Fortnightly Corp. v. United Artists Television, Inc., 392
U. S. 390 (1968), the Court considered a CATV system that carried local television
broadcasting, much of which was copyrighted, to its subscribers in two cities. The
CATV provider placed antennas on hills above the cities and used coaxial cables to
carry the signals received by the antennas to the home television sets of its
subscribers. The system amplified and modulated the signals in order to improve
their strength and efficiently transmit them to subscribers. A subscriber "could
choose any of the . . . programs he wished to view by simply turning the knob on
his own television set."[ … ] The CATV provider "neither edited the programs
received nor originated any programs of its own."[ … ].
317
Asked to decide whether the CATV provider infringed copyright holders' exclusive
right to perform their works publicly, the Court held that the provider did not
"perform" at all.[ … ] The Court drew a line: "Broadcasters perform. Viewers do
not perform."[ … ] And a CATV provider "falls on the viewer's side of the
line."[ … ].
The Court reasoned that CATV providers were unlike broadcasters:
"Broadcasters select the programs to be viewed; CATV systems simply

carry, without editing, whatever programs they receive. Broadcasters
procure programs and propagate them to the public; CATV systems
receive programs that have been released to the public and carry them by
private channels to additional viewers." [ … ]
Instead, CATV providers were more like viewers, for "the basic function [their]
equipment serves is little different from that served by the equipment generally
furnished by" viewers.[ … ].
In Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U. S. 394

(1974), the Court considered the copyright liability of a CATV provider that carried
broadcast television programming into subscribers' homes from hundreds of miles
away. Although the Court recognized that a viewer might not be able to afford
amplifying equipment that would provide access to those distant signals, it
nonetheless found that the CATV provider was more like a viewer than a
broadcaster.[ … ][ … ]
B
In 1976 Congress amended the Copyright Act in large part to reject the Court's
holdings in Fortnightly and Teleprompter.[ … ] Congress enacted new language
that erased the Court's line between broadcaster and viewer, in respect to
"perform[ing]" a work. The amended statute clarifies that to "perform" an
audiovisual work means "to show its images in any sequence or to make the sounds
accompanying it audible." §101; see ibid. (defining "[a]udiovisual works" as
"works that consist of a series of related images which are intrinsically intended to
be shown by the use of machines . . ., together with accompanying sounds"). Under
this new language, both the broadcaster and the viewer of a television program
"perform," because they both show the program's images and make audible the
program's sounds.[ … ].
Congress also enacted the Transmit Clause, which specifies that an entity performs
publicly when it "transmit[s]. . . a performance . . . to the public." §101; see ibid.
(defining "[t]o `transmit' a performance" as "to communicate it by any device or
process whereby images or sounds are received beyond the place from which they
are sent"). Cable system activities, like those of the CATV systems in Fortnightly
and Teleprompter, lie at the heart of the activities that Congress intended this
language to cover.[ … ] The Clause thus makes clear that an entity that acts like a
CATV system itself performs, even if when doing so, it simply enhances viewers'
ability to receive broadcast television signals.
ChapterNumber:
318
Congress further created a new section of the Act to regulate cable companies'
public performances of copyrighted works. See §111. Section 111 creates a
complex, highly detailed compulsory licensing scheme that sets out the conditions,
including the payment of compulsory fees, under which cable systems may
retransmit broadcasts.[ … ].
Congress made these three changes to achieve a similar end: to bring the activities
of cable systems within the scope of the Copyright Act.
C
This history makes clear that Aereo is not simply an equipment provider. Rather,
Aereo, and not just its subscribers, "perform[s]" (or "transmit[s]"). Aereo's
activities are substantially similar to those of the CATV companies that Congress
amended the Act to reach. See id., at 89 ("[C]able systems are commercial
enterprises whose basic retransmission operations are based on the carriage of
copyrighted program material"). Aereo sells a service that allows subscribers to
watch television programs, many of which are copyrighted, almost as they are being
broadcast. In providing this service, Aereo uses its own equipment, housed in a
centralized warehouse, outside of its users' homes. By means of its technology
(antennas, transcoders, and servers), Aereo's system "receive[s] programs that have
been released to the public and carr[ies] them by private channels to additional
viewers." Fortnightly, 392 U. S., at 400. It "carr[ies] . . . whatever programs [it]
receive[s]," and it offers "all the programming" of each over-the-air station it
carries. Id., at 392, 400.
Aereo's equipment may serve a "viewer function"; it may enhance the viewer's
ability to receive a broadcaster's programs. It may even emulate equipment a viewer
could use at home. But the same was true of the equipment that was before the
Court, and ultimately before Congress, in Fortnightly and Teleprompter.
We recognize, and Aereo and the dissent emphasize, one particular difference
between Aereo's system and the cable systems at issue in Fortnightly and
Teleprompter. The systems in those cases transmitted constantly; they sent
continuous programming to each subscriber's television set. In contrast, Aereo's
system remains inert until a subscriber indicates that she wants to watch a program.
Only at that moment, in automatic response to the subscriber's request, does Aereo's
system activate an antenna and begin to transmit the requested program.
This is a critical difference, says the dissent. It means that Aereo's subscribers, not
Aereo, "selec[t] the copyrighted content" that is "perform[ed],"[ … ] and for that
reason they, not Aereo, "transmit" the performance. Aereo is thus like "a copy shop
that provides its patrons with a library card." Post, at 5. A copy shop is not directly
liable whenever a patron uses the shop's machines to "reproduce" copyrighted
materials found in that library. See §106(1) ("exclusive righ[t] . . . to reproduce the
copyrighted work"). And by the same token, Aereo should not be directly liable
whenever its patrons use its equipment to "transmit" copyrighted television
programs to their screens.
In our view, however, the dissent's copy shop argument, in whatever form, makes
too much out of too little. Given Aereo's overwhelming likeness to the cable
companies targeted by the 1976 amendments, this sole technological difference
319
between Aereo and traditional cable companies does not make a critical difference
here. The subscribers of the Fortnightly and Teleprompter cable systems also
selected what programs to display on their receiving sets. Indeed, as we explained
in Fortnightly, such a subscriber "could choose any of the . . . programs he wished
to view by simply turning the knob on his own television set." [ … ] The same is
true of an Aereo subscriber. Of course, in Fortnightly the television signals, in a
sense, lurked behind the screen, ready to emerge when the subscriber turned the
knob. Here the signals pursue their ordinary course of travel through the universe
until today's "turn of the knob"—a click on a website—activates machinery that
intercepts and reroutes them to Aereo's subscribers over the Internet. But this
difference means nothing to the subscriber. It means nothing to the broadcaster. We
do not see how this single difference, invisible to subscriber and broadcaster alike,
could transform a system that is for all practical purposes a traditional cable system
into "a copy shop that provides its patrons with a library card."
In other cases involving different kinds of service or technology providers, a user's

involvement in the operation of the provider's equipment and selection of the
content transmitted may well bear on whether the provider performs within the
meaning of the Act. But the many similarities between Aereo and cable companies,
considered in light of Congress' basic purposes in amending the Copyright Act,
convince us that this difference is not critical here. We conclude that Aereo is not
just an equipment supplier and that Aereo "perform[s]."
III
Next, we must consider whether Aereo performs petitioners' works "publicly,"
within the meaning of the Transmit Clause. Under the Clause, an entity performs a
work publicly when it "transmit[s] . . . a performance . . . of the work . . . to the
public." §101. Aereo denies that it satisfies this definition. It reasons as follows:
First, the "performance" it "transmit[s]" is the performance created by its act of
transmitting. And second, because each of these performances is capable of being
received by one and only one subscriber, Aereo transmits privately, not publicly.
Even assuming Aereo's first argument is correct, its second does not follow.
We begin with Aereo's first argument. What performance does Aereo transmit?
Under the Act, "[t]o `transmit' a performance . . . is to communicate it by any
device or process whereby images or sounds are received beyond the place from
which they are sent."[ … ] And "[t]o `perform'" an audiovisual work means "to
show its images in any sequence or to make the sounds accompanying it audible."
Ibid.
Petitioners say Aereo transmits a prior performance of their works. Thus when
Aereo retransmits a network's prior broadcast, the underlying broadcast (itself a
performance) is the performance that Aereo transmits. Aereo, as discussed above,
says the performance it transmits is the new performance created by its act of
transmitting. That performance comes into existence when Aereo streams the
sounds and images of a broadcast program to a subscriber's screen.
We assume arguendo that Aereo's first argument is correct. Thus, for present
purposes, to transmit a performance of (at least) an audiovisual work means to
communicate contemporaneously visible images and contemporaneously audible
sounds of the work. Cf. United States v. American Soc. of Composers, Authors and
ChapterNumber:
320
Publishers, 627 F. 3d 64, 73 (CA2 2010) (holding that a download of a work is not
a performance because the data transmitted are not "contemporaneously
perceptible"). When an Aereo subscriber selects a program to watch, Aereo streams
the program over the Internet to that subscriber. Aereo thereby "communicate[s]" to
the subscriber, by means of a "device or process," the work's images and sounds.
[ … ] And those images and sounds are contemporaneously visible and audible on
the subscriber's computer (or other Internet-connected device). So under our
assumed definition, Aereo transmits a performance whenever its subscribers watch
a program.
But what about the Clause's further requirement that Aereo transmit a performance
"to the public"? As we have said, an Aereo subscriber receives broadcast television
signals with an antenna dedicated to him alone. Aereo's system makes from those
signals a personal copy of the selected program. It streams the content of the copy
to the same subscriber and to no one else. One and only one subscriber has the
ability to see and hear each Aereo transmission. The fact that each transmission is
to only one subscriber, in Aereo's view, means that it does not transmit a
performance "to the public."
In terms of the Act's purposes, these differences do not distinguish Aereo's system
from cable systems, which do perform "publicly." Viewed in terms of Congress'
regulatory objectives, why should any of these technological differences matter?
They concern the behind-the-scenes way in which Aereo delivers television
programming to its viewers' screens. They do not render Aereo's commercial
objective any different from that of cable companies. Nor do they significantly alter
the viewing experience of Aereo's subscribers. Why would a subscriber who wishes
to watch a television show care much whether images and sounds are delivered to
his screen via a large multisubscriber antenna or one small dedicated antenna,
whether they arrive instantaneously or after a few seconds' delay, or whether they
are transmitted directly or after a personal copy is made? And why, if Aereo is
right, could not modern CATV systems simply continue the same commercial and
consumer-oriented activities, free of copyright restrictions, provided they substitute
such new technologies for old? Congress would as much have intended to protect a
copyright holder from the unlicensed activities of Aereo as from those of cable
companies.
The text of the Clause effectuates Congress' intent. Aereo's argument to the
contrary relies on the premise that "to transmit . . . a performance" means to make a
single transmission. But the Clause suggests that an entity may transmit a
performance through multiple, discrete transmissions. That is because one can
"transmit" or "communicate" something through a set of actions. Thus one can
transmit a message to one's friends, irrespective of whether one sends separate
identical e-mails to each friend or a single e-mail to all at once. So can an elected
official communicate an idea, slogan, or speech to her constituents, regardless of
whether she communicates that idea, slogan, or speech during individual phone
calls to each constituent or in a public square.
The fact that a singular noun ("a performance") follows the words "to transmit"
does not suggest the contrary. One can sing a song to his family, whether he sings
the same song one-on-one or in front of all together. Similarly, one's colleagues
may watch a performance of a particular play—say, this season's modern-dress
version of "Measure for Measure"—whether they do so at separate or at the same
showings. By the same principle, an entity may transmit a performance through one
or several transmissions, where the performance is of the same work.
321
The Transmit Clause must permit this interpretation, for it provides that one may
transmit a performance to the public "whether the members of the public capable of
receiving the performance . . . receive it . . . at the same time or at different times."
§101. Were the words "to transmit . . . a performance" limited to a single act of
communication, members of the public could not receive the performance
communicated "at different times." Therefore, in light of the purpose and text of the
Clause, we conclude that when an entity communicates the same
contemporaneously perceptible images and sounds to multiple people, it transmits a
performance to them regardless of the number of discrete communications it makes.
We do not see how the fact that Aereo transmits via personal copies of programs
could make a difference. The Act applies to transmissions "by means of any device
or process."[ … ] And retransmitting a television program using user-specific
copies is a "process" of transmitting a performance. A "cop[y]" of a work is simply
a "material objec[t] . . . in which a work is fixed . . . and from which the work can
be perceived, reproduced, or otherwise communicated." Ibid. So whether Aereo
transmits from the same or separate copies, it performs the same work; it shows the
same images and makes audible the same sounds. Therefore, when Aereo streams
the same television program to multiple subscribers, it "transmit[s] . . . a
performance" to all of them.
Moreover, the subscribers to whom Aereo transmits television programs constitute

"the public." Aereo communicates the same contemporaneously perceptible images
and sounds to a large number of people who are unrelated and unknown to each
other. This matters because, although the Act does not define "the public," it
specifies that an entity performs publicly when it performs at "any place where a
substantial number of persons outside of a normal circle of a family and its social
acquaintances is gathered."[ … ] The Act thereby suggests that "the public" consists
of a large group of people outside of a family and friends.
Neither the record nor Aereo suggests that Aereo's subscribers receive
performances in their capacities as owners or possessors of the underlying works.
This is relevant because when an entity performs to a set of people, whether they
constitute "the public" often depends upon their relationship to the underlying
work. When, for example, a valet parking attendant returns cars to their drivers, we
would not say that the parking service provides cars "to the public." We would say
that it provides the cars to their owners. We would say that a car dealership, on the
other hand, does provide cars to the public, for it sells cars to individuals who lack
a pre-existing relationship to the cars. Similarly, an entity that transmits a
performance to individuals in their capacities as owners or possessors does not
perform to "the public," whereas an entity like Aereo that transmits to large
numbers of paying subscribers who lack any prior relationship to the works does so
perform.
Finally, we note that Aereo's subscribers may receive the same programs at
different times and locations. This fact does not help Aereo, however, for the
Transmit Clause expressly provides that an entity may perform publicly "whether
the members of the public capable of receiving the performance . . . receive it in the
same place or in separate places and at the same time or at different times."[ … ] In
other words, "the public" need not be situated together, spatially or temporally. For
these reasons, we conclude that Aereo transmits a performance of petitioners'
copyrighted works to the public, within the meaning of the Transmit Clause.
ChapterNumber:
322
IV
Aereo and many of its supporting amici argue that to apply the Transmit Clause to
Aereo's conduct will impose copyright liability on other technologies, including
new technologies, that Congress could not possibly have wanted to reach. We agree
that Congress, while intending the Transmit Clause to apply broadly to cable
companies and their equivalents, did not intend to discourage or to control the
emergence or use of different kinds of technologies. But we do not believe that our
limited holding today will have that effect.
For one thing, the history of cable broadcast transmissions that led to the enactment
of the Transmit Clause informs our conclusion that Aereo "perform[s]," but it does
not determine whether different kinds of providers in different contexts also
"perform." For another, an entity only transmits a performance when it
communicates contemporaneously perceptible images and sounds of a work. [ … ].
Further, we have interpreted the term "the public" to apply to a group of individuals
acting as ordinary members of the public who pay primarily to watch broadcast
television programs, many of which are copyrighted. We have said that it does not
extend to those who act as owners or possessors of the relevant product. And we
have not considered whether the public performance right is infringed when the
user of a service pays primarily for something other than the transmission of
copyrighted works, such as the remote storage of content. See Brief for United
States as Amicus Curiae 31 (distinguishing cloudbased storage services because
they "offer consumers more numerous and convenient means of playing back copies
that the consumers have already lawfully acquired[ … ]). In addition, an entity does
not transmit to the public if it does not transmit to a substantial number of people
outside of a family and its social circle.
We also note that courts often apply a statute's highly general language in light of
the statute's basic purposes. Finally, the doctrine of "fair use" can help to prevent
inappropriate or inequitable applications of the Clause.[ … ].
We cannot now answer more precisely how the Transmit Clause or other provisions
of the Copyright Act will apply to technologies not before us. We agree with the
Solicitor General that "[q]uestions involving cloud computing, [remote storage]
DVRs, and other novel issues not before the Court, as to which `Congress has not
plainly marked [the] course,' should await a case in which they are squarely
presented."[ … ] And we note that, to the extent commercial actors or other
interested entities may be concerned with the relationship between the development
and use of such technologies and the Copyright Act, they are of course free to seek
action from Congress[ … ]
In sum, having considered the details of Aereo's practices, we find them highly
similar to those of the CATV systems in Fortnightly and Teleprompter. And those
are activities that the 1976 amendments sought to bring within the scope of the
Copyright Act. Insofar as there are differences, those differences concern not the
nature of the service that Aereo provides so much as the technological manner in
which it provides the service. We conclude that those differences are not adequate
to place Aereo's activities outside the scope of the Act.
323
For these reasons, we conclude that Aereo "perform[s]" petitioners' copyrighted

works "publicly," as those terms are defined by the Transmit Clause. We therefore
reverse the contrary judgment of the Court of Appeals, and we remand the case for
further proceedings consistent with this opinion.
It is so ordered.
JUSTICE SCALIA, with whom JUSTICE

THOMAS and JUSTICE ALITO join,
dissenting.
This case is the latest skirmish in the long-running copyright battle over the
delivery of television program-ming. Petitioners, a collection of television networks
and affiliates (Networks), broadcast copyrighted programs on the public airwaves
for all to see. Aereo, respondent, operates an automated system that allows
subscribers to receive, on Internet-connected devices, programs that they select,
including the Networks' copyrighted programs. The Networks sued Aereo for
several forms of copyright infringement, but we are here concerned with a single
claim: that Aereo violates the Networks'"exclusive righ[t]" to "perform" their
programs "publicly."[ … ] That claim fails at the very outset because Aereo does
not "perform" at all. The Court manages to reach the opposite conclusion only by
disregarding widely accepted rules for service-provider liability and adopting in
their place an improvised standard ("looks-like-cable-TV") that will sow confusion
for years to come.
I. Legal Standar [ … ]
.
The Networks' claim is governed by a simple but profoundly important rule: A

defendant may be held directly liable only if it has engaged in volitional conduct
that violates the Act. See 3 W. Patry, Copyright §9:5.50 (2013). This requirement is
firmly grounded in the Act's text, which defines "perform" in active, affirmative
terms: One "perform[s]" a copyrighted "audiovisual work," such as a movie or news
broadcast, by "show[ing] its images in any sequence" or "mak[ing] the sounds
accompanying it audible." §101. And since the Act makes it unlawful to copy or
perform copyrighted works, not to copy or perform in general,[ … ] the volitional-
act requirement demands conduct directed to the plaintiff's copyrighted
materia[ … ]4. Every Court of Appeals to have considered an automated-service
provider's direct liability for copyright infringement has adopted that rule. [ … ] ]
Although we have not opined on the issue, our cases are fully consistent with a
volitional-conduct requirement. For example, we gave several examples of direct
infringement in Sony, each of which involved a volitional act directed to the
plaintiff's copyrighted material. See 464 U. S., at 437, n. 18.
The volitional-conduct requirement is not at issue in most direct-infringement case [

… ]). But it comes right to the fore when a direct-infringement claim is lodged
against a defendant who does nothing more than operate an automated, user-
controlled system.[ … ]. Internet-service providers are a prime example. When one
user sends data to another, the provider's equipment facilitates the transfer
ChapterNumber:
324
automatically. Does that mean that the provider is directly liable when the
transmission happens to result in the "reproduc[tion]," §106(1), of a copyrighted
work? It does not. The provider's system is "totally indifferent to the material's
content," whereas courts require "some aspect of volition" directed at the
copyrighted material before direct liability may be imposed. CoStar, 373 F. 3d, at
550-551. [2] The defendant may be held directly liable only if the defendant itself
"trespassed on the exclusive domain of the copyright owner." Id., at 550. Most of
the time that issue will come down to who selects the copyrighted content: the
defendant or its customer[ … ]32.
A comparison between copy shops and video-on-demand services illustrates the

point. A copy shop rents out photocopiers on a per-use basis. One customer might
copy his 10-year-old's drawings—a perfectly lawful thing to do— while another
might duplicate a famous artist's copyrighted photographs—a use clearly prohibited
by §106(1). Either way, the customer chooses the content and activates the copying
function; the photocopier does nothing except in response to the customer's
commands. Because the shop plays no role in selecting the content, it cannot be
held directly liable when a customer makes an infringing copy.[ … ].
Video-on-demand services, like photocopiers, respond automatically to user input,

but they differ in one crucial respect: They choose the content.[ … ]. That selection
and arrangement by the service provider constitutes a volitional act directed to
specific copyrighted works and thus serves as a basis for direct liability.
The distinction between direct and secondary liability would collapse if there were
not a clear rule for determining whether the defendant committed the infringing act.
[ … ]. The volitional-conduct requirement supplies that rule; its purpose is not to
excuse defendants from accountability, but to channel the claims against them into
the correct analytical track.[ … ]. Thus, in the example given above, the fact that
the copy shop does not choose the content simply means that its culpability will be
assessed using secondary-liability rules rather than direct-liability rules. See Sony,
supra, at 434-442; Cartoon Network, supra, at 132-133.
II. Application to Aereo

So which is Aereo: the copy shop or the video-on-demand service? In truth, it is
neither. Rather, it is akin to a copy shop that provides its patrons with a library
card. Aereo offers access to an automated system consisting of routers, servers,
transcoders, and dime-sized antennae. Like a photocopier or VCR, that system lies
dormant until a subscriber activates it. When a subscriber selects a program,
Aereo's system picks up the relevant broadcast signal, translates its audio and video
components into digital data, stores the data in a user-specific file, and transmits
that file's contents to the subscriber via the Internet—at which point the subscriber's
laptop, tablet, or other device displays the broadcast just as an ordinary television
would. The result of that process fits the statutory definition of a performance to a
tee: The subscriber's device "show[s]" the broadcast's "images" and "make[s] the
sounds accompanying" the broadcast "audible." §101. The only question is whether
those performances are the product of Aereo's volitional conduct.
They are not. Unlike video-on-demand services, Aereo does not provide a
prearranged assortment of movies and television shows. Rather, it assigns each
subscriber an antenna that—like a library card—can be used to obtain whatever
325
broadcasts are freely available. Some of those broadcasts are copyrighted; others
are in the public domain. The key point is that subscribers call all the shot[ … ]).
In sum, Aereo does not "perform" for the sole and simple reason that it does not
make the choice of content. And because Aereo does not perform, it cannot be held
directly liable for infringing the Networks' public-performance right[ … ]] That
conclusion does not necessarily mean that Aereo's service complies with the
Copyright Act. Quite the contrary. The Networks' complaint alleges that Aereo is
directly and secondarily liable for infringing their publicperformance rights
(§106(4)) and also their reproduction rights (§106(1)). Their request for a
preliminary injunction—the only issue before this Court—is based exclusively on
the direct-liability portion of the public-performance claim (and further limited to
Aereo's "watch" function, as opposed to its "record" function).[ … ] Affirming the
judgment below would merely return this case to the lower courts for consideration
of the Networks' remaining claims[ … ]
I share the Court's evident feeling that what Aereo is doing (or enabling to be done)
to the Networks' copyrighted programming ought not to be allowed. But perhaps we
need not distort the Copyright Act to forbid it. As discussed at the outset, Aereo's
secondary liability for performance infringement is yet to be determined, as is its
primary and secondary liability for reproduction infringement. If that does not
suffice, then (assuming one shares the majority's estimation of right and wrong)
what we have before us must be considered a "loophole" in the law. It is not the
role of this Court to identify and plug loopholes. It is the role of good lawyers to
identify and exploit them, and the role of Congress to eliminate them if it wishes.
Congress can do that, I may add, in a much more targeted, better informed, and less
disruptive fashion than the crude "looks-like-cable-TV" solution the Court invents
today[ … ]
[1] An unpublished decision of the Third Circuit is to the same effect. Parker v.
Google, Inc., 242 Fed. Appx. 833, 836-837 (2007) (per curiam)[ … ]
[2] Congress has enacted several safe-harbor provisions applicable to automated

network processes, see, e.g., 17 U. S. C. §512(a)-(b), but those provisions do not
foreclose "any other defense," §512(l), including a volitional-conduct defense.
[3] Because I conclude that Aereo does not perform at all, I do not reach the
question whether the performances in this case are to the public. See ante, at 10-15.
[4] See Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U. S. 394
(1974); Fortnightly Corp. v. United Artists Television, Inc., 392 U. S. 390 (1968).
[5] The Court observes that "[t]he subscribers of the Fortnightly and Teleprompter
cable systems . . . selected what programs to display on their receiving sets," but
acknowledges that those choices were possible only because "the television signals,
in a sense, lurked behind the screen, ready to emerge when the subscriber turned the
knob." Ante, at 10. The latter point is dispositive: The signals were "ready to
emerge" because the cable system—much like a video-on-demand provider— took
affirmative, volitional steps to put them there. As discussed above, the same cannot
be said of the programs available through Aereo's automated system.
ChapterNumber:
326
[6] Broadcasts accessible through the "watch" function are technically not live
because Aereo's servers take anywhere from a few seconds to a few minutes to
begin transmitting data to a subscriber's device. But the resulting delay is so brief
that it cannot reasonably be classified as time shifting.

8.2.2
Perfect 10 v. Amazon.com


508 F.3d 1146
Nos. 06-55405, 06-55406, 06-55425, 06-55759, 06-
55854, 06-55877
2007-12-03
508 F.3d 1146
PERFECT 10, INC., a California corporation,
v.
AMAZON.COM, INC. [ … ][ … ][ … ]
Argued and Submitted November 15, 2006.
Filed May 16, 2007.
Amended December 3, 2007.
[ … ][ … ][ … ]
IKUTA, Circuit Judge:
In this appeal, we consider a copyright owner's efforts to stop an Internet search

engine from facilitating access to infringing images. Perfect 10, Inc. sued Google
Inc., for infringing Perfect 10's copyrighted photographs of nude models, among
other claims. Perfect 10 brought a similar action against Amazon.com and its
subsidiary A9.com (collectively, "Amazon.com"). The district court preliminarily
enjoined Google from creating and publicly displaying thumbnail versions of
Perfect 10's images, Perfect 10 v. Google, Inc., 416 F.Supp.2d 828 (C.D.Cal.2006),
but did not enjoin Google from linking to third-party websites that display
infringing full-size versions of Perfect 10's images. Nor did the district court
preliminarily enjoin Amazon.com from giving users access to information provided
by Google. Perfect 10 and Google both appeal the district court's order. We have
jurisdiction pursuant to 28 U.S.C. § 1292(a)(1).[1]
327
[1155] The district court handled this complex case in a particularly thoughtful and
skillful manner. Nonetheless, the district court erred on certain issues, as we will
further explain below. We affirm in part, reverse in part, and remand.
Background
Google's computers, along with millions of others, are connected to networks
known collectively as the "Internet." "The Internet is a world-wide network of
networks ... all sharing a common communications technology." [ … ][ … ]
[ … ]Computer owners can provide information stored on their computers to other
users connected to the Internet through a medium called a webpage. A webpage
consists of text interspersed with instructions written in Hypertext Markup
Language ("HTML") that is stored in a computer. No images are stored on a
webpage; rather, the HTML instructions on the webpage provide an address for
where the images are stored, whether in the webpage publisher's computer or some
other computer. In general, webpages are publicly available and can be accessed by
computers connected to the Internet through the use of a web browser.
Google operates a search engine, a software program that automatically accesses

thousands of websites (collections of webpages) and indexes them within a database
stored on Google's computers. When a Google user accesses the Google website
and types in a search query, Google's software searches its database for websites
responsive to that search query. Google then sends relevant information from its
index of websites to the user's computer. Google's search engines can provide
results in the form of text, images, or videos.
The Google search engine that provides responses in the form of images is called
"Google Image Search." In response to a search query, Google Image Search
identifies text in its database responsive to the query and then communicates to
users the images associated with the relevant text. Google's software cannot
recognize and index the images themselves. Google Image Search provides search
results as a webpage of small images called "thumbnails," which are stored in
Google's servers. The thumbnail images are reduced, lower-resolution versions of
full-sized images stored on third-party computers.
When a user clicks on a thumbnail image, the user's browser program interprets
HTML instructions on Google's webpage. These HTML instructions direct the
user's browser to cause a rectangular area (a "window") to appear on the user's
computer screen. The window has two separate areas of information. The browser
fills the top section of the screen with information from the Google webpage,
including the thumbnail image and text. The HTML instructions also give the user's
browser the address of the website publisher's computer that stores the full-size
version of the thumbnail. [2] By following [1156] the HTML instructions to access
the third-party webpage, the user's browser connects to the website publisher's
computer, downloads the full-size image, and makes the image appear at the bottom
of the window on the user's screen. Google does not store the images that fill this
lower part of the window and does not communicate the images to the user; Google
simply provides HTML instructions directing a user's browser to access a third-
ChapterNumber:
328
party website. However, the top part of the window (containing the information
from the Google webpage) appears to frame and comment on the bottom part of the
window. Thus, the user's window appears to be filled with a single integrated
presentation of the full-size image, but it is actually an image from a third-party
website framed by information from Google's website. The process by which the
webpage directs a user's browser to incorporate content from different computers
into a single window is referred to as "in-line linking." Kelly v. Arriba Soft Corp.,
336 F.3d 811, 816 (9th Cir.2003). The term "framing" refers to the process by
which information from one computer appears to frame and annotate the in-line
linked content from another computer. Perfect 10, 416 F.Supp.2d at 833-34.
Google also stores webpage content in its cache. [3] For each cached webpage,
Google's cache contains the text of the webpage as it appeared at the time Google
indexed the page, but does not store images from the webpage. Id. at 833. Google
may provide a link to a cached webpage in response to a user's search query.
However, Google's cache version of the webpage is not automatically updated when
the webpage is revised by its owner. So if the webpage owner updates its webpage
to remove the HTML instructions for finding an infringing image, a browser
communicating directly with the webpage would not be able to access that image.
However, Google's cache copy of the webpage would still have the old HTML
instructions for the infringing image. Unless the owner of the computer changed the
HTML address of the infringing image, or otherwise rendered the image
unavailable, a browser accessing Google's cache copy of the website could still
access the image where it is stored on the website publisher's computer. In other
words, Google's cache copy could provide a user's browser with valid directions to
an infringing image even though the updated webpage no longer includes that
infringing image.
In addition to its search engine operations, Google generates revenue through a

business program called "AdSense." Under this program, the owner of a website
can register with Google to become an AdSense "partner." The website owner then
places HTML instructions on its webpages that signal Google's server to place
advertising on the webpages that is relevant to the webpages' content. Google's
computer program selects the advertising automatically by means of an algorithm.
AdSense participants agree to share the revenues that flow from such advertising
with Google.
[1157] Google also generated revenues through an agreement with Amazon.com

that allowed Amazon.com to in-line link to Google's search results. Amazon.com
gave its users the impression that Amazon.com was providing search results, but
Google communicated the search results directly to Amazon.com's users.
Amazon.com routed users' search queries to Google and automatically transmitted
Google's responses (i.e., HTML instructions for linking to Google's search results)
back to its users.
Perfect 10 markets and sells copyrighted images of nude models. Among other
enterprises, it operates a subscription website on the Internet. Subscribers pay a
monthly fee to view Perfect 10 images in a "members' area" of the site. Subscribers
must use a password to log into the members' area. Google does not include these
password-protected images from the members' area in Google's index or database.
Perfect 10 has also licensed Fonestarz Media Limited to sell and distribute Perfect
10's reduced-size copyrighted images for download and use on cell phones.
329
Some website publishers republish Perfect 10's images on the Internet without
authorization. Once this occurs, Google's search engine may automatically index
the webpages containing these images and provide thumbnail versions of images in
response to user inquiries. When a user clicks on the thumbnail image returned by
Google's search engine, the user's browser accesses the third-party webpage and in-
line links to the full-sized infringing image stored on the website publisher's
computer. This image appears, in its original context, on the lower portion of the
window on the user's computer screen framed by information from Google's
webpage.
Procedural History. In May 2001, Perfect 10 began notifying Google that its
thumbnail images and in-line linking to the full-size images infringed Perfect 10's
copyright. Perfect 10 continued to send these notices through 2005.
On November 19, 2004, Perfect 10 filed an action against Google that included
copyright infringement claims. This was followed by a similar action against
Amazon.com on June 29, 2005. On July 1, 2005 and August 24, 2005, Perfect 10
sought a preliminary injunction to prevent Amazon.com and Google, respectively,
from "copying, reproducing, distributing, publicly displaying, adapting or otherwise
infringing, or contributing to the infringement" of Perfect 10's photographs; linking
to websites that provide full-size infringing versions of Perfect 10's photographs;
and infringing Perfect 10's username/password combinations.
The district court consolidated the two actions and heard both preliminary
injunction motions on November 7, 2005. The district court issued orders granting
in part and denying in part the preliminary injunction against Google and denying
the preliminary injunction against Amazon.com. Perfect 10 and Google cross-
appealed the partial grant and partial denial of the preliminary injunction motion,
and Perfect 10 appealed the denial of the preliminary injunction against
Amazon.com. On June 15, 2006, the district court temporarily stayed the
preliminary injunction.
II
Standard of Review
We review the district court's grant or denial of a preliminary injunction for an
abuse of discretion. [ … ] The district court must support a preliminary injunction
with findings of fact, which we review for clear error. [ … ][ … ][ … ]We review
the district court's conclusions of law de novo. Napster, 239 F.3d at 1013.
[1158] Section 502(a) of the Copyright Act authorizes a court to grant injunctive
relief "on such terms as it may deem reasonable to prevent or restrain infringement
of a copyright." 17 U.S.C. § 502(a). "Preliminary injunctive relief is available to a
party who demonstrates either: (1) a combination of probable success on the merits
and the possibility of irreparable harm; or (2) that serious questions are raised and
the balance of hardships tips in its favor. These two formulations represent two
points on a sliding scale in which the required degree of irreparable harm increases
as the probability of success decreases." Napster, 239 F.3d at 1013 (internal
quotation and citation omitted).
ChapterNumber:
330
Because Perfect 10 has the burden of showing a likelihood of success on the merits,
the district court held that Perfect 10 also had the burden of demonstrating a
likelihood of overcoming Google's fair use defense under 17 U.S.C. § 107. Perfect
10, 416 F.Supp.2d at 836-37. This ruling was erroneous. At trial, the defendant in
an infringement action bears the burden of proving fair use. See Campbell v. Acuff-
Rose Music, Inc., 510 U.S. 569, 590, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994).
Because "the burdens at the preliminary injunction stage track the burdens at trial,"
once the moving party has carried its burden of showing a likelihood of success on
the merits, the burden shifts to the non-moving party to show a likelihood that its
affirmative defense will succeed. [ … ][ … ][ … ]Accordingly, once Perfect 10 has
shown a likelihood of success on the merits, the burden shifts to Google to show a
likelihood that its affirmative defenses will succeed.
In addition to its fair use defense, Google also raises an affirmative defense under
title II of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512.
Congress enacted title II of the DMCA "to provide greater certainty to service
providers concerning their legal exposure for infringements that may occur in the
course of their activities." Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir.
2004) (internal quotation omitted). Sections 512(a) through (d) limit liability for
(respectively): "(1) transitory digital network communications; (2) system caching;
(3) information residing on systems or networks at the direction of users; and (4)
information location tools." Id. at 1077. A service provider that qualifies for such
protection is not liable for monetary relief and may be subject only to the narrow
injunctive relief set forth in section 512(j). 17 U.S.C. § 512(a). If Perfect 10
demonstrates a likelihood of success on the merits, Google must show a likelihood
of succeeding in its claim that it qualifies for protection under title II of the DMCA.
[4]
[1159]
III
Direct Infringement
Perfect 10 claims that Google's search engine program directly infringes two
exclusive rights granted to copyright holders: its display rights and its distribution
rights. [5] "Plaintiffs must satisfy two requirements to present a prima facie case of
direct infringement: (1) they must show ownership of the allegedly infringed
material and (2) they must demonstrate that the alleged infringers violate at least
one exclusive right granted to copyright holders under 17 U.S.C. § 106." Napster,
239 F.3d at 1013; see 17 U.S.C. § 501(a). Even if a plaintiff satisfies these two
requirements and makes a prima facie case of direct infringement, the defendant
may avoid liability if it can establish that its use of the images is a "fair use" as set
forth in 17 U.S.C. § 107. See Kelly, 336 F.3d at 817.
Perfect 10's ownership of at least some of the images at issue is not disputed. See
Perfect 10, 416 F.Supp.2d at 836.
The district court held that Perfect 10 was likely to prevail in its claim that Google
violated Perfect 10's display right with respect to the infringing thumbnails. Id. at
844. However, the district court concluded that Perfect 10 was not likely to prevail
on its claim that Google violated either Perfect 10's display or distribution right
331
with respect to its full-size infringing images. Id. at 844-45. We review these
rulings for an abuse of discretion. Napster, 239 F.3d at 1013.
A. Display Right
In considering whether Perfect 10 made a prima facie case of violation of its
display right, the district court reasoned that a computer owner that stores an image
as electronic information and serves that electronic information directly to the user
("i.e., physically sending ones and zeroes over the [I]nternet to the user's browser,"
Perfect 10, 416 F.Supp.2d at 839) is displaying the electronic information in
violation of a copyright holder's exclusive display right. Id. at 843-45; see 17
U.S.C. § 106(5). Conversely, the owner of a computer that does not store and serve
the electronic information to a user is not displaying that information, even if such
owner in-line links to or frames the electronic information. Perfect 10, 416
F.Supp.2d at 843-45. The district court referred to this test as the "server test." Id.
at 838-39.
Applying the server test, the district court concluded that Perfect 10 was likely to
succeed in its claim that Google's thumbnails constituted direct infringement but
was unlikely to succeed in its claim that Google's in-line linking to full-size
infringing images constituted a direct infringement. [1160] Id. at 843-45. As
explained below, because this analysis comports with the language of the Copyright
Act, we agree with the district court's resolution of both these issues.
We have not previously addressed the question when a computer displays a

copyrighted work for purposes of section 106(5). Section 106(5) states that a
copyright owner has the exclusive right "to display the copyrighted work publicly."
The Copyright Act explains that "display" means "to show a copy of it, either
directly or by means of a film, slide, television image, or any other device or
process...." 17 U.S.C. § 101. Section 101 defines "copies" as "material objects,
other than phonorecords, in which a work is fixed by any method now known or
later developed, and from which the work can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or device." Id.
Finally, the Copyright Act provides that "[a] work is `fixed' in a tangible medium of
expression when its embodiment in a copy or phonorecord, by or under the
authority of the author, is sufficiently permanent or stable to permit it to be
perceived, reproduced, or otherwise communicated for a period of more than
transitory duration." Id.
We must now apply these definitions to the facts of this case. A photographic image
is a work that is "`fixed' in a tangible medium of expression," for purposes of the
Copyright Act, when embodied (i.e., stored) in a computer's server (or hard disk, or
other storage device). The image stored in the computer is the "copy" of the work
for purposes of copyright law. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d
511, 517-18 (9th Cir.1993) (a computer makes a "copy" of a software program
when it transfers the program from a third party's computer (or other storage
device) into its own memory, because the copy of the program recorded in the
computer is "fixed" in a manner that is "sufficiently permanent or stable to permit it
to be perceived, reproduced, or otherwise communicated for a period of more than
transitory duration" (quoting 17 U.S.C. § 101)). The computer owner shows a copy
"by means of a ... device or process" when the owner uses the computer to fill the
computer screen with the photographic image stored on that computer, or by
ChapterNumber:
332
communicating the stored image electronically to another person's computer. 17

U.S.C. § 101. In sum, based on the plain language of the statute, a person displays a
photographic image by using a computer to fill a computer screen with a copy of
the photographic image fixed in the computer's memory. There is no dispute that
Google's computers store thumbnail versions of Perfect 10's copyrighted images
and communicate copies of those thumbnails to Google's users. [6] Therefore, Perfect
10 has made a prima facie case that Google's communication of its stored thumbnail
images directly infringes Perfect 10's display right.
Google does not, however, display a copy of full-size infringing photographic

images for purposes of the Copyright Act when Google frames in-line linked
images that appear on a user's computer screen. Because Google's computers do not
store the photographic images, Google does not have a copy of the images for
purposes of the Copyright Act. In other words, Google does not have any "material
objects ... in [1161] which a work is fixed ... and from which the work can be
perceived, reproduced, or otherwise communicated" and thus cannot communicate a
copy. 17 U.S.C. § 101.
Instead of communicating a copy of the image, Google provides HTML instructions

that direct a user's browser to a website publisher's computer that stores the full-
size photographic image. Providing these HTML instructions is not equivalent to
showing a copy. First, the HTML instructions are lines of text, not a photographic
image. Second, HTML instructions do not themselves cause infringing images to
appear on the user's computer screen. The HTML merely gives the address of the
image to the user's browser. The browser then interacts with the computer that
stores the infringing image. It is this interaction that causes an infringing image to
appear on the user's computer screen. Google may facilitate the user's access to
infringing images. However, such assistance raises only contributory liability
issues[ … ][ … ] and does not constitute direct infringement of the copyright
owner's display rights.
Perfect 10 argues that Google displays a copy of the full-size images by framing the
full-size images, which gives the impression that Google is showing the image
within a single Google webpage. While in-line linking and framing may cause some
computer users to believe they are viewing a single Google webpage, the Copyright
Act, unlike the Trademark Act, does not protect a copyright holder against acts that
cause consumer confusion. [ … ][ … ]
Nor does our ruling that a computer owner does not display a copy of an image
when it communicates only the HTML address of the copy erroneously collapse the
display right in section 106(5) into the reproduction right set forth in section
106(1). Nothing in the Copyright Act prevents the various rights protected in
section 106 from overlapping. Indeed, under some circumstances, more than one
right must be infringed in order for an infringement claim to arise. [ … ][ … ][ … ]
[1162] Because Google's cache merely stores the text of webpages, our analysis of
whether Google's search engine program potentially infringes Perfect 10's display
and distribution rights is equally applicable to Google's cache. Perfect 10 is not
likely to succeed in showing that a cached webpage that in-line links to full-size
infringing images violates such rights. For purposes of this analysis, it is irrelevant
whether cache copies direct a user's browser to third-party images that are no longer
available on the third party's website, because it is the website publisher's
computer, rather than Google's computer, that stores and displays the infringing
image.
333
B. Distribution Right
The district court also concluded that Perfect 10 would not likely prevail on its
claim that Google directly infringed Perfect 10's right to distribute its full-size
images. Perfect 10, 416 F.Supp.2d at 844-45. The district court reasoned that
distribution requires an "actual dissemination" of a copy. Id. at 844. Because
Google did not communicate the full-size images to the user's computer, Google did
not distribute these images. Id.
Again, the district court's conclusion on this point is consistent with the language of
the Copyright Act. Section 106(3) provides that the copyright owner has the
exclusive right "to distribute copies or phonorecords of the copyrighted work to the
public by sale or other transfer of ownership, or by rental, lease, or lending." 17
U.S.C. § 106(3). As noted, "copies" means "material objects ... in which a work is
fixed." 17 U.S.C. § 101. The Supreme Court has indicated that in the electronic
context, copies may be distributed electronically. See N.Y. Times Co. v. Tasini, 533
U.S. 483, 498, 121 S.Ct. 2381, 150 L.Ed.2d 500 (2001) (a computer database
program distributed copies of newspaper articles stored in its computerized
database by selling copies of those articles through its database service). Google's
search engine communicates HTML instructions that tell a user's browser where to
find full-size images on a website publisher's computer, but Google does not itself
distribute copies of the infringing photographs. It is the website publisher's
computer that distributes copies of the images by transmitting the photographic
image electronically to the user's computer. As in Tasini, the user can then obtain
copies by downloading the photo or printing it.
Perfect 10 incorrectly relies on Hotaling v. Church of Jesus Christ of Latter-Day

Saints and Napster for the proposition that merely making images "available"
violates the copyright owner's distribution right. Hotaling v. Church of Jesus Christ
of Latter-Day Saints, 118 F.3d 199 (4th Cir.1997); Napster, 239 F.3d 1004.
Hotaling held that the owner of a collection of works who makes them available to
the public may be deemed to have distributed copies of the works. Hotaling, 118
F.3d at 203. Similarly, the distribution rights of the plaintiff copyright owners were
infringed by Napster users (private individuals with collections of music files
stored on their home computers) when they used the Napster software to make their
collections available to all other Napster users. Napster, 239 F.3d at 1011-14.
This "deemed distribution" rule does not apply to Google. Unlike the participants in
the Napster system or the library in Hotaling, Google does not own a collection of
Perfect 10's full-size images and does not communicate these images to the
computers of people using Google's search engine. Though Google indexes these
images, it does not have a collection of stored full-size images it makes available to
the public. Google therefore cannot be deemed to distribute copies of these images
under the reasoning of Napster or [1163] Hotaling. Accordingly, the district court
correctly concluded that Perfect 10 does not have a likelihood of success in proving
that Google violates Perfect 10's distribution rights with respect to full-size images.
C. Fair Use Defense

Because Perfect 10 has succeeded in showing it would prevail in its prima facie
case that Google's thumbnail images infringe Perfect 10's display rights, the burden
ChapterNumber:
334
shifts to Google to show that it will likely succeed in establishing an affirmative

defense. Google contends that its use of thumbnails is a fair use of the images and
therefore does not constitute an infringement of Perfect 10's copyright. See 17
U.S.C. § 107.
The fair use defense permits the use of copyrighted works without the copyright
owner's consent under certain situations. The defense encourages and allows the
development of new ideas that build on earlier ones, thus providing a necessary
counterbalance to the copyright law's goal of protecting creators' work product.
"From the infancy of copyright protection, some opportunity for fair use of
copyrighted materials has been thought necessary to fulfill copyright's very
purpose...." Campbell, 510 U.S. at 575, 114 S.Ct. 1164. "The fair use doctrine thus
`permits [and requires] courts to avoid rigid application of the copyright statute
when, on occasion, it would stifle the very creativity which that law is designed to
foster.'" Id. at 577[ … ].
Congress codified the common law of fair use in 17 U.S.C. § 107, which provides:
Notwithstanding the provisions of sections 106 and 106A, the fair use of a
copyrighted work, including such use by reproduction in copies or
phonorecords or by any other means specified by that section, for
purposes such as criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or research, is not an
infringement of copyright. In determining whether the use made of a work
in any particular case is a fair use the factors to be considered shall
include—
copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use
if such finding is made upon consideration of all the above factors.
17 U.S.C. § 107.
We must be flexible in applying a fair use analysis; it "is not to be simplified with
bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-
case analysis.... Nor may the four statutory factors be treated in isolation, one from
another. All are to be explored, and the results weighed together, in light of the
purposes of copyright." Campbell, 510 U.S. at 577-78, 114 S.Ct. 1164; see also
Kelly, 336 F.3d at 817-18. The purpose of copyright law is "[t]o promote the
Progress of Science and useful Arts," U.S. CONST. art. I, § 8, cl. 8, and to serve
"`the welfare of the public.'" [ … ][ … ]
[1164] In applying the fair use analysis in this case, we are guided by Kelly v.
Arriba Soft Corp., which considered substantially the same use of copyrighted
335
photographic images as is at issue here. See 336 F.3d 811. In Kelly, a photographer
brought a direct infringement claim against Arriba, the operator of an Internet
search engine. The search engine provided thumbnail versions of the photographer's
images in response to search queries. Id. at 815-16. We held that Arriba's use of
thumbnail images was a fair use primarily based on the transformative nature of a
search engine and its benefit to the public. Id. at 818-22. We also concluded that
Arriba's use of the thumbnail images did not harm the photographer's market for his
image. Id. at 821-22.
In this case, the district court determined that Google's use of thumbnails was not a
fair use and distinguished Kelly. Perfect 10, 416 F.Supp.2d at 845-51. We consider
these distinctions in the context of the four-factor fair use analysis.
Purpose and character of the use. The first factor, 17 U.S.C. § 107(1), requires a
court to consider "the purpose and character of the use, including whether such use
is of a commercial nature or is for nonprofit educational purposes." The central
purpose of this inquiry is to determine whether and to what extent the new work is
"transformative." Campbell, 510 U.S. at 579, 114 S.Ct. 1164. A work is
"transformative" when the new work does not "merely supersede the objects of the
original creation" but rather "adds something new, with a further purpose or
different character, altering the first with new expression, meaning, or message." Id.
(internal quotation and alteration omitted). Conversely, if the new work
"supersede[s] the use of the original," the use is likely not a fair use. Harper & Row
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 550-51, 105 S.Ct. 2218, 85
L.Ed.2d 588 (1985) (internal quotation omitted) (publishing the "heart" of an
unpublished work and thus supplanting the copyright holder's first publication right
was not a fair use); see also Wall Data Inc. v. L.A. County Sheriff's Dep't, 447 F.3d
769, 778-82 (9th Cir.2006) (using a copy to save the cost of buying additional
copies of a computer program was not a fair use). [8]
As noted in Campbell, a "transformative work" is one that alters the original work
[1165] "with new expression, meaning, or message." Campbell, 510 U.S. at 579,
114 S.Ct. 1164. "A use is considered transformative only where a defendant
changes a plaintiff's copyrighted work or uses the plaintiff's copyrighted work in a
different context such that the plaintiff's work is transformed into a new creation."
Wall Data, 447 F.3d at 778.
Google's use of thumbnails is highly transformative. In Kelly, we concluded that

Arriba's use of thumbnails was transformative because "Arriba's use of the images
serve[d] a different function than Kelly's use—improving access to information on
the [I]nternet versus artistic expression." Kelly, 336 F.3d at 819. Although an image
may have been created originally to serve an entertainment, aesthetic, or
informative function, a search engine transforms the image into a pointer directing
a user to a source of information. Just as a "parody has an obvious claim to
transformative value" because "it can provide social benefit, by shedding light on
an earlier work, and, in the process, creating a new one," Campbell, 510 U.S. at
579, 114 S.Ct. 1164, a search engine provides social benefit by incorporating an
original work into a new work, namely, an electronic reference tool. Indeed, a
search engine may be more transformative than a parody because a search engine
provides an entirely new use for the original work, while a parody typically has the
same entertainment purpose as the original work. See, e.g., id. at 594-96, 114 S.Ct.
1164 (holding that 2 Live Crew's parody of "Oh, Pretty Woman" using the words
"hairy woman" or "bald headed woman" was a transformative work, and thus
constituted a fair use); Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 796-
ChapterNumber:
336
98, 800-06 (9th Cir.2003) (concluding that photos parodying Barbie by depicting
"nude Barbie dolls juxtaposed with vintage kitchen appliances" was a fair use). In
other words, a search engine puts images "in a different context" so that they are
"transformed into a new creation." Wall Data, 447 F.3d at 778.
The fact that Google incorporates the entire Perfect 10 image into the search engine
results does not diminish the transformative nature of Google's use. As the district
court correctly noted, Perfect 10, 416 F.Supp.2d at 848-49, we determined in Kelly
that even making an exact copy of a work may be transformative so long as the
copy serves a different function than the original work, Kelly, 336 F.3d at 818-19.
For example, the First Circuit has held that the republication of photos taken for a
modeling portfolio in a newspaper was transformative because the photos served to
inform, as well as entertain. See Nunez v. Caribbean Int'l News Corp., 235 F.3d 18,
22-23 (1st Cir.2000). In contrast, duplicating a church's religious book for use by a
different church was not transformative. See Worldwide Church of God v. Phila.
Church of God, Inc., 227 F.3d 1110, 1117 (9th Cir.2000). Nor was a broadcaster's
simple retransmission of a radio broadcast over telephone lines transformative,
where the original radio shows were given no "new expression, meaning, or
message." Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir.1998).
Here, Google uses Perfect 10's images in a new context to serve a different purpose.
The district court nevertheless determined that Google's use of thumbnail images
was less transformative than Arriba's use of thumbnails in Kelly because Google's
use of thumbnails superseded Perfect 10's right to sell its reduced-size images for
use on cell phones. See Perfect 10, 416 F.Supp.2d at 849. The district court stated
that "mobile users can download and save the thumbnails displayed by Google
Image Search onto their phones," and concluded "to the extent that users may
choose to download free images to their [1166] phone rather than purchase [Perfect
10's] reduced-size images, Google's use supersedes [Perfect 10's]." Id.
Additionally, the district court determined that the commercial nature of Google's
use weighed against its transformative nature. Id. Although Kelly held that the
commercial use of the photographer's images by Arriba's search engine was less
exploitative than typical commercial use, and thus weighed only slightly against a
finding of fair use, Kelly, 336 F.3d at 818-20, the district court here distinguished
Kelly on the ground that some website owners in the AdSense program had
infringing Perfect 10 images on their websites, Perfect 10, 416 F.Supp.2d at 846-
47. The district court held that because Google's thumbnails "lead users to sites that
directly benefit Google's bottom line," the AdSense program increased the
commercial nature of Google's use of Perfect 10's images. Id. at 847.
In conducting our case-specific analysis of fair use in light of the purposes of

copyright, Campbell, 510 U.S. at 581, 114 S.Ct. 1164, we must weigh Google's
superseding and commercial uses of thumbnail images against Google's significant
transformative use, as well as the extent to which Google's search engine promotes
the purposes of copyright and serves the interests of the public. Although the
district court acknowledged the "truism that search engines such as Google Image
Search provide great value to the public," Perfect 10, 416 F.Supp.2d at 848-49, the
district court did not expressly consider whether this value outweighed the
significance of Google's superseding use or the commercial nature of Google's use.
Id. at 849. The Supreme Court, however, has directed us to be mindful of the extent
to which a use promotes the purposes of copyright and serves the interests of the
public. [ … ][ … ][ … ]
337
We note that the superseding use in this case is not significant at present: the
district court did not find that any downloads for mobile phone use had taken place.
See Perfect 10, 416 F.Supp.2d at 849. Moreover, while Google's use of thumbnails
to direct users to AdSense partners containing infringing content adds a commercial
dimension that did not exist in Kelly, the district court did not determine that this
commercial element was significant. See id. at 848-49. The district court stated that
Google's AdSense programs as a whole contributed "$630 million, or 46% of total
revenues" to Google's bottom line, but noted that this figure did not "break down
the much smaller amount attributable to websites that contain infringing content."
Id. at 847 & n. 12 (internal quotation omitted).
We conclude that the significantly transformative nature of Google's search engine,

particularly in light of its public benefit, outweighs Google's superseding and
commercial uses of the thumbnails in this case. In reaching this conclusion, we note
the importance of analyzing fair use flexibly in light of new circumstances. Sony,
464 U.S. at 431-32, 104 S.Ct. 774; id. at 448 n. 31, 104 S.Ct. 774 ("`[Section 107]
endorses the purpose and general scope of the judicial doctrine of fair use, but there
is no disposition to freeze the doctrine in the statute, especially during a period of
rapid technological change.'" (quoting H.R.Rep. No. 94-1476, p. 65-66 (1976),
U.S.Code Cong. & Admin. News 1976, p. 5680)). We are also mindful of the
Supreme Court's direction that "the more transformative the new work, the less will
be the significance of other factors, like commercialism, that may weigh against a
finding of fair use." Campbell, 510 U.S. at 579, 114 S.Ct. 1164.
[1167] Accordingly, we disagree with the district court's conclusion that because
Google's use of the thumbnails could supersede Perfect 10's cell phone download
use and because the use was more commercial than Arriba's, this fair use factor
weighed "slightly" in favor of Perfect 10. Perfect 10, 416 F.Supp.2d at 849.
Instead, we conclude that the transformative nature of Google's use is more
significant than any incidental superseding use or the minor commercial aspects of
Google's search engine and website. Therefore, this factor weighs heavily in favor
of Google.
The nature of the copyrighted work. With respect to the second factor, "the nature
of the copyrighted work," 17 U.S.C. § 107(2), our decision in Kelly is directly on
point. There we held that the photographer's images were "creative in nature" and
thus "closer to the core of intended copyright protection than are more fact-based
works." Kelly, 336 F.3d at 820 (internal quotation omitted). However, because the
photos appeared on the Internet before Arriba used thumbnail versions in its search
engine results, this factor weighed only slightly in favor of the photographer. Id.
Here, the district court found that Perfect 10's images were creative but also
previously published. Perfect 10, 416 F.Supp.2d at 850. The right of first
publication is "the author's right to control the first public appearance of his
expression." Harper & Row, 471 U.S. at 564, 105 S.Ct. 2218. Because this right
encompasses "the choices of when, where, and in what form first to publish a
work," id., an author exercises and exhausts this one-time right by publishing the
work in any medium. See, e.g., Batjac Prods. Inc. v. Good-Times Home Video
Corp., 160 F.3d 1223, 1235 (9th Cir.1998) (noting, in the context of the common
law right of first publication, that such a right "does not entail multiple first
publication rights in every available medium"). Once Perfect 10 has exploited this
commercially valuable right of first publication by putting its images on the
Internet for paid subscribers, Perfect 10 is no longer entitled to the enhanced
protection available for an unpublished work. Accordingly the district court did not
ChapterNumber:
338
err in holding that this factor weighed only slightly in favor of Perfect 10. [9] See
Perfect 10, 416 F.Supp.2d at 849-50.
The amount and substantiality of the portion used. "The third factor asks whether
the amount and substantiality of the portion used in relation to the copyrighted
work as a whole ... are reasonable in relation to the purpose of the copying."
[ … ]In Kelly, we held Arriba's use of the entire photographic image was reasonable
in light of the purpose of a search engine. Kelly, 336 F.3d at 821. Specifically, we
noted, "[i]t was necessary for Arriba to copy the entire image to allow users to
recognize the image and decide whether to pursue more information about the
image or the originating [website]. If Arriba only copied part of the image, it would
be more difficult to identify it, thereby reducing the usefulness of the visual search
engine." Id. Accordingly, we concluded that this factor did not weigh in favor of
either [1168] party. Id. Because the same analysis applies to Google's use of Perfect
10's image, the district court did not err in finding that this factor favored neither
party.
Effect of use on the market. The fourth factor is "the effect of the use upon the
potential market for or value of the copyrighted work." 17 U.S.C. § 107(4). In
Kelly, we concluded that Arriba's use of the thumbnail images did not harm the
market for the photographer's full-size images. See Kelly, 336 F.3d at 821-22. We
reasoned that because thumbnails were not a substitute for the full-sized images,
they did not harm the photographer's ability to sell or license his full-sized images.
Id. The district court here followed Kelly's reasoning, holding that Google's use of
thumbnails did not hurt Perfect 10's market for full-size images. See Perfect 10, 416
F.Supp.2d at 850-51. We agree.
Perfect 10 argues that the district court erred because the likelihood of market harm
may be presumed if the intended use of an image is for commercial gain. However,
this presumption does not arise when a work is transformative because "market
substitution is at least less certain, and market harm may not be so readily inferred."
Campbell, 510 U.S. at 591, 114 S.Ct. 1164. As previously discussed, Google's use
of thumbnails for search engine purposes is highly transformative, and so market
harm cannot be presumed.
Perfect 10 also has a market for reduced-size images, an issue not considered in
Kelly. The district court held that "Google's use of thumbnails likely does harm the
potential market for the downloading of [Perfect 10's] reduced-size images onto cell
phones." Perfect 10, 416 F.Supp.2d at 851 (emphasis omitted). The district court
reasoned that persons who can obtain Perfect 10 images free of charge from Google
are less likely to pay for a download, and the availability of Google's thumbnail
images would harm Perfect 10's market for cell phone downloads. Id. As we
discussed above, the district court did not make a finding that Google users have
downloaded thumbnail images for cell phone use. This potential harm to Perfect
10's market remains hypothetical. We conclude that this factor favors neither party.
Having undertaken a case-specific analysis of all four factors, we now weigh these
factors together "in light of the purposes of copyright." [ … ][ … ][ … ]In this case,
Google has put Perfect 10's thumbnail images (along with millions of other
thumbnail images) to a use fundamentally different than the use intended by Perfect
10. In doing so, Google has provided a significant benefit to the public. Weighing
this significant transformative use against the unproven use of Google's thumbnails
for cell phone downloads, and considering the other fair use factors, all in light of
the purpose of copyright, we conclude that Google's use of Perfect 10's thumbnails
339
is a fair use. Because the district court here "found facts sufficient to evaluate each
of the statutory factors ... [we] need not remand for further factfinding." Harper &
Row, 471 U.S. at 560, 105 S.Ct. 2218 (internal quotation omitted). We conclude
that Google is likely to succeed in proving its fair use defense and, accordingly, we
vacate the preliminary injunction regarding Google's use of thumbnail images.
IV
Secondary Liability for Copyright

Infringement
We now turn to the district court's ruling that Google is unlikely to be secondarily
[1169] liable for its in-line linking to infringing full-size images under the doctrines
of contributory and vicarious infringement. [10] The district court ruled that Perfect
10 did not have a likelihood of proving success on the merits of either its
contributory infringement or vicarious infringement claims with respect to the full-
size images. See Perfect 10, 416 F.Supp.2d at 856, 858. In reviewing the district
court's conclusions, we are guided by the Supreme Court's recent interpretation of
secondary liability, namely: "[o]ne infringes contributorily by intentionally
inducing or encouraging direct infringement, and infringes vicariously by profiting
from direct infringement while declining to exercise a right to stop or limit it."
Grokster, 545 U.S. at 930, 125 S.Ct. 2764 (internal citations omitted).
Direct Infringement by Third Parties. As a threshold matter, before we examine

Perfect 10's claims that Google is secondarily liable, Perfect 10 must establish that
there has been direct infringement by third parties. See Napster, 239 F.3d at 1013 n.
2 ("Secondary liability for copyright infringement does not exist in the absence of
direct infringement by a third party.").
Perfect 10 alleges that third parties directly infringed its images in three ways.
First, Perfect 10 claims that third-party websites directly infringed its copyright by
reproducing, displaying, and distributing unauthorized copies of Perfect 10's
images. Google does not dispute this claim on appeal.
Second, Perfect 10 claims that individual users of Google's search engine directly
infringed Perfect 10's copyrights by storing full-size infringing images on their
computers. We agree with the district court's conclusion that Perfect 10 failed to
provide sufficient evidence to support this claim. See Perfect 10, 416 F.Supp.2d at
852. There is no evidence in the record directly establishing that users of Google's
search engine have stored infringing images on their computers, and the district
court did not err in declining to infer the existence of such evidence.
Finally, Perfect 10 contends that users who link to infringing websites

automatically make "cache" copies of full-size images and thereby directly infringe
Perfect 10's reproduction right. The district court rejected this argument, holding
that any such reproduction was likely a "fair use." Id. at 852 n. 17. The district
court reasoned that "[l]ocal caching by the browsers of individual users is
noncommercial, transformative, and no more than necessary to achieve the
objectives of decreasing network latency and minimizing unnecessary bandwidth
usage (essential to the [I]nternet). It has a minimal impact on the potential market
ChapterNumber:
340
for the original work...." Id. We agree; even assuming such automatic copying
could constitute direct infringement, it is a fair use in this context. The copying
function performed automatically by a user's computer to assist in accessing the
Internet is a transformative use. Moreover, as noted by the district court, a cache
copies no more than is necessary to assist the user in Internet use. It is designed to
enhance an individual's computer use, not to supersede the copyright holders'
exploitation of their works. Such automatic background copying has no more than a
minimal effect on Perfect 10's rights, but a considerable public benefit. Because the
four fair use factors weigh in favor of concluding that [1170] cache copying
constitutes a fair use, Google has established a likelihood of success on this issue.
Accordingly, Perfect 10 has not carried its burden of showing that users' cache
copies of Perfect 10's full-size images constitute direct infringement.
Therefore, we must assess Perfect 10's arguments that Google is secondarily liable
in light of the direct infringement that is undisputed by the parties: third-party
websites' reproducing, displaying, and distributing unauthorized copies of Perfect
10's images on the Internet. Id. at 852.
A. Contributory Infringement
In order for Perfect 10 to show it will likely succeed in its contributory liability
claim against Google, it must establish that Google's activities meet the definition
of contributory liability recently enunciated in Grokster. Within the general rule
that "[o]ne infringes contributorily by intentionally inducing or encouraging direct
infringement," Grokster, 545 U.S. at 930, 125 S.Ct. 2764, the Court has defined two
categories of contributory liability: "Liability under our jurisprudence may be
predicated on actively encouraging (or inducing) infringement through specific acts
(as the Court's opinion develops) or on distributing a product distributees use to
infringe copyrights, if the product is not capable of `substantial' or `commercially
significant' noninfringing uses." [ … ](Ginsburg, J., concurring)[ … ][ … ].
Looking at the second category of liability identified by the Supreme Court

(distributing products), Google relies on Sony, 464 U.S. at 442, 104 S.Ct. 774, to
argue that it cannot be held liable for contributory infringement because liability
does not arise from the mere sale of a product (even with knowledge that consumers
would use the product to infringe) if the product is capable of substantial non-
infringing use. Google argues that its search engine service is such a product.
Assuming the principle enunciated in Sony is applicable to the operation of
Google's search engine, then Google cannot be held liable for contributory
infringement solely because the design of its search engine facilitates such
infringement. Grokster, 545 U.S. at 931-32, 125 S.Ct. 2764 (discussing Sony, 464
U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574). Nor can Google be held liable solely
because it did not develop technology that would enable its search engine to
automatically avoid infringing images. See id. at 939 n. 12, 125 S.Ct. 2764.
However, Perfect 10 has not based its claim of infringement on the design of
Google's search engine and the Sony rule does not immunize Google from other
sources of contributory liability. See id. at 933-34, 125 S.Ct. 2764.
We must next consider whether Google could be held liable under the first category
of contributory liability identified by the Supreme Court, that is, the liability that
may be imposed for intentionally encouraging infringement through specific acts. [11]
Grokster tells us that contribution to infringement must be intentional for liability
341
to arise. Grokster, 545 U.S. at 930, 125 S.Ct. 2764. However, Grokster also directs
us to analyze contributory liability in light of "rules of fault-based liability derived
from the common law," id. at 934-35, 125 S.Ct. 2764, and [1171] common law
principles establish that intent may be imputed. "Tort law ordinarily imputes to an
actor the intention to cause the natural and probable consequences of his conduct."
DeVoto v. Pac. Fid. Life Ins. Co., 618 F.2d 1340, 1347 (9th Cir. 1980);
RESTATEMENT (SECOND) OF TORTS § 8A cmt. b (1965) ("If the actor knows
that the consequences are certain, or substantially certain, to result from his act, and
still goes ahead, he is treated by the law as if he had in fact desired to produce the
result."). When the Supreme Court imported patent law's "staple article of
commerce doctrine" into the copyright context, it also adopted these principles of
imputed intent. Grokster, 545 U.S. at 932, 125 S.Ct. 2764 ("The [staple article of
commerce] doctrine was devised to identify instances in which it may be presumed
from distribution of an article in commerce that the distributor intended the article
to be used to infringe another's patent, and so may justly be held liable for that
infringement."). Therefore, under Grokster, an actor may be contributorily liable
for intentionally encouraging direct infringement if the actor knowingly takes steps
that are substantially certain to result in such direct infringement.
Our tests for contributory liability are consistent with the rule set forth in Grokster.
We have adopted the general rule set forth in Gershwin Publishing Corp. v.
Columbia Artists Management, Inc., namely: "one who, with knowledge of the
infringing activity, induces, causes or materially contributes to the infringing
conduct of another, may be held liable as a `contributory' infringer," 443 F.2d 1159,
1162 (2d Cir.1971). See Ellison, 357 F.3d at 1076; Napster, 239 F.3d at 1019;
Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264 (9th Cir.1996).
We have further refined this test in the context of cyberspace [12] to determine when
contributory liability can be imposed on a provider of Internet access or services.
See Napster, 239 F.3d at 1019-20. In Napster, we considered claims that the
operator of an electronic file sharing system was contributorily liable for assisting
individual users to swap copyrighted music files stored on their home computers
with other users of the system. Napster, 239 F.3d at 1011-13, 1019-22. We stated
that "if a computer system operator learns of specific infringing material available
on his system and fails to purge such material from the system, the operator knows
of and contributes to direct infringement." Id. at 1021. Because Napster knew of the
availability of infringing music files, assisted users in accessing such files, and
failed to block access to such files, we concluded that Napster materially
contributed to infringement. Id. at 1022.
The Napster test for contributory liability was modeled on the influential district
court decision in Religious Technology Center v. Netcom On-Line Communication
Services, Inc. (Netcom), 907 F.Supp. 1361, 1365-66 (N.D.Cal.1995). See Napster,
239 F.3d at 1021. In Netcom, a disgruntled former Scientology minister posted
allegedly infringing copies of Scientological works on an electronic bulletin board
service. Netcom, 907 F.Supp. at 1365-66. The messages were stored on the bulletin
board operator's computer, then automatically copied onto Netcom's computer, and
from there copied onto other computers comprising "a worldwide community" of
electronic bulletin board systems. Id. at 1366-67 & n. 4 (internal quotation
omitted). Netcom held that if plaintiffs [1172] could prove that Netcom knew or
should have known that the minister infringed plaintiffs' copyrights, "Netcom
[would] be liable for contributory infringement since its failure to simply cancel
[the former minister's] infringing message and thereby stop an infringing copy from
ChapterNumber:
342
being distributed worldwide constitute[d] substantial participation in [the former

minister's] public distribution of the message." Id. at 1374.
Although neither Napster nor Netcom expressly required a finding of intent, those
cases are consistent with Grokster because both decisions ruled that a service
provider's knowing failure to prevent infringing actions could be the basis for
imposing contributory liability. Under such circumstances, intent may be imputed.
In addition, Napster and Netcom are consistent with the longstanding requirement
that an actor's contribution to infringement must be material to warrant the
imposition of contributory liability. Gershwin, 443 F.2d at 1162. Both Napster and
Netcom acknowledge that services or products that facilitate access to websites
throughout the world can significantly magnify the effects of otherwise immaterial
infringing activities. See Napster, 239 F.3d at 1022; Netcom, 907 F.Supp. at 1375.
The Supreme Court has acknowledged that "[t]he argument for imposing indirect
liability" is particularly "powerful" when individuals using the defendant's software
could make a huge number of infringing downloads every day. Grokster, 545 U.S.
at 929, 125 S.Ct. 2764. Moreover, copyright holders cannot protect their rights in a
meaningful way unless they can hold providers of such services or products
accountable for their actions pursuant to a test such as that enunciated in Napster.
See id. at 929-30, 125 S.Ct. 2764 ("When a widely shared service or product is used
to commit infringement, it may be impossible to enforce rights in the protected
work effectively against all direct infringers, the only practical alternative being to
go against the distributor of the copying device for secondary liability on a theory
of contributory or vicarious infringement."). Accordingly, we hold that a computer
system operator can be held contributorily liable if it "has actual knowledge that
specific infringing material is available using its system," Napster, 239 F.3d at
1022, and can "take simple measures to prevent further damage" to copyrighted
works, Netcom, 907 F.Supp. at 1375, yet continues to provide access to infringing
works.
Here, the district court held that even assuming Google had actual knowledge of
infringing material available on its system, Google did not materially contribute to
infringing conduct because it did not undertake any substantial promotional or
advertising efforts to encourage visits to infringing websites, nor provide a
significant revenue stream to the infringing websites. Perfect 10, 416 F.Supp.2d at
854-56. This analysis is erroneous. There is no dispute that Google substantially
assists websites to distribute their infringing copies to a worldwide market and
assists a worldwide audience of users to access infringing materials. We cannot
discount the effect of such a service on copyright owners, even though Google's
assistance is available to all websites, not just infringing ones. Applying our test,
Google could be held contributorily liable if it had knowledge that infringing
Perfect 10 images were available using its search engine, could take simple
measures to prevent further damage to Perfect 10's copyrighted works, and failed to
take such steps.
The district court did not resolve the factual disputes over the adequacy of Perfect
10's notices to Google and Google's responses to these notices. Moreover, there are
factual disputes over whether there are reasonable and feasible means for Google to
refrain from providing access [1173] to infringing images. Therefore, we must
remand this claim to the district court for further consideration whether Perfect 10
would likely succeed in establishing that Google was contributorily liable for in-
line linking to full-size infringing images under the test enunciated today. [13]
343
B. Vicarious Infringement
Perfect 10 also challenges the district court's conclusion that it is not likely to
prevail on a theory of vicarious liability against Google. Perfect 10, 416 F.Supp.2d
at 856-58. Grokster states that one "infringes vicariously by profiting from direct
infringement while declining to exercise a right to stop or limit it." Grokster, 545
U.S. at 930, 125 S.Ct. 2764. As this formulation indicates, to succeed in imposing
vicarious liability, a plaintiff must establish that the defendant exercises the
requisite control over the direct infringer and that the defendant derives a direct
financial benefit from the direct infringement. See id. Grokster further explains the
"control" element of the vicarious liability test as the defendant's "right and ability
to supervise the direct infringer." Id. at 930 n. 9, 125 S.Ct. 2764. Thus, under
Grokster, a defendant exercises control over a direct infringer when he has both a
legal right to stop or limit the directly infringing conduct, as well as the practical
ability to do so.
We evaluate Perfect 10's arguments that Google is vicariously liable in light of the
direct infringement that is undisputed by the parties, namely, the third-party
websites' reproduction, display, and distribution of unauthorized copies of Perfect
10's images on the Internet. Perfect 10, 416 F.Supp.2d at 852; see supra Section
IV.A. In order to prevail at this preliminary injunction stage, Perfect 10 must
demonstrate a likelihood of success in establishing that Google has the right and
ability to stop or limit the infringing activities of third party websites. In addition,
Perfect 10 must establish a likelihood of proving that Google derives a direct
financial benefit from such activities. Perfect 10 has not met this burden.
With respect to the "control" element set forth in Grokster, Perfect 10 has not
demonstrated a likelihood of showing that Google has the legal right to stop or limit
the direct infringement of third-party websites. See Grokster, 545 U.S. at 930, 125
S.Ct. 2764. Unlike Fonovisa, where by virtue of a "broad contract" with its vendors
the defendant swap meet operators had the right to stop the vendors from selling
counterfeit recordings on its premises, Fonovisa, 76 F.3d at 263, Perfect 10 has not
shown that Google has contracts with third-party websites that empower Google to
stop or limit them from reproducing, displaying, and distributing infringing copies
of Perfect 10's images on the Internet. Perfect 10 does point to Google's AdSense
agreement, which states that Google reserves "the right to monitor and terminate
partnerships with entities that violate others' copyright[s]." Perfect 10, 416
F.Supp.2d at 858. However, Google's right to terminate an AdSense partnership
does not give Google the right to [1174] stop direct infringement by third-party
websites. An infringing third-party website can continue to reproduce, display, and
distribute its infringing copies of Perfect 10 images after its participation in the
AdSense program has ended.
Nor is Google similarly situated to Napster. Napster users infringed the plaintiffs'
reproduction and distribution rights through their use of Napster's proprietary
music-file sharing system. Napster, 239 F.3d at 1011-14. There, the infringing
conduct was the use of Napster's "service to download and upload copyrighted
music." Id. at 1014 (internal quotation omitted). Because Napster had a closed
system requiring user registration, and could terminate its users' accounts and block
their access to the Napster system, Napster had the right and ability to prevent its
users from engaging in the infringing activity of uploading file names and
downloading Napster users' music files through the Napster system. [14] Id. at 1023-
24. By contrast, Google cannot stop any of the third-party websites from
ChapterNumber:
344
reproducing, displaying, and distributing unauthorized copies of Perfect 10's images

because that infringing conduct takes place on the third-party websites. Google
cannot terminate those third-party websites or block their ability to "host and serve
infringing full-size images" on the Internet. Perfect 10, 416 F.Supp.2d at 831.
Moreover, the district court found that Google lacks the practical ability to police
the third-party websites' infringing conduct. Id. at 857-58. Specifically, the court
found that Google's supervisory power is limited because "Google's software lacks
the ability to analyze every image on the [I]nternet, compare each image to all the
other copyrighted images that exist in the world ... and determine whether a certain
image on the web infringes someone's copyright." Id. at 858. The district court also
concluded that Perfect 10's suggestions regarding measures Google could
implement to prevent its web crawler from indexing infringing websites and to
block access to infringing images were not workable. Id. at 858 n. 25. Rather, the
suggestions suffered from both "imprecision and overbreadth." Id. We hold that
these findings are not clearly erroneous. Without image-recognition technology,
Google lacks the practical ability to police the infringing activities of third-party
websites. This distinguishes Google from the defendants held liable in Napster and
Fonovisa. See Napster, 239 F.3d at 1023-24 (Napster had the ability to identify and
police infringing conduct by searching its index for song titles); Fonovisa, 76 F.3d
at 262 (swap meet operator had the ability to identify and police infringing activity
by patrolling its premises).
Perfect 10 argues that Google could manage its own operations to avoid [1175]
indexing websites with infringing content and linking to third-party infringing sites.
This is a claim of contributory liability, not vicarious liability. Although "the lines
between direct infringement, contributory infringement, and vicarious liability are
not clearly drawn," Sony, 464 U.S. at 435 n. 17, 104 S.Ct. 774 (internal quotation
omitted), in general, contributory liability is based on the defendant's failure to stop
its own actions which facilitate third-party infringement, while vicarious liability is
based on the defendant's failure to cause a third party to stop its directly infringing
activities. See, e.g., Ellison, 357 F.3d at 1077-78; Fonovisa, 76 F.3d at 261-64.
Google's failure to change its operations to avoid assisting websites to distribute
their infringing content may constitute contributory liability, see supra Section
IV.A. However, this failure is not the same as declining to exercise a right and
ability to make third-party websites stop their direct infringement. We reject Perfect
10's efforts to blur this distinction.
Because we conclude that Perfect 10 has not shown a likelihood of establishing

Google's right and ability to stop or limit the directly infringing conduct of third-
party websites, we agree with the district court's conclusion that Perfect 10 "has not
established a likelihood of proving the [control] prong necessary for vicarious
liability." [ … ]
C. Digital Millennium Copyright Act

Google claims that it qualifies for the limitations on liability set forth in title II of
the DMCA, 17 U.S.C. § 512. In particular, section 512(d) limits the liability of a
service provider "for infringement of copyright by reason of the provider referring
or linking users to an online location containing infringing material or infringing
activity, by using information location tools, including a directory, index, reference,
pointer, or hypertext link" if the service provider meets certain criteria. We have
345
held that the limitations on liability contained in 17 U.S.C. § 512 protect secondary
infringers as well as direct infringers. Napster, 239 F.3d at 1025.
The parties dispute whether Google meets the specified criteria. Perfect 10 claims
that it sent qualifying notices to Google and Google did not act expeditiously to
remove the infringing material. Google claims that Perfect 10's notices did not
comply with the notice provisions of section 512 and were not adequate to inform
Google of the location of the infringing images on the Internet or identify the
underlying copyrighted work. Google also claims that it responded to all notices it
received by investigating the webpages identified by Perfect 10 and suppressing
links to any webpages that Google confirmed were infringing.
Because the district court determined that Perfect 10 was unlikely to succeed on its
contributory and vicarious liability claims, it did not reach Google's arguments
under section 512. In revisiting the question of Perfect 10's likelihood of success on
its contributory infringement claims, the district court should also consider whether
Google would likely succeed in showing that it was entitled to the limitations on
injunctive relief provided by title II of the DMCA.
Amazon.com
Perfect 10 claims that Amazon.com displays and distributes Perfect 10's
copyrighted images and is also secondarily [1176] liable for the infringements of
third-party websites and Amazon.com users. The district court concluded that
Perfect 10 was unlikely to succeed in proving that Amazon.com was a direct
infringer, because it merely in-line linked to the thumbnails on Google's servers and
to the full-size images on third-party websites. [16] [ … ]In addition, the district court
concluded that Perfect 10's secondary infringement claims against Amazon.com
were likely to fail because Amazon.com had no program analogous to AdSense, and
thus did not provide any revenues to infringing sites. Id. Finally, the district court
determined that Amazon.com's right and ability to control the infringing conduct of
third-party websites was substantially less than Google's. Id. Therefore, the district
court denied Perfect 10's motion for a preliminary injunction against Amazon.com.
Id.
We agree that Perfect 10 has not shown a likelihood that it would prevail on the
merits of its claim that Amazon.com directly infringed its images. Amazon.com
communicates to its users only the HTML instructions that direct the users'
browsers to Google's computers (for thumbnail images) or to a third party's
computer (for full-size infringing images). Therefore, Amazon.com does not
display or distribute a copy of the thumbnails or full-size images to its users.
We also agree with the district court's conclusion that Amazon.com does not have
"the right and ability to supervise the infringing activity" of Google or third parties.
The district court did not clearly err in concluding that Amazon.com lacked a direct
financial interest in such activities. Therefore, Perfect 10's claim that Amazon.com
is vicariously liable for third-party infringement is unlikely to succeed.
ChapterNumber:
346
However, the district court did not consider whether Amazon.com had "actual
knowledge that specific infringing material is available using its system," Napster,
239 F.3d at 1022 (emphasis in original), and could have "take[n] simple measures
to prevent further damage" to copyrighted works, Netcom, 907 F.Supp. at 1375, yet
continued to provide access to infringing works. Perfect 10 has presented evidence
that it notified Amazon.com that it was facilitating its users' access to infringing
material. It is disputed whether the notices gave Amazon.com actual knowledge of
specific infringing activities available using its system, and whether Amazon.com
could have taken reasonable and feasible steps to refrain from providing access to
such images, but failed to do so. Nor did the district court consider whether
Amazon.com is entitled to limit its liability under title II of the DMCA. On remand,
the district court should consider Amazon.com's potential contributory liability, as
well as possible limitations on the scope of injunctive relief, in light of our rulings
today.
VI
We conclude that Google's fair use defense is likely to succeed at trial, and
therefore we reverse the district court's determination that Google's thumbnail
versions of Perfect 10's images likely constituted a direct infringement. The district
court also erred in its secondary liability [1177] analysis because it failed to
consider whether Google and Amazon.com knew of infringing activities yet failed
to take reasonable and feasible steps to refrain from providing access to infringing
images. Therefore we must also reverse the district court's holding that Perfect 10
was unlikely to succeed on the merits of its secondary liability claims. Due to this
error, the district court did not consider whether Google and Amazon.com are
entitled to the limitations on liability set forth in title II of the DMCA. The question
whether Google and Amazon.com are secondarily liable, and whether they can limit
that liability pursuant to title II of the DMCA, raise fact-intensive inquiries,
potentially requiring further fact finding, and thus can best be resolved by the
district court on remand. We therefore remand this matter to the district court for
further proceedings consistent with this decision.
Because the district court will need to reconsider the appropriate scope of
injunctive relief after addressing these secondary liability issues, we do not address
the parties' arguments regarding the scope of the injunction issued by the district
court. For the same reason, we do not address the parties' dispute over whether the
district court abused its discretion in determining that Perfect 10 satisfied the
irreparable harm element of a preliminary injunction.
Therefore, we reverse the district court's ruling and vacate the preliminary
injunction regarding Google's use of thumbnail versions of Perfect 10's images. [17]
We reverse the district court's rejection of the claims that Google and Amazon.com
are secondarily liable for infringement of Perfect 10's full-size images. We
otherwise affirm the rulings of the district court. We remand this matter for further
proceedings consistent with this opinion. Each party shall bear its own costs on
appeal. See FED. R. APP. P. 39(a)(4).
AFFIRMED IN PART; REVERSED IN PART; REMANDED.
[1] Google argues that we lack jurisdiction over the preliminary injunction to the
extent it enforces unregistered copyrights. Registration is generally a jurisdictional
347
prerequisite to a suit for copyright infringement. See 17 U.S.C. § 411. But section
411 does not limit the remedies a court can grant. Rather, the Copyright Act gives
courts broad authority to issue injunctive relief. See 17 U.S.C. § 502(a). Once a
court has jurisdiction over an action for copyright infringement under section 411,
the court may grant injunctive relief to restrain infringement of any copyright,
whether registered or unregistered. See, e.g., Olan Mills, Inc. v. Linn Photo Co., 23
F.3d 1345, 1349 (8th Cir.1994); Pac. & S. Co., Inc. v. Duncan, 744 F.2d 1490,
1499 n. 17 (11th Cir.1984). Because at least some of the Perfect 10 images at issue
were registered, the district court did not err in determining that it could issue an
order that covers unregistered works. Therefore, we have jurisdiction over the
district court's decision and order.
[2] The website publisher may not actually store the photographic images used on
its webpages in its own computer, but may provide HTML instructions directing the
user's browser to some further computer that stores the image. Because this
distinction does not affect our analysis, for convenience, we will assume that the
website publisher stores all images used on its webpages in the website publisher's
own computer.
[3] Generally, a "cache" is "a computer memory with very short access time used
for storage of frequently or recently used instructions or data." United States v.
Ziegler, 474 F.3d 1184, 1186 n. 3 (9th Cir.2007) (quoting MERRIAM-WEBSTER'S
COLLEGIATE DICTIONARY 171 (11th ed.2003)). There are two types of caches
at issue in this case. A user's personal computer has an internal cache that saves
copies of webpages and images that the user has recently viewed so that the user
can more rapidly revisit these webpages and images. Google's computers also have
a cache which serves a variety of purposes. Among other things, Google's cache
saves copies of a large number of webpages so that Google's search engine can
efficiently organize and index these webpages.
[4] Perfect 10 argues that we are bound by the language and structure of title II of
the DMCA in determining Google's liability for copyright infringement. We have
noted that the DMCA does not change copyright law; rather, "Congress provided
that [the DMCA's] limitations of liability apply if the provider is found to be liable
under existing principles of law." Ellison, 357 F.3d at 1077 (emphasis and internal
quotation omitted). As a result, "[c]laims against service providers for direct,
contributory, or vicarious copyright infringement, therefore, are generally evaluated
just as they would be in the non-online world."[ … ][ … ][ … ]Therefore, we must
consider Google's potential liability under the Copyright Act without reference to
title II of the DMCA.
[5] 17 U.S.C. § 106 states, in pertinent part:
Subject to sections 107 through 122, the owner of copyright under this
title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
....
(3) to distribute copies or phonorecords of the copyrighted work to the

lending;
ChapterNumber:
348
....
(5) in the case of literary, musical, dramatic, and choreographic works,

display the copyrighted work publicly....
[6] Because Google initiates and controls the storage and communication of these
thumbnail images, we do not address whether an entity that merely passively owns
and manages an Internet bulletin board or similar system violates a copyright
owner's display and distribution rights when the users of the bulletin board or
similar system post infringing works. Cf. CoStar Group, Inc. v. LoopNet, Inc., 373
F.3d 544 (4th Cir.2004).
[7] Perfect 10 also argues that Google violates Perfect 10's right to display full-size
images because Google's in-line linking meets the Copyright Act's definition of "to
perform or display a work `publicly.'" 17 U.S.C. § 101. This phrase means "to
transmit or otherwise communicate a performance or display of the work 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 at different times." Id. Perfect 10 is
mistaken. Google's activities do not meet this definition because Google transmits
or communicates only an address which directs a user's browser to the location
where a copy of the full-size image is displayed. Google does not communicate a
display of the work itself.
[8] We reject at the outset Perfect 10's argument that providing access to infringing
websites cannot be deemed transformative and is inherently not fair use. Perfect 10
relies on Video Pipeline, Inc. v. Buena Vista Home Entm't, Inc., 342 F.3d 191 (3d
Cir.2003), and Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832, 843
(Fed.Cir.1992). But these cases, in essence, simply apply the general rule that a
party claiming fair use must act in a manner generally compatible with principles of
good faith and fair dealing. See Harper & Row, 471 U.S. at 562-63, 105 S.Ct. 2218.
For this reason, a company whose business is based on providing scenes from
copyrighted movies without authorization could not claim that it provided the same
public benefit as the search engine in Kelly. See Video Pipeline, 342 F.3d at 198-
200. Similarly, a company whose overriding desire to replicate a competitor's
computer game led it to obtain a copy of the competitor's source code from the
Copyright Office under false pretenses could not claim fair use with respect to its
purloined copy. Atari Games, 975 F.2d at 843.
Unlike the alleged infringers in Video Pipeline and Atari Games, who intentionally
misappropriated the copyright owners' works for the purpose of commercial
exploitation, Google is operating a comprehensive search engine that only
incidentally indexes infringing websites. This incidental impact does not amount to
an abuse of the good faith and fair dealing underpinnings of the fair use doctrine.
Accordingly, we conclude that Google's inclusion of thumbnail images derived
from infringing websites in its Internet-wide search engine activities does not
preclude Google from raising a fair use defense.
[9] Google contends that Perfect 10's photographic images are less creative and less
deserving of protection than the images of the American West in Kelly because
Perfect 10 boasts of its un-retouched photos showing the natural beauty of its
models. Having reviewed the record, we conclude that the district court's finding
349
that Perfect 10's photographs "consistently reflect professional, skillful, and

sometimes tasteful artistry" is not clearly erroneous. Perfect 10, 416 F.Supp.2d at
849 n. 15. We agree with the district court that there is no basis for concluding that
photos of the American West are more deserving of protection than photos of nude
models. See id.
[10] Because the district court concluded that Perfect 10 was likely to prevail on its
direct infringement claim with respect to Google's use of thumbnails, but not with
respect to its in-line linking to full-size images, the district court considered
Google's potential secondary liability only on the second issue.
[11] Google's activities do not meet the "inducement" test explained in Grokster
because Google has not promoted the use of its search engine specifically to
infringe copyrights. [ … ]However, the Supreme Court in Grokster did not suggest
that a court must find inducement in order to impose contributory liability under
common law principles.
[12] "Cyberspace is a popular term for the world of electronic communications over
computer networks." Religious Tech. Ctr. v. Netcom On-Line Commc'n Servs., Inc.,
907 F.Supp. 1361, 1365 n. 1 (N.D.Cal.1995).
[13] Perfect 10 claims that Google materially contributed to infringement by linking

to websites containing unauthorized passwords, which enabled Google users to
access Perfect 10's website and make infringing copies of images. However, Perfect
10 points to no evidence that users logging onto the Perfect 10 site with
unauthorized passwords infringed Perfect 10's exclusive rights under section 106.
In the absence of evidence that Google's actions led to any direct infringement, this
argument does not assist Perfect 10 in establishing that it would prevail on the
merits of its contributory liability claim. [ … ][ … ]
[14] Napster's system included "Napster's MusicShare software, available free of

charge from Napster's Internet site, and Napster's network servers and server-side
software." Napster, 239 F.3d at 1011. By downloading Napster's MusicShare
software to the user's personal computer, and registering with the Napster system, a
user could both upload and download music files. Id. at 1011-13. If the Napster
user uploaded a list of music files stored on the user's personal computer to the
Napster system, such music files would be automatically available to other Napster
users whenever the user was logged on to the Napster system. Id. at 1012. In
addition, the Napster user could download music files directly from other users'
personal computers. Id. We explained the infringing conduct as "Napster users who
upload file names to the [Napster] search index for others to copy violate plaintiffs'
distribution rights. Napster users who download files [through the Napster system]
containing copyrighted music violate plaintiffs' reproduction rights." [ … ]
[15] Having so concluded, we need not reach Perfect 10's argument that Google
received a direct financial benefit.
[16] Amazon.com states that it ended its relationship with Google on April 30,
2006. Perfect 10's action for preliminary injunction against Amazon.com is not
moot, however, because Amazon.com has not established "that the allegedly
wrongful behavior cannot reasonably be expected to recur." [ … ][ … ]
[17] Because we vacate the injunction, Google's motion for stay of the injunction is
moot.

ChapterNumber:
350
8.2.3
Music Broadcast v. Indian Performing Right

Society

http://bombayhighcourt.nic.in/generatenewauth.php?
auth=cGF0aD0uL2RhdGEvanVkZ2VtZW50cy8yMDExLyZmbmFtZT1
PU1MyMjcwMDYucGRmJnNtZmxhZz1O

8.2.4
Video Master v. Nishi Productions


351
9
Week 9

ChapterNumber:
352

9.1

Fair Use (Part 1)

9.1.1
17 U.S.C. 107

§ 107. Limitations on exclusive rights: Fair

use
copyrighted work, including such use by reproduction in copies or phonorecords or
by any other means specified by that section, for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for classroom use),
scholarship, or research, is not an infringement of copyright. In determining
whether the use made of a work in any particular case is a fair use the factors to be
considered shall include—
(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.
The fact that a work is unpublished shall not itself bar a finding of fair use if such
finding is made upon consideration of all the above factors.
VI, § 607, Dec. 1, 1990, 104 Stat. 5132; Pub. L. 102–492, Oct. 24, 1992, 106 Stat.
3145.)

353
9.1.2
Campbell v. Acuff-Rose Music, Inc.


510 U.S. 569, 127 L. Ed. 2d 500, 114 S. Ct. 1164,
1994 U.S. LEXIS 2052, SCDB 1993-029
No. 92-1292
1994-03-07
510 U.S. 569
CAMPBELL, AKA SKYYWALKER, ET AL.

v.
ACUFF-ROSE MUSIC, INC.
No. 92-1292.
Argued November 9, 1993.
Decided March 7, 1994.
[…]
SOUTER, J., delivered the opinion for a unanimous Court. KENNEDY, J., filed a
concurring opinion, post, p. 596.
[…]
JUSTICE SOUTER delivered the opinion of the Court.
We are called upon to decide whether 2 Live Crew's commercial parody of Roy
Orbison's song, "Oh, Pretty Woman," [510 U.S. 572] may be a fair use within the
meaning of the Copyright Act of 1976, 17 U. S. C. § 107 (1988 ed. and Supp. IV).
Although the District Court granted summary judgment for 2 Live Crew, the Court
of Appeals reversed, holding the defense of fair use barred by the song's
commercial character and excessive borrowing. Because we hold that a parody's
commercial character is only one element to be weighed in a fair use enquiry, and
that insufficient consideration was given to the nature of parody in weighing the
degree of copying, we reverse and remand.
I
ChapterNumber:
354
In 1964, Roy Orbison and William Dees wrote a rock ballad called "Oh, Pretty
Woman" and assigned their rights in it to respondent Acuff-Rose Music, Inc. See
Appendix A, infra, at 594. Acuff-Rose registered the song for copyright protection.
Petitioners Luther R. Campbell, Christopher Wongwon, Mark Ross, and David

Hobbs are collectively known as 2 Live Crew, a popular rap music group. [1] In
1989, Campbell wrote a song entitled "Pretty Woman," which he later described in
an affidavit as intended, "through comical lyrics, to satirize the original work. . . ."
App. to Pet. for Cert. 80a. On July 5, 1989, 2 Live Crew's manager informed Acuff-
Rose that 2 Live Crew had written a parody of "Oh, Pretty Woman," that they
would afford all credit for ownership and authorship of the original song to Acuff-
Rose, Dees, and Orbison, and that they were willing to pay a fee for the use they
wished to make of it. Enclosed with the letter were a copy of the lyrics and a
recording of 2 Live Crew's song. See Appendix B, infra, at 595. Acuff-Rose's agent
refused permission, stating that "I am aware of the success [510 U.S. 573] enjoyed
by `The 2 Live Crews', but I must inform you that we cannot permit the use of a
parody of Òh, Pretty Woman.'" App. to Pet. for Cert. 85a. Nonetheless, in June or
July 1989, [2] 2 Live Crew released records, cassette tapes, and compact discs of
"Pretty Woman" in a collection of songs entitled "As Clean As They Wanna Be."
The albums and compact discs identify the authors of "Pretty Woman" as Orbison
and Dees and its publisher as Acuff-Rose.
Almost a year later, after nearly a quarter of a million copies of the recording had
been sold, Acuff-Rose sued 2 Live Crew and its record company, Luke Skyywalker
Records, for copyright infringement. The District Court granted summary judgment
for 2 Live Crew[ … ]
The Court of Appeals for the Sixth Circuit reversed and remanded. [ … ]
We granted certiorari, 507 U. S. 1003 (1993), to determine whether 2 Live Crew's

commercial parody could be a fair use.
II
It is uncontested here that 2 Live Crew's song would be an infringement of Acuff-
Rose's rights in "Oh, Pretty Woman," under the Copyright Act of 1976, 17 U. S. C.
§ 106 (1988 ed. and Supp. IV), but for a finding of fair use through parody. [4] [510
U.S. 575] From the infancy of copyright protection, some opportunity for fair use
of copyrighted materials has been thought necessary to fulfill copyright's very
purpose, "[t]o promote the Progress of Science and useful Arts. . . ." U. S. Const.,
Art. I, § 8, cl. 8. [5] For as Justice Story explained, "[i]n truth, in literature, in science
and in art, there are, and can be, few, if any, things, which in an abstract sense, are
strictly new and original throughout. Every book in literature, science and art,
borrows, and must necessarily borrow, and use much which was well known and
used before." Emerson v. Davies, 8 F. Cas. 615, 619 (No. 4,436) (CCD Mass.
1845). Similarly, Lord Ellenborough expressed the inherent tension in the need
simultaneously to protect copyrighted material and to allow others to build upon it
when he wrote, "while I shall think myself bound to secure every man in the
enjoyment of his copy-right, one must not put manacles upon science." [510 U.S.
576] Carey v. Kearsley, 4 Esp. 168, 170, 170 Eng. Rep. 679, 681 (K. B. 1803). In
copyright cases brought under the Statute of Anne of 1710, [6] English courts held
that in some instances "fair abridgements" would not infringe an author's rights, see
355
W. Patry, The Fair Use Privilege in Copyright Law 6-17 (1985) (hereinafter Patry);
Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990) (hereinafter
Leval), and although the First Congress enacted our initial copyright statute, Act of
May 31, 1790, 1 Stat. 124, without any explicit reference to "fair use," as it later
came to be known, [7] the doctrine was recognized by the American courts
nonetheless.
In Folsom v. Marsh, 9 F. Cas. 342 (No. 4,901) (CCD Mass. 1841), Justice Story
distilled the essence of law and methodology from the earlier cases: "look to the
nature and objects of the selections made, the quantity and value of the materials
used, and the degree in which the use may prejudice the sale, or diminish the
profits, or supersede the objects, of the original work." Id., at 348. Thus expressed,
fair use remained exclusively judge-made doctrine until the passage of the 1976
Copyright Act, in which Justice Story's summary is discernible: [8]
"§ 107. Limitations on exclusive rights: Fair use
"Notwithstanding the provisions of sections 106 and 106A, the fair use of
a copyrighted work, including such use by reproduction in copies or
in any particular [510 U.S. 577] 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 non-profit educational purposes;
"(2) the nature of the copyrighted work;
"(3) the amount and substantiality of the portion used in relation to the
"(4) the effect of the use upon the potential market for or value of the
copyrighted work.
"The fact that a work is unpublished shall not itself bar a finding of fair
use if such finding is made upon consideration of all the above factors."
[…]
Congress meant § 107 "to restate the present judicial doctrine of fair use, not to
change, narrow, or enlarge it in any way" and intended that courts continue the
common-law tradition of fair use adjudication. H. R. Rep. No. 94-1476, p. 66
(1976) (hereinafter House Report); S. Rep. No. 94-473, p. 62 (1975) (hereinafter
Senate Report). The fair use doctrine thus "permits [and requires] courts to avoid
rigid application of the copyright statute when, on occasion, it would stifle the very
creativity which that law is designed to foster." Stewart v. Abend, 495 U. S. 207,
236 (1990) (internal quotation marks and citation omitted).
The task is not to be simplified with bright-line rules, for the statute, like the
doctrine it recognizes, calls for case-by-case analysis. [ … ] The text employs the
terms "including" and "such as" in the preamble paragraph to indicate the
ChapterNumber:
356
"illustrative and not limitative" function of the examples given, § 101; see Harper
& Row, supra, at 561, which thus provide only general guidance about the sorts of
copying that courts and [510 U.S. 578] Congress most commonly had found to be
fair uses. [9] Nor may the four statutory factors be treated in isolation, one from
purposes of copyright. See Leval 1110-1111; Patry & Perlmutter, Fair Use
Misconstrued: Profit, Presumptions, and Parody, 11 Cardozo Arts & Ent. L. J. 667,
685-687 (1993) (hereinafter Patry & Perlmutter). [10]
A
The first factor in a fair use enquiry is "the purpose and character of the use,
including whether such use is of a commercial nature or is for nonprofit educational
purposes." § 107(1). This factor draws on Justice Story's formulation, "the nature
and objects of the selections made." Folsom v. Marsh, supra, at 348. The enquiry
here may be guided by the examples given in the preamble to § 107, looking to
whether the use is for criticism, or comment, or news reporting, [510 U.S. 579] and
the like, see § 107. The central purpose of this investigation is to see, in Justice
Story's words, whether the new work merely "supersede[s] the objects" of the
original creation, Folsom v. Marsh, supra, at 348; accord, Harper & Row, supra, at
562 ("supplanting" the original), or instead adds something new, with a further
purpose or different character, altering the first with new expression, meaning, or
message; it asks, in other words, whether and to what extent the new work is
"transformative." Leval 1111. Although such transformative use is not absolutely
necessary for a finding of fair use, Sony, supra, at 455, n. 40, [11] the goal of
copyright, to promote science and the arts, is generally furthered by the creation of
transformative works. Such works thus lie at the heart of the fair use doctrine's
guarantee of breathing space within the confines of copyright, see, e. g., Sony,
supra, at 478-480 (Blackmun, J., dissenting), and the more transformative the new
work, the less will be the significance of other factors, like commercialism, that
may weigh against a finding of fair use.
This Court has only once before even considered whether parody may be fair use,
and that time issued no opinion because of the Court's equal division. Benny v.
Loew's Inc., 239 F. 2d 532 (CA9 1956), aff'd sub nom. Columbia Broadcasting
System, Inc. v. Loew's Inc., 356 U. S. 43 (1958). Suffice it to say now that parody
has an obvious claim to transformative value, as Acuff-Rose itself does not deny.
Like less ostensibly humorous forms of criticism, it can provide social benefit, by
shedding light on an earlier work, and, in the process, creating a new one. We thus
line up with the courts that have held that parody, like other comment or criticism,
may claim fair use under § 107. See, e. g., Fisher v. Dees, 794 F. 2d 432 (CA9
1986) ("When Sonny Sniffs Glue," a parody of "When Sunny Gets Blue," is fair
use); Elsmere Music, Inc. v. National Broadcasting Co., 482 F. Supp. 741 [510 U.S.
580] (SDNY), aff'd, 623 F. 2d 252 (CA2 1980) ("I Love Sodom," a "Saturday Night
Live" television parody of "I Love New York," is fair use); see also House Report,
p. 65; Senate Report, p. 61 ("[U]se in a parody of some of the content of the work
parodied" may be fair use).
The germ of parody lies in the definition of the Greek parodeia, quoted in Judge
Nelson's Court of Appeals dissent, as "a song sung alongside another." 972 F. 2d, at
1440, quoting 7 Encyclopedia Britannica 768 (15th ed. 1975). Modern dictionaries
357
accordingly describe a parody as a "literary or artistic work that imitates the

characteristic style of an author or a work for comic effect or ridicule," [12] or as a
"composition in prose or verse in which the characteristic turns of thought and
phrase in an author or class of authors are imitated in such a way as to make them
appear ridiculous." [13] For the purposes of copyright law, the nub of the definitions,
and the heart of any parodist's claim to quote from existing material, is the use of
some elements of a prior author's composition to create a new one that, at least in
part, comments on that author's works. See, e. g., Fisher v. Dees, supra, at 437;
MCA, Inc. v. Wilson, 677 F. 2d 180, 185 (CA2 1981). If, on the contrary, the
commentary has no critical bearing on the substance or style of the original
composition, which the alleged infringer merely uses to get attention or to avoid the
drudgery in working up something fresh, the claim to fairness in borrowing from
another's work diminishes accordingly (if it does not vanish), and other factors, like
the extent of its commerciality, loom larger. [14] Parody needs to mimic [510 U.S.
581] an original to make its point, and so has some claim to use the creation of its
victim's (or collective victims') imagination, whereas satire can stand on its own
two feet and so requires justification for the very act of borrowing. [15] See ibid.;
Bisceglia, Parody and Copyright Protection: Turning the Balancing Act Into a
Juggling Act, in ASCAP, Copyright Law Symposium, No. 34, p. 25 (1987).
The fact that parody can claim legitimacy for some appropriation does not, of
course, tell either parodist or judge much about where to draw the line. Like a book
review quoting the copyrighted material criticized, parody may or may not be fair
use, and petitioners' suggestion that any parodic use is presumptively fair has no
more justification in law or fact than the equally hopeful claim that any use for
news reporting should be presumed fair, see Harper & Row, 471 U. S., at 561. The
Act has no hint of an evidentiary preference for parodists over their victims, and no
workable presumption for parody could take account of the fact that parody often
shades into satire when society is lampooned through its creative artifacts, or that a
work may contain both parodic and nonparodic elements. Accordingly, parody, like
any other use, has to work its way through the relevant factors, and be judged case
by case, in light of the ends of the copyright law.
Here, the District Court held, and the Court of Appeals assumed, that 2 Live Crew's
"Pretty Woman" contains parody, [510 U.S. 582] commenting on and criticizing the
original work, whatever it may have to say about society at large. As the District
Court remarked, the words of 2 Live Crew's song copy the original's first line, but
then "quickly degenerat[e] into a play on words, substituting predictable lyrics with
shocking ones . . . [that] derisively demonstrat[e] how bland and banal the Orbison
song seems to them." 754 F. Supp., at 1155 (footnote omitted). Judge Nelson,
dissenting below, came to the same conclusion, that the 2 Live Crew song "was
clearly intended to ridicule the white-bread original" and "reminds us that sexual
congress with nameless streetwalkers is not necessarily the stuff of romance and is
not necessarily without its consequences. The singers (there are several) have the
same thing on their minds as did the lonely man with the nasal voice, but here there
is no hint of wine and roses." 972 F. 2d, at 1442. Although the majority below had
difficulty discerning any criticism of the original in 2 Live Crew's song, it assumed
for purposes of its opinion that there was some. Id., at 1435-1436, and n. 8.
We have less difficulty in finding that critical element in 2 Live Crew's song than
the Court of Appeals did, although having found it we will not take the further step
of evaluating its quality. The threshold question when fair use is raised in defense
of parody is whether a parodic character may reasonably be perceived. [16] Whether,
ChapterNumber:
358
going beyond that, parody is in good taste or bad does not and should not matter to
fair use. As Justice Holmes explained, "[i]t would be a dangerous undertaking for
persons trained only to the law to constitute themselves final judges of the worth of
[a work], outside of the narrowest and most obvious limits. At [510 U.S. 583] the
one extreme some works of genius would be sure to miss appreciation. Their very
novelty would make them repulsive until the public had learned the new language
in which their author spoke." Bleistein v. Donaldson Lithographing Co., 188 U. S.
239, 251 (1903) [ … ]
While we might not assign a high rank to the parodic element here, we think it fair
to say that 2 Live Crew's song reasonably could be perceived as commenting on the
original or criticizing it, to some degree. 2 Live Crew juxtaposes the romantic
musings of a man whose fantasy comes true, with degrading taunts, a bawdy
demand for sex, and a sigh of relief from paternal responsibility. The later words
can be taken as a comment on the naivete of the original of an earlier day, as a
rejection of its sentiment that ignores the ugliness of street life and the debasement
that it signifies. It is this joinder of reference and ridicule that marks off the author's
choice of parody from the other types of comment and criticism that traditionally
have had a claim to fair use protection as transformative works. [17]
The Court of Appeals, however, immediately cut short the enquiry into 2 Live
Crew's fair use claim by confining its treatment of the first factor essentially to one
relevant fact, the commercial nature of the use. The court then inflated the
significance of this fact by applying a presumption ostensibly [510 U.S. 584] culled
from Sony, that "every commercial use of copy-righted material is
presumptively . . . unfair. . . ." Sony, 464 U. S., at 451. In giving virtually
dispositive weight to the commercial nature of the parody, the Court of Appeals
erred.
The language of the statute makes clear that the commercial or nonprofit
educational purpose of a work is only one element of the first factor enquiry into its
purpose and character. Section 107(1) uses the term "including" to begin the
dependent clause referring to commercial use, and the main clause speaks of a
broader investigation into "purpose and character." As we explained in Harper &
Row, Congress resisted attempts to narrow the ambit of this traditional enquiry by
adopting categories of presumptively fair use, and it urged courts to preserve the
breadth of their traditionally ample view of the universe of relevant evidence. 471
U. S., at 561; House Report, p. 66. Accordingly, the mere fact that a use is
educational and not for profit does not insulate it from a finding of infringement,
any more than the commercial character of a use bars a finding of fairness. If,
indeed, commerciality carried presumptive force against a finding of fairness, the
presumption would swallow nearly all of the illustrative uses listed in the preamble
paragraph of § 107, including news reporting, comment, criticism, teaching,
scholarship, and research, since these activities "are generally conducted for profit
in this country." Harper & Row, supra, at 592 (Brennan, J., dissenting). Congress
could not have intended such a rule, which certainly is not inferable from the
common-law cases, arising as they did from the world of letters in which Samuel
Johnson could pronounce that "[n]o man but a blockhead ever wrote, except for
money." 3 Boswell's Life of Johnson 19 (G. Hill ed. 1934).
Sony itself called for no hard evidentiary presumption. There, we emphasized the
need for a "sensitive balancing of interests," 464 U. S., at 455, n. 40, noted that
Congress had "eschewed a rigid, bright-line approach to fair use," id., at [510 U.S.
585] 449, n. 31, and stated that the commercial or nonprofit educational character
359
of a work is "not conclusive," id., at 448-449, but rather a fact to be "weighed along
with other[s] in fair use decisions," id., at 449, n. 32 (quoting House Report, p. 66).
The Court of Appeals's elevation of one sentence from Sony to a per se rule thus
runs as much counter to Sony itself as to the long common-law tradition of fair use
adjudication. Rather, as we explained in Harper & Row, Sony stands for the
proposition that the "fact that a publication was commercial as opposed to nonprofit
is a separate factor that tends to weigh against a finding of fair use." 471 U. S., at
562. But that is all, and the fact that even the force of that tendency will vary with
the context is a further reason against elevating commerciality to hard presumptive
significance. The use, for example, of a copyrighted work to advertise a product,
even in a parody, will be entitled to less indulgence under the first factor of the fair
use enquiry than the sale of a parody for its own sake, let alone one performed a
single time by students in school. [ … ][18]
[510 U.S. 586] B

The second statutory factor, "the nature of the copy-righted work," § 107(2), draws
on Justice Story's expression, the "value of the materials used." Folsom v. Marsh, 9
F. Cas., at 348. This factor calls for recognition that some works are closer to the
core of intended copyright protection than others, with the consequence that fair use
is more difficult to establish when the former works are copied. [ … ] We agree
with both the District Court and the Court of Appeals that the Orbison original's
creative expression for public dissemination falls within the core of the copyright's
protective purposes. 754 F. Supp., at 1155-1156; 972 F. 2d, at 1437. This fact,
however, is not much help in this case, or ever likely to help much in separating the
fair use sheep from the infringing goats in a parody case, since parodies almost
invariably copy publicly known, expressive works.
C
The third factor asks whether "the amount and substantiality of the portion used in
relation to the copyrighted work as a whole," § 107(3) (or, in Justice Story's words,
"the quantity and value of the materials used," Folsom v. Marsh, supra, at 348) are
reasonable in relation to the purpose of the copying. Here, attention turns to the
persuasiveness of a parodist's justification for the particular copying done, and the
enquiry will harken back to the first of the statutory factors, for, as in prior cases,
we recognize that the extent of permissible copying varies with the purpose and
character [510 U.S. 587] of the use. See Sony, supra, at 449-450 (reproduction of
entire work "does not have its ordinary effect of militating against a finding of fair
use" as to home videotaping of television programs); Harper & Row, supra, at 564
("[E]ven substantial quotations might qualify as fair use in a review of a published
work or a news account of a speech" but not in a scoop of a soon-to-be-published
memoir). The facts bearing on this factor will also tend to address the fourth, by
revealing the degree to which the parody may serve as a market substitute for the
original or potentially licensed derivatives. See Leval 1123.
The District Court considered the song's parodic purpose in finding that 2 Live
Crew had not helped themselves overmuch. 754 F. Supp., at 1156-1157. The Court
of Appeals disagreed, stating that "[w]hile it may not be inappropriate to find that
ChapterNumber:
360
no more was taken than necessary, the copying was qualitatively substantial. . . .
We conclude that taking the heart of the original and making it the heart of a new
work was to purloin a substantial portion of the essence of the original." 972 F. 2d,
at 1438.
The Court of Appeals is of course correct that this factor calls for thought not only
about the quantity of the materials used, but about their quality and importance, too.
In Harper & Row, for example, the Nation had taken only some 300 words out of
President Ford's memoirs, but we signaled the significance of the quotations in
finding them to amount to "the heart of the book," the part most likely to be
newsworthy and important in licensing serialization. 471 U. S., at 564-566, 568
(internal quotation marks omitted). We also agree with the Court of Appeals that
whether "a substantial portion of the infringing work was copied verbatim" from the
copyrighted work is a relevant question, see id., at 565, for it may reveal a dearth of
transformative character or purpose under the first factor, or a greater likelihood of
market harm under the fourth; a work composed primarily of an original,
particularly its heart, with little added or changed, [510 U.S. 588] is more likely to
be a merely superseding use, fulfilling demand for the original.
Where we part company with the court below is in applying these guides to parody,
and in particular to parody in the song before us. Parody presents a difficult case.
Parody's humor, or in any event its comment, necessarily springs from recognizable
allusion to its object through distorted imitation. Its art lies in the tension between a
known original and its parodic twin. When parody takes aim at a particular original
work, the parody must be able to "conjure up" at least enough of that original to
make the object of its critical wit recognizable. See, e. g., Elsmere Music, 623 F.
2d, at 253, n. 1; Fisher v. Dees, 794 F. 2d, at 438-439. What makes for this
recognition is quotation of the original's most distinctive or memorable features,
which the parodist can be sure the audience will know. Once enough has been taken
to assure identification, how much more is reasonable will depend, say, on the
extent to which the song's overriding purpose and character is to parody the original
or, in contrast, the likelihood that the parody may serve as a market substitute for
the original. But using some characteristic features cannot be avoided.
We think the Court of Appeals was insufficiently appreciative of parody's need for
the recognizable sight or sound when it ruled 2 Live Crew's use unreasonable as a
matter of law. It is true, of course, that 2 Live Crew copied the characteristic
opening bass riff (or musical phrase) of the original, and true that the words of the
first line copy the Orbison lyrics. But if quotation of the opening riff and the first
line may be said to go to the "heart" of the original, the heart is also what most
readily conjures up the song for parody, and it is the heart at which parody takes
aim. Copying does not become excessive in relation to parodic purpose merely
because the portion taken was the original's heart. If 2 Live Crew had copied a
significantly less memorable part of the original, it is difficult to see how its
parodic character [510 U.S. 589] would have come through. See Fisher v. Dees,
supra, at 439.
This is not, of course, to say that anyone who calls himself a parodist can skim the
cream and get away scot free. In parody, as in news reporting, see Harper & Row,
supra, context is everything, and the question of fairness asks what else the parodist
did besides go to the heart of the original. It is significant that 2 Live Crew not only
copied the first line of the original, but thereafter departed markedly from the
Orbison lyrics for its own ends. 2 Live Crew not only copied the bass riff and
repeated it, [19] but also produced otherwise distinctive sounds, interposing "scraper"
361
noise, over-laying the music with solos in different keys, and altering the drum
beat. See 754 F. Supp., at 1155. This is not a case, then, where "a substantial
portion" of the parody itself is composed of a "verbatim" copying of the original. It
is not, that is, a case where the parody is so insubstantial, as compared to the
copying, that the third factor must be resolved as a matter of law against the
parodists.
Suffice it to say here that, as to the lyrics, we think the Court of Appeals correctly
suggested that "no more was taken than necessary," 972 F. 2d, at 1438, but just for
that reason, we fail to see how the copying can be excessive in relation to its
parodic purpose, even if the portion taken is the original's "heart." As to the music,
we express no opinion whether repetition of the bass riff is excessive copying, and
we remand to permit evaluation of the amount taken, in light of the song's parodic
purpose and character, its transformative elements, and considerations of the
potential for market substitution sketched more fully below.
[510 U.S. 590] D

The fourth fair use factor is "the effect of the use upon the potential market for or
value of the copyrighted work." § 107(4). It requires courts to consider not only the
extent of market harm caused by the particular actions of the alleged infringer, but
also "whether unrestricted and widespread conduct of the sort engaged in by the
defendant . . . would result in a substantially adverse impact on the potential
market" for the original. [ … ] The enquiry "must take account not only of harm to
the original but also of harm to the market for derivative works." Harper & Row,
supra, at 568.
Since fair use is an affirmative defense, [20] its proponent would have difficulty
carrying the burden of demonstrating fair use without favorable evidence about
relevant markets. [21] In moving for summary judgment, 2 Live Crew left themselves
at just such a disadvantage when they failed to address the effect on the market for
rap derivatives, and confined themselves to uncontroverted submissions that there
was no likely effect on the market for the original. They did not, however, thereby
subject themselves to the evidentiary presumption applied by the Court of Appeals.
In assessing the likelihood of significant market harm, the Court of Appeals [510
U.S. 591] quoted from language in Sony that "`[i]f the intended use is for
commercial gain, that likelihood may be presumed. But if it is for a noncommercial
purpose, the likelihood must be demonstrated.'" 972 F. 2d, at 1438, quoting Sony,
464 U. S., at 451. The court reasoned that because "the use of the copyrighted work
is wholly commercial, . . . we presume that a likelihood of future harm to Acuff-
Rose exists." 972 F. 2d, at 1438. In so doing, the court resolved the fourth factor
against 2 Live Crew, just as it had the first, by applying a presumption about the
effect of commercial use, a presumption which as applied here we hold to be error.
No "presumption" or inference of market harm that might find support in Sony is

applicable to a case involving something beyond mere duplication for commercial
purposes. Sony's discussion of a presumption contrasts a context of verbatim
copying of the original in its entirety for commercial purposes, with the
noncommercial context of Sony itself (home copying of television programming).
In the former circumstances, what Sony said simply makes common sense: when a
commercial use amounts to mere duplication of the entirety of an original, it clearly
"supersede[s] the objects," Folsom v. Marsh, supra, at 348, of the original and
ChapterNumber:
362
serves as a market replacement for it, making it likely that cognizable market harm
to the original will occur. Sony, supra, at 451. But when, on the contrary, the
second use is transformative, market substitution is at least less certain, and market
harm may not be so readily inferred. Indeed, as to parody pure and simple, it is
more likely that the new work will not affect the market for the original in a way
cognizable under this factor, that is, by acting as a substitute for it ("supersed[ing]
[its] objects"). See Leval 1125; Patry & Perlmutter 692, 697-698. This is so because
the parody and the original usually serve different market functions. Bisceglia,
ASCAP, Copyright Law Symposium, No. 34, at 23.
We do not, of course, suggest that a parody may not harm the market at all, but
when a lethal parody, like a scathing [510 U.S. 592] theater review, kills demand
for the original, it does not produce a harm cognizable under the Copyright Act.
Because "parody may quite legitimately aim at garroting the original, destroying it
commercially as well as artistically," B. Kaplan, An Unhurried View of Copyright
69 (1967), the role of the courts is to distinguish between "[b]iting criticism [that
merely] suppresses demand [and] copyright infringement[, which] usurps it." Fisher
v. Dees, 794 F. 2d, at 438.
This distinction between potentially remediable displacement and unremediable

disparagement is reflected in the rule that there is no protectible derivative market
for criticism. The market for potential derivative uses includes only those that
creators of original works would in general develop or license others to develop.
Yet the unlikelihood that creators of imaginative works will license critical reviews
or lampoons of their own productions removes such uses from the very notion of a
potential licensing market. "People ask . . . for criticism, but they only want praise."
S. Maugham, Of Human Bondage 241 (Penguin ed. 1992). Thus, to the extent that
the opinion below may be read to have considered harm to the market for parodies
of "Oh, Pretty Woman," see 972 F. 2d, at 1439, the court erred. [ … ][22]
In explaining why the law recognizes no derivative market for critical works,
including parody, we have, of course, been speaking of the later work as if it had
nothing but a critical aspect (i. e., "parody pure and simple," supra, at 591). But the
later work may have a more complex character, with effects not only in the arena of
criticism but also in protectible markets for derivative works, too. In that sort of
case, the law looks beyond the criticism to the other elements of the work, as it
does here. 2 Live Crew's song comprises not [510 U.S. 593] only parody but also
rap music, and the derivative market for rap music is a proper focus of enquiry, see
Harper & Row, supra, at 568; Nimmer § 13.05[B]. Evidence of substantial harm to
it would weigh against a finding of fair use, [23] because the licensing of derivatives
is an important economic incentive to the creation of originals. See 17 U. S. C. §
106(2) (copyright owner has rights to derivative works). Of course, the only harm
to derivatives that need concern us, as discussed above, is the harm of market
substitution. The fact that a parody may impair the market for derivative uses by the
very effectiveness of its critical commentary is no more relevant under copyright
than the like threat to the original market. [24]
Although 2 Live Crew submitted uncontroverted affidavits on the question of

market harm to the original, neither they, nor Acuff-Rose, introduced evidence or
affidavits addressing the likely effect of 2 Live Crew's parodic rap song on the
market for a nonparody, rap version of "Oh, Pretty Woman." And while Acuff-Rose
would have us find evidence of a rap market in the very facts that 2 Live Crew
recorded a rap parody of "Oh, Pretty Woman" and another rap group sought a
license to record a rap derivative, there was no evidence that a potential rap market
363
was harmed in any way by 2 Live Crew's parody, rap version. The fact that 2 Live
Crew's parody sold as part of a collection of rap songs says very little about the
parody's effect on a market for a rap version of the original, either of the music
alone or of the music with its lyrics. The District Court essentially passed [510 U.S.
594] on this issue, observing that Acuff-Rose is free to record "whatever version of
the original it desires," 754 F. Supp., at 1158; the Court of Appeals went the other
way by erroneous presumption. Contrary to each treatment, it is impossible to deal
with the fourth factor except by recognizing that a silentrecord on an important
factor bearing on fair use disentitled the proponent of the defense, 2 Live Crew, to
summary judgment. The evidentiary hole will doubtless be plugged on remand.
III
It was error for the Court of Appeals to conclude that the commercial nature of 2
Live Crew's parody of "Oh, Pretty Woman" rendered it presumptively unfair. No
such evidentiary presumption is available to address either the first factor, the
character and purpose of the use, or the fourth, market harm, in determining
whether a transformative use, such as parody, is a fair one. The court also erred in
holding that 2 Live Crew had necessarily copied excessively from the Orbison
original, considering the parodic purpose of the use. We therefore reverse the
judgment of the Court of Appeals and remand the case for further proceedings
consistent with this opinion.
It is so ordered.
APPENDIX A TO OPINION OF THE

COURT
"Oh, Pretty Woman" by Roy Orbison and William Dees
Pretty Woman, walking down the street,
Pretty Woman, the kind I like to meet,
Pretty Woman, I don't believe you, you're not the truth,
No one could look as good as you Mercy
Pretty Woman, won't you pardon me,
Pretty Woman, I couldn't help but see,
[510 U.S. 595] Pretty Woman, that you look lovely as can be Are you lonely just
like me?
Pretty Woman, stop a while,
Pretty Woman, talk a while,
Pretty Woman give your smile to me
Pretty Woman, yeah, yeah, yeah

ChapterNumber:
364
Pretty Woman, look my way,
Pretty Woman, say you'll stay with me
'Cause I need you, I'll treat you right
Come to me baby, Be mine tonight
Pretty Woman, don't walk on by,
Pretty Woman, don't make me cry,
Pretty Woman, don't walk away,
Hey, O. K.
If that's the way it must be, O. K.
I guess I'll go on home, it's late
There'll be tomorrow night, but wait!
What do I see
Is she walking back to me?
Yeah, she's walking back to me!
Oh, Pretty Woman.
APPENDIX B TO OPINION OF THE

COURT
"Pretty Woman" as Recorded by 2 Live Crew
Pretty woman walkin' down the street
Pretty woman girl you look so sweet
Pretty woman you bring me down to that knee
Pretty woman you make me wanna beg please
Oh, pretty woman
Big hairy woman you need to shave that stuff
Big hairy woman you know I bet it's tough
Big hairy woman all that hair it ain't legit
[510 U.S. 596] 'Cause you look like ‘Cousin It'
Big hairy woman
Bald headed woman girl your hair won't grow
Bald headed woman you got a teeny weeny afro

365
Bald headed woman you know your hair could look nice
Bald headed woman first you got to roll it with rice
Bald headed woman here, let me get this hunk of biz for ya
Ya know what I'm saying you look better than rice a roni
Oh bald headed woman
Big hairy woman come on in
And don't forget your bald headed friend
Hey pretty woman let the boys Jump in
Two timin' woman girl you know you ain't right
Two timin' woman you's out with my boy last night
Two timin' woman that takes a load off my mind
Two timin' woman now I know the baby ain't mine
Oh, two timin' woman
Oh pretty woman
[…]
[*] Briefs of amici curiae urging reversal were filed for the American Civil
Liberties Union by Steven F. Reich, Steven R. Shapiro, Marjorie Heins, and John A.
Powell; for Capitol Steps Production, Inc., et al. by William C. Lane; for the
Harvard Lampoon, Inc., by Robert H. Loeffler and Jonathan Band; for the PEN
American Center by Leon Friedman; and for Robert C. Berry et al. by Alfred C.
Yen.
Briefs of amici curiae urging affirmance were filed for the National Music
Publishers' Association, Inc., et al. by Marvin E. Frankel and Michael S. Oberman;
and for Fred Ebb et al. by Stephen Rackow Kaye, Charles S. Sims, and Jon A.
Baumgarten.
Briefs of amici curiae were filed for Home Box Office et al. by Daniel M.
Waggoner, P. Cameron DeVore, George Vradenburg, Bonnie Bogin, and Richard
Cotton; and for Warner Bros. by Cary H. Sherman and Robert Alan Garrett.
__________
[1] Rap has been defined as a "style of black American popular music consisting of
improvised rhymes performed to a rhythmic accompaniment." The Norton/Grove
Concise Encyclopedia of Music 613 (1988). 2 Live Crew plays "[b]ass music," a
regional, hip-hop style of rap from the Liberty City area of Miami, Florida. Brief
for Petitioners 34.
[2] The parties argue about the timing. 2 Live Crew contends that the album was
released on July 15, and the District Court so held. 754 F. Supp. 1150, 1152 (MD
Tenn. 1991). The Court of Appeals states that Campbell's affidavit puts the release
ChapterNumber:
366
date in June, and chooses that date. 972 F. 2d 1429, 1432 (CA6 1992). We find the
timing of the request irrelevant for purposes of this enquiry. See n. 18, infra,
discussing good faith.
[3] 2 Live Crew's motion to dismiss was converted to a motion for summary
judgment. Acuff-Rose defended against the motion, but filed no cross-motion.
[4] Section 106 provides in part:
"Subject to sections 107 through 120, the owner of copyright under this
"(1) to reproduce the copyrighted work in copies or phonorecords;
"(2) to prepare derivative works based upon the copyrighted work;
"(3) to distribute copies or phonorecords of the copyrighted work to the

lending . . . ."
A derivative work is defined as one "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 an original work of authorship, is a `derivative work.' "
17 U. S. C. § 101.
[…]
[10] Because the fair use enquiry often requires close questions of judgment as to
the extent of permissible borrowing in cases involving parodies (or other critical
works), courts may also wish to bear in mind that the goals of the copyright law, "to
stimulate the creation and publication of edifying matter," Leval 1134, are not
always best served by automatically granting injunctive relief when parodists are
found to have gone beyond the bounds of fair use. See 17 U. S. C. § 502(a) (court
"may . . . grant . . . injunctions on such terms as it may deem reasonable to prevent
or restrain infringement") (emphasis added); Leval 1132 (while in the "vast
majority of cases, [an injunctive] remedy is justified because most infringements
are simple piracy," such cases are "worlds apart from many of those raising
reasonable contentions of fair use" where "there may be a strong public interest in
the publication of the secondary work [and] the copyright owner's interest may be
adequately protected by an award of damages for whatever infringement is found");
Abend v. MCA, Inc., 863 F. 2d 1465, 1479 (CA9 1988) (finding "special
circumstances" that would cause "great injustice" to defendants and "public injury"
were injunction to issue), aff'd sub nom. Stewart v. Abend, 495 U. S. 207 (1990).
[11] The obvious statutory exception to this focus on transformative uses is the
straight reproduction of multiple copies for classroom distribution.
[12] American Heritage Dictionary 1317 (3d ed. 1992).
[13] 11 Oxford English Dictionary 247 (2d ed. 1989).

367
[14] A parody that more loosely targets an original than the parody presented here
may still be sufficiently aimed at an original work to come within our analysis of
parody. If a parody whose wide dissemination in the market runs the risk of serving
as a substitute for the original or licensed derivatives (see infra, at 590-594,
discussing factor four), it is more incumbent on one claiming fair use to establish
the extent of transformation and the parody's critical relationship to the original. By
contrast, when there is little or no risk of market substitution, whether because of
the large extent of transformation of the earlier work, the new work's minimal
distribution in the market, the small extent to which it borrows from an original, or
other factors, taking parodic aim at an original is a less critical factor in the
analysis, and looser forms of parody may be found to be fair use, as may satire with
lesser justification for the borrowing than would otherwise be required.
[15] Satire has been defined as a work "in which prevalent follies or vices are
assailed with ridicule," 14 Oxford English Dictionary, supra, at 500, or are
"attacked through irony, derision, or wit," American Heritage Dictionary, supra, at
1604.
[16] The only further judgment, indeed, that a court may pass on a work goes to an
assessment of whether the parodic element is slight or great, and the copying small
or extensive in relation to the parodic element, for a work with slight parodic
element and extensive copying will be more likely to merely "supersede the
objects" of the original. See infra, at 586-594, discussing factors three and four.
[17] We note in passing that 2 Live Crew need not label their whole album, or even
this song, a parody in order to claim fair use protection, nor should 2 Live Crew be
penalized for this being its first parodic essay. Parody serves its goals whether
labeled or not, and there is no reason to require parody to state the obvious (or even
the reasonably perceived). See Patry & Perlmutter 716-717.
[18] Finally, regardless of the weight one might place on the alleged infringer's
state of mind, compare Harper & Row, 471 U. S., at 562 (fair use presupposes good
faith and fair dealing) (quotation marks omitted), with Folsom v. Marsh, 9 F. Cas.
342, 349 (No. 4,901) (CCD Mass. 1841) (good faith does not bar a finding of
infringement); Leval 1126-1127 (good faith irrelevant to fair use analysis), we
reject Acuff-Rose's argument that 2 Live Crew's request for permission to use the
original should be weighed against a finding of fair use. Even if good faith were
central to fair use, 2 Live Crew's actions do not necessarily suggest that they
believed their version was not fair use; the offer may simply have been made in a
good-faith effort to avoid this litigation. If the use is otherwise fair, then no
permission need be sought or granted. Thus, being denied permission to use a work
does not weigh against a finding of fair use. See Fisher v. Dees, 794 F. 2d 432, 437
(CA9 1986).
[19] This may serve to heighten the comic effect of the parody, as one witness
stated, App. 32a, Affidavit of Oscar Brand; see also Elsmere Music, Inc. v. National
Broadcasting Co., 482 F. Supp. 741, 747 (SDNY 1980) (repetition of "I Love
Sodom"), or serve to dazzle with the original's music, as Acuff-Rose now contends.
[20] Harper & Row, 471 U. S., at 561; H. R. Rep. No. 102-836, p. 3, n. 3 (1992).
[21] Even favorable evidence, without more, is no guarantee of fairness. Judge

Leval gives the example of the film producer's appropriation of a composer's
previously unknown song that turns the song into a commercial success; the boon to
the song does not make the film's simple copying fair. Leval 1124, n. 84. This
ChapterNumber:
368
factor, no less than the other three, may be addressed only through a "sensitive
balancing of interests." Sony Corp. of America v. Universal City Studios, Inc., 464
U. S. 417, 455, n. 40 (1984). Market harm is a matter of degree, and the importance
of this factor will vary, not only with the amount of harm, but also with the relative
strength of the showing on the other factors.
[22] We express no opinion as to the derivative markets for works using elements
of an original as vehicles for satire or amusement, making no comment on the
original or criticism of it.
[23] See Nimmer § 13.05[A][4], p. 13-102.61 ("a substantially adverse impact on

the potential market"); Leval 1125 ("reasonably substantial" harm); Patry &
Perlmutter 697-698 (same).
[24] In some cases it may be difficult to determine whence the harm flows. In such
cases, the other fair use factors may provide some indicia of the likely source of the
harm. A work whose overriding purpose and character is parodic and whose
borrowing is slight in relation to its parody will be far less likely to cause
cognizable harm than a work with little parodic content and much copying.

9.1.3
Castle Rock Entertainment, Inc. v. Carol Pub.

Group, Inc.

Lesson Specific Section - Parts I & II (paragraphs 60-95)

150 F.3d 132
No. 97-7992
1998-07-10
150 F.3d 132 (1998)
CASTLE ROCK ENTERTAINMENT, INC.,

Plaintiff-Appellee,
v.
CAROL PUBLISHING GROUP, INC.,
Defendant-Cross Claimant-Appellant,
Beth B. Golub, Defendant-Cross Defendant-
Appellant.
[…]
Argued January 8, 1998.

369
Decided July 10, 1998.
[…]
[135] JOHN M. WALKER, Jr., Circuit Judge:
This case presents two interesting and somewhat novel issues of copyright law. The
first is whether The Seinfeld Aptitude Test, a trivia quiz book devoted exclusively to
testing its readers' recollection of scenes and events from the fictional television
series Seinfeld, takes sufficient protected expression from the original, as evidenced
by the book's substantial similarity to the television series, such that, in the absence
of any defenses, the book would infringe the copyright in Seinfeld. The second is
whether The Seinfeld Aptitude Test (also referred to as The SAT) constitutes fair use
of the Seinfeld television series.
Defendants-appellants Carol Publishing Group, Inc. and Beth B. Golub appeal from
the July 23, 1997 judgment of the United States District Court for the Southern
District of New York (Sonia Sotomayor, District Judge) granting, pursuant to
Fed.R.Civ.P. 56, plaintiff-appellee Castle Rock Entertainment, Inc.'s ("Castle
Rock") motion for summary judgment; denying defendants' cross-motion for
summary judgment; awarding Castle Rock $403,000 for defendants' copyright
infringement; and permanently enjoining defendants from publishing The Seinfeld
Aptitude Test.
We conclude that The SAT unlawfully copies from Seinfeld and that its copying
does not constitute fair use and thus is an actionable infringement. Accordingly, we
affirm the judgment in favor of Castle Rock.
Background
The material facts in this case are undisputed. Plaintiff Castle Rock is the producer
and copyright owner of each episode of the Seinfeld television series. The series
revolves around the petty tribulations in the lives of four single, adult friends in
New York: Jerry Seinfeld, George Costanza, Elaine Benes, and Cosmo Kramer.
Defendants are Beth Golub, the author, and Carol Publishing Group, Inc., the
publisher, of The SAT, a 132-page book containing 643 trivia questions and answers
about the events and characters depicted in Seinfeld. These include 211 multiple
choice questions, in which only one out of three to five answers is correct; 93
matching questions; and a number of short-answer questions. The questions are
divided into five levels of difficulty, labeled (in increasing order of difficulty)
"Wuss Questions," "This, That, and the Other Questions," "Tough Monkey
Questions," "Atomic Wedgie Questions," and "Master of Your Domain Questions."
Selected examples from level 1 are indicative of the questions throughout The SAT:
1. To impress a woman, George passes himself off as
a) a gynecologist
b) a geologist
c) a marine biologist
ChapterNumber:
370
d) a meteorologist
11. What candy does Kramer snack on while observing a surgical

procedure from an operating-room balcony?
12. Who said, "I don't go for those nonrefundable deals ... I can't commit
to a woman ... I'm not committing to an airline."?
a) Jerry
b) George
c) Kramer[2]
The book draws from 84 of the 86 Seinfeld episodes that had been broadcast as of
the [136] time The SAT was published. Although Golub created the incorrect
answers to the multiple choice questions, every question and correct answer has as
its source a fictional moment in a Seinfeld episode. Forty-one questions and/or
answers contain dialogue from Seinfeld. The single episode most drawn upon by
The SAT, "The Cigar Store Indian," is the source of 20 questions that directly quote
between 3.6% and 5.6% of that episode (defendants' and plaintiffs calculations,
respectively).
The name "Seinfeld" appears prominently on the front and back covers of The SAT,
and pictures of the principal actors in Seinfeld appear on the cover and on several
pages of the book. On the back cover, a disclaimer states that "This book has not
been approved or licensed by any entity involved in creating or producing
Seinfeld." [3] The front cover bears the title "The Seinfeld Aptitude Test" and
describes the book as containing "[h]undreds of spectacular questions of minute
details from TV's greatest show about absolutely nothing." The back cover asks:
Just how well do you command the buzz-words, peccadilloes, petty

annoyances, and triflingly complex escapades of Jerry Seinfeld, Elaine
Benes, George Costanza, and Kramer — the fabulously neurotic foursome
that makes the offbeat hit TV series Seinfeld tick?
....
If you think you know the answers — and really keep track of Seinfeld
minutiae — challenge yourself and your friends with these 550 trivia
questions and 10 extra matching quizzes. No, The Seinfeld Aptitude Test
can't tell you whether you're Master of Your Domain, but it will certify
your status as King or Queen of Seinfeld trivia. So twist open a Snapple,
double-dip a chip, and open this book to satisfy your between-episode
cravings.
Golub has described The SAT as a "natural outgrowth" of Seinfeld which, "like the
Seinfeld show, is devoted to the trifling, picayune and petty annoyances
encountered by the show's characters on a daily basis." According to Golub, she
created The SAT by taking notes from Seinfeld programs at the time they were aired
on television and subsequently reviewing videotapes of several of the episodes, as
recorded by her or various friends.
371
The SAT's publication did not immediately provoke a challenge. The National
Broadcasting Corporation, which broadcasted Seinfeld, requested free copies of The
SAT from defendants and distributed them together with promotions for the
program. Seinfeld's executive producer characterized The SAT as "a fun little book."
There is no evidence that The SAT's publication diminished Seinfeld's profitability,
and in fact Seinfeld's audience grew after The SAT was first published.
Castle Rock has nevertheless been highly selective in marketing products associated
with Seinfeld, rejecting numerous proposals from publishers seeking approval for a
variety of projects related to the show. Castle Rock licensed one Seinfeld book, The
Entertainment Weekly Seinfeld Companion, and has licensed the production of a
CD-ROM product that includes discussions of Seinfeld episodes; the CD-ROM
allegedly might ultimately include a trivia bank. Castle Rock claims in this
litigation that it plans to pursue a more aggressive marketing strategy for Seinfeld-
related products, including "publication of books relating to Seinfeld."
In November 1994, Castle Rock notified defendants of its copyright and trademark
infringement claims. In February 1995, after defendants continued to distribute The
SAT, Castle Rock filed this action alleging federal copyright and trademark
infringement and state law unfair competition. Subsequently, both parties moved,
pursuant to Fed.R.Civ.P. 56, for summary judgment on both the copyright and
unfair competition claims.
The district court granted summary judgment to Castle Rock on the copyright
claim. It held that defendants had violated plaintiff's copyrights in Seinfeld and that
such copying did not constitute fair use. See Castle Rock Entertainment v. Carol
Publ'g Group, Inc., 955 F.Supp. 260, 274 (S.D.N.Y. 1997). The district court did
not grant summary [137] judgment to either party on the unfair competition claim.
See id. The parties then stipulated to damages and attorneys' fees on the copyright
infringement claim and, presumably to facilitate the appeal, to the dismissal without
prejudice of all remaining claims. Carol Publishing's cross-claims against Golub
were dismissed with prejudice. The district court entered final judgment on the
copyright infringement claim, awarded Castle Rock $403,000 with interest,
permanently enjoined defendants from publishing or distributing The SAT, and
ordered defendants to destroy all copies of The SAT in their custody or control.
Defendants now appeal.
Discussion
Standard of Review
Summary judgment is appropriate only if the moving party can show that there is
"no genuine issue as to any material fact and that the moving party is entitled to a
judgment as a matter of law." Fed.R.Civ.P. 56(c). The court "must draw all
reasonable inferences and resolve all ambiguities in favor of the non-moving party."
Garza v. Marine Transp. Lines, Inc., 861 F.2d 23, 26 (2d Cir.1988). Although
"[f]air use is a mixed question of law and fact," Harper & Row, Publishers, Inc. v.
Nation Enter., 471 U.S. 539, 560, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985), this court
has on a number of occasions "resolved fair use determinations at the summary
judgment stage" where, as here, there are no genuine issues of material fact.
ChapterNumber:
372
W[ … ]We review the district court's legal conclusions de novo and its findings of
fact for clear error. See American Geophysical Union v. Texaco Inc., 60 F.3d 913,
918 (2d Cir.1994).
Copyright Infringement
The Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. §§ 101-803, grants
copyright owners a bundle of exclusive rights, including the rights to "reproduce
the copyrighted work in copies" and "to prepare derivative works based upon the
copyrighted work." Id. § 106. "Copyright infringement is established when the
owner of a valid copyright demonstrates unauthorized copying." Repp v. Webber,
132 F.3d 882, 889 (2d Cir.1997); see Feist Publications, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). There are two
main components of this prima facie case of infringement: "a plaintiff must first
show that his work was actually copied .... [and] then must show that the copying
amounts to an improper or unlawful appropriation." Laureyssens v. Idea Group,
Inc., 964 F.2d 131, 139-40 (2d Cir.1992) (quotation marks and citations omitted).
Actual copying may be established "either by direct evidence of copying or by
indirect evidence, including access to the copyrighted work, similarities that are
probative of copying between the works, and expert testimony." Id. at 140. As we
have noted before, "probative," rather than "substantial" similarity is the correct
term in referring to the plaintiff's initial burden of proving actual copying by
indirect evidence. See Webber, 132 F.3d at 889 n. 1; Laureyssens, 964 F.2d at 140.
"It is only after actual copying is established that one claiming infringement" then
the second work bears "substantial similarity" to protected expression in the earlier
work. Webber, 132 F.3d at 889; Laureyssens, 964 F.2d at 140.
In the instant case, no one disputes that Castle Rock owns valid copyrights in the
Seinfeld television programs and that defendants actually copied from those
programs in creating The SAT. Golub freely admitted that she created The SAT by
taking notes from Seinfeld programs at the time they were aired on television and
subsequently reviewing videotapes of several of the episodes that she or her friends
recorded. Since the fact of copying is acknowledged and undisputed, the critical
question for decision is whether the copying was unlawful or improper in that it
took a sufficient amount of protected expression from Seinfeld as evidenced by its
substantial similarity to such expression.
[138]
Substantial Similarity
We have stated that "substantial similarity"
requires that the copying [be] quantitatively and qualitatively sufficient to

support the legal conclusion that infringement (actionable copying) has
occurred. The qualitative component concerns the copying of expression,
rather than ideas [, facts, works in the public domain, or any other non-
protectable elements].... The quantitative component generally concerns
the amount of the copyrighted work that is copied,
373
which must be more than "de minimis." Ringgold v. Black Entertainment Television,
Inc., 126 F.3d 70, 75 (2d Cir.1997) (emphasis added).
As to the quantitative element, we conclude that The SAT has crossed the de
minimis threshold. At the outset, we observe that the fact that the copying appears
in question and answer form is by itself without particular consequence: the trivia
quiz copies fragments of Seinfeld in the same way that a collection of Seinfeld jokes
or trivia would copy fragments of the series. In order to determine the quantitative
extent of the defendants' copying, we must then decide whether to analyze
separately the amount of expression copied from each individually copyrighted
Seinfeld episode, or to analyze in the aggregate the amount copied from the eighty-
four Seinfeld episodes. As defendants observe, 17 U.S.C. § 106 speaks throughout
in the singular, referring to the allegedly infringed "work," thus bolstering an
individual-episode analysis. Our precedents, however, tend to support the aggregate
analysis. See Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366,
1372-73, 1381 (2d Cir.1993) (finding substantial similarity between infringing book
and 8 episodes of Twin Peaks weekly television series seen as a whole, but
awarding statutory damages on per-episode basis); Wainwright Secs. Inc. v. Wall St.
Transcript Corp., 558 F.2d 91, 94 (2d Cir.1977) (abstracts of a number of research
reports treated cumulatively in fair use analysis); see also Craft v. Kobler, 667
F.Supp. 120, 124-25 (S.D.N.Y.1987) (passages taken from 15 separate books of
copyright holder treated cumulatively in finding infringement); cf. New Era
Publications Int'l, ApS v. Carol Publ'g Group, 904 F.2d 152, 158 (2d Cir.1990) (in
analyzing whether critical biography was fair use of 48 original writings, court
noted that biography "uses overall a small percentage of [plaintiff's] works" but also
noted that percentage of copying taken from each individual work was not "unfair")
(emphasis added); but see Salinger v. Random House, Inc., 811 F.2d 90, 98 (2d
Cir.1987) (copying of Salinger letters not fair use because, among other factors,
secondary work copied one-third of 17 letters and 10 percent of 42 letters).
As in Twin Peaks, for the purposes of the quantitative copying analysis we shall
treat Seinfeld — a discrete, continuous television series — as a single work. [4]
Where the secondary work focuses on an entire continuous television series such as
Seinfeld, there is no basis for looking in isolation at the amount copied from each
separately copyrighted episode. Although 17 U.S.C. § 106 speaks in terms of a
singular copyrighted "work," it would elevate form over substance to conclude that
The SAT's copying of 643 fragments from 84 individually copyrighted Seinfeld
episodes is indistinguishable from a case in which a 634-question trivia quiz book
poses a few questions from each of 84 unrelated television programs, books,
movies, or any combination of creative works that do not constitute a discrete series
of works. Had The SAT copied a few fragments from each of 84 unrelated television
programs (perhaps comprising the entire line-up on broadcast television),
defendants would have a stronger case under the de minimis doctrine. By copying
not a few but 643 fragments from the Seinfeld television series, however, The SAT
has plainly crossed the quantitative copying threshold under Ringgold.
As to Ringgold's qualitative component, each SAT trivia question is based directly

upon original, protectable expression in Seinfeld. As noted by the district court, The
SAT did not copy from Seinfeld unprotected [139] facts, but, rather, creative
expression. Cf. Feist, 499 U.S. at 364, 111 S.Ct. 1282 (finding no infringement
where defendant produced a multi-county phone directory, in part, by obtaining
names and phone numbers from plaintiffs' single-county directory). Unlike the facts
in a phone book, which "do not owe their origin to an act of authorship," id. at 347,
ChapterNumber:
374
111 S.Ct. 1282, each "fact" tested by The SAT is in reality fictitious expression
created by Seinfeld's authors. The SAT does not quiz such true facts as the identity
of the actors in Seinfeld, the number of days it takes to shoot an episode, the
biographies of the actors, the location of the Seinfeld set, etc. Rather, The SAT tests
whether the reader knows that the character Jerry places a Pez dispenser on Elaine's
leg during a piano recital, that Kramer enjoys going to the airport because he's
hypnotized by the baggage carousels, and that Jerry, opining on how to identify a
virgin, said "It's not like spotting a toupee." Because these characters and events
spring from the imagination of Seinfeld's authors, The SAT plainly copies
copyrightable, creative expression. [5] See Feist, 499 U.S. at 347, 111 S.Ct. 1282
(discussing distinction between discovered facts, which do not "owe their origin to
an act of authorship" and therefore are not protected by copyright, and created facts,
which constitute original, protected expression).
We find support for this conclusion in a previous case in which we held that a series
of still photographs of a ballet may in some cases infringe the copyright in an
original choreographic work. See Horgan v. Macmillan, Inc., 789 F.2d 157, 163 (2d
Cir.1986). The defendants in Horgan claimed that still photographs could not
"capture the flow of movement, which is the essence of dance," that "the staged
performance could not be recreated from the photographs," and thus, that the
photographs were not substantially similar to the choreographic work. Id. at 161-62
(quotation marks omitted). Although noting that the issue "was not a simple one,"
this court rejected that argument, holding that "the standard for determining
copyright infringement is not whether the original could be recreated from the
allegedly infringing copy, but whether the latter is substantially similar to the
former." Id. at 162 (quotation marks omitted). That observation applies with equal
force to the trivia quiz fragments in this case. Although Seinfeld could not be
"recreated" from The SAT, Castle Rock has nevertheless established both the
quantitative and qualitative components of the substantial similarity test,
establishing a prima facie case of copyright infringement.
Other Tests
As defendants note, substantial similarity usually "arises out of a claim of
infringement as between comparable works .... [where] because of the equivalent
nature of the competing works, the question of similarity can be tested
conventionally by comparing comparable elements of the two works." Because in
the instant case the original and secondary works are of different genres and to a
lesser extent because they are in different media, tests for substantial similarity
other than the quantitative/qualitative approach are not particularly helpful to our
analysis.
Under the "ordinary observer" test, for example, "[t]wo works are substantially
similar where `the ordinary observer, unless he set out to detect the disparities,
would be disposed to overlook them, and regard [the] aesthetic appeal [of the two
works] as the same.'" Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir.1992)
(quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d
Cir.1960) (L.Hand, J.) (comparing dress designs)) (alterations in original).
Undoubtedly, Judge Hand did not have in mind a comparison of aesthetic appeal as
between a television series and a trivia quiz and, in the usual case, we might [140]
question whether any "ordinary observer" would "regard [the] aesthetic appeal" in a
375
situation-comedy television program as being identical to that of any book, let

alone a trivia quiz book, about that program. Cf. Laureyssens, 964 F.2d at 132, 141
(applying "ordinary observer" test to compare two sets of foam rubber puzzles). We
note here, however, that plaintiff has a plausible claim that there is a common
aesthetic appeal between the two works based on The SAT's plain copying of
Seinfeld and Golub's statement on the back cover that the book was designed to
complement the aesthetic appeal of the television series. See The SAT ("So twist
open a Snapple, double-dip a chip, and open this book to satisfy your between
episode cravings.").
Under the "total concept and feel" test, urged by defendants, we analyze "the
similarities in such aspects as the total concept and feel, theme, characters, plot,
sequence, pace, and setting" of the original and the allegedly infringing works.
Williams v. Crichton, 84 F.3d 581, 588 (2d Cir.1996) (comparing children's books
with novel and movie); Reyher v. Children's Television Workshop, 533 F.2d 87, 91
(2d Cir.1976) (comparing children's book with story in Sesame Street Magazine).
Defendants contend that The SAT and the Seinfeld programs are incomparable in
conventional terms such as plot, sequence, themes, pace, and setting. For example,
The SAT has no plot; "[t]he notion of pace ... cannot be said even to exist in the
book"; The SAT's "sequence has no relationship to the sequences of any of the
Seinfeld episodes, since it is a totally random and scattered collection of questions
relating to events that occurred in the shows"; and The SAT's only theme "is how
much a Seinfeld fan can remember of 84 different programs." The total concept and
feel test, however, is simply not helpful in analyzing works that, because of their
different genres and media, must necessarily have a different concept and feel.
Indeed, many "derivative" works of different genres, in which copyright owners
have exclusive rights, see 17 U.S.C. § 106, may have a different total concept and
feel from the original work.
Finally, we do not apply the "fragmented literal similarity" test, [6] which focuses
upon copying of direct quotations or close paraphrasing, or the "comprehensive
nonliteral similarity" test, which examines whether "the fundamental essence or
structure of one work is duplicated in another." 4 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 13.03[A][1], at 13-29, § 13.03[A][2], at 13-45
(1997) (hereafter "Nimmer"); Twin Peaks, 996 F.2d at 1372-73(applying Nimmer
test); Warner Bros. Inc. v. American Broad. Cos., 720 F.2d 231, 240, 242 (2d
Cir.1983) (applying Nimmer test to compare Superman and The Greatest American
Hero). In the instant case, because the direct quotations or close paraphrases that
The SAT copied from the Seinfeld series are few and almost irrelevant to The SAT,
undue focus upon these isolated quotations could improperly distract us from
inquiring as to whether substantial similarity exists between Seinfeld and The SAT.
Castle Rock's comprehensive nonliteral similarity argument — that the defendants

"literally constructed the SAT with 643 fragments of Seinfeld's creative whole" —
is also unhelpful to our analysis and unnecessary to our determination that The SAT
is substantially similar to Seinfeld. Without having viewed Seinfeld itself, no SAT
reader could plausibly "construct" in his or her mind the plot of any Seinfeld
episode, nor any of Seinfeld's settings (the Seinfeld and Kramer apartments, the
foursome's restaurant hangout, George Steinbrenner's office, etc.), nor even the four
principal Seinfeld characters. Nor does The SAT "[duplicate] the fundamental
essence or structure" of Seinfeld. 4 Nimmer § 13.03[A][1], at 13-29; cf. Twin Peaks,
996 F.2d 1372-73 (finding "substantial similarity through comprehensive nonliteral
similarity" where chapter of infringing book "is essentially a detailed recounting of
ChapterNumber:
376
the first eight episodes of the [television] series" and "[e]very intricate plot twist
and element of character development appear in the Book [141] in the same
sequence as in the teleplays"). However, "[t]he standard for determining copyright
infringement is not whether the original could be recreated from the allegedly
infringing copy, but whether the latter is `substantially similar' to the former,"
Horgan, 789 F.2d at 162, and in copying a sufficient amount of protected
expression from the Seinfeld television series, The SAT easily passes the threshold
of substantial similarity between the contents of the secondary work and the
protected expression in the original.
Fair Use
Defendants claim that, even if The SAT's copying of Seinfeld constitutes prima facie
infringement, The SAT is nevertheless a fair use of Seinfeld. "From the infancy of
copyright protection," the fair use doctrine "has been thought necessary to fulfill
copyright's very purpose, `[t]o promote the Progress of Science and useful Arts.'"
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127
L.Ed.2d 500 (1994) (quoting U.S. Const., art. I, § 8, cl. 8). As noted in Campbell,
"in truth, in literature, in science and in art, there are, and can be, few, if any,
things, which in an abstract sense, are strictly new and original throughout. Every
book in literature, science and art, borrows, and must necessarily borrow, and use
much which was well known and used before." Id. (quotation marks omitted). Until
the 1976 Copyright Act, the doctrine of fair use grew exclusively out of the
common law. See id. at 576, 114 S.Ct. 1164; Folsom v. Marsh, 9 F.Cas. 342, 348
(C.D.Mass.1900) (CCD Mass. 1841) (Story, J.) (stating fair use test); Pierre N.
Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1105 (1990) ("Leval").
In the Copyright Act, Congress restated the common law tradition of fair use:
copyrighted work.
17 U.S.C. § 107. This section "intended that courts continue the common law
tradition of fair use adjudication" and "permits and requires courts to avoid rigid
application of the copyright statute, when, on occasion, it would stifle the very
creativity which that law is designed to foster." Campbell, 510 U.S. at 577, 114
S.Ct. 1164 (quotation marks omitted). Fair use analysis, therefore, always "calls for
377
case-by-case analysis." Id. The fair use examples provided in § 107 are "illustrative
and not limitative" and "provide only general guidance about the sorts of copying
that courts and Congress most commonly had found to be fair uses." Id. at 577-78,
114 S.Ct. 1164. Similarly, the four listed statutory factors in § 107 guide but do not
control our fair use analysis and "are to be explored, and the results weighed
together, in light of the purposes of copyright." [ … ] The ultimate test of fair use,
therefore, is whether the copyright law's goal of "promot[ing] the Progress of
Science and useful Arts," U.S. Const., art. I, § 8, cl. 8, "would be better served by
allowing the use than by preventing it."[ … ].
Purpose/Character of Use
The first fair use factor to consider is "the purpose and character of the [allegedly
infringing] use, including whether such use is of a commercial nature or is for
nonprofit educational purposes." 17 U.S.C. § 107(1). That The SAT's use is
commercial, at most, "tends to weigh against a finding of fair use." [142] Campbell,
510 U.S. at 585, 114 S.Ct. 1164 (quotation marks omitted); Texaco, 60 F.3d at 921.
But we do not make too much of this point. As noted in Campbell, "nearly all of the
illustrative uses listed in the preamble paragraph of § 107, including news
reporting, comment, criticism, teaching, scholarship, and research ... are generally
conducted for profit in this country," 510 U.S. at 584, 114 S.Ct. 1164 (quotation
marks omitted), and "no man but a blockhead ever wrote, except for money," id.
(quoting 3 Boswell's Life of Johnson 19 (G. Hill ed.1934)). We therefore do not
give much weight to the fact that the secondary use was for commercial gain.
The more critical inquiry under the first factor and in fair use analysis generally is
whether the allegedly infringing work "merely supersedes" the original work "or
instead adds something new, with a further purpose or different character, altering
the first with new ... meaning [] or message," in other words "whether and to what
extent the new work is `transformative.'" Id. at 579, 114 S.Ct. 1164 (quoting Leval
at 1111). If "the secondary use adds value to the original — if [copyrightable
expression in the original work] is used as raw material, transformed in the creation
of new information, new aesthetics, new insights and understandings — this is the
very type of activity that the fair use doctrine intends to protect for the enrichment
of society." Leval at 1111. In short, "the goal of copyright, to promote science and
the arts, is generally furthered by the creation of transformative works." Campbell,
510 U.S. at 579, 114 S.Ct. 1164.
Defendants claim two primary "transformative" qualities of The SAT. First, as noted
by the district court, "a text testing one's knowledge of Joyce's Ulysses, or
Shakespeare's Hamlet, would qualify as `criticism, comment, scholarship, or
research,' or such. The same must be said, then, of a text testing one's knowledge of
Castle Rock's Seinfeld." Castle Rock, 955 F.Supp. at 268 (citing Twin Peaks, 996
F.2d at 1374 ("A comment is as eligible for fair use protection when it concerns
`Masterpiece Theater' and appears in the New York Review of Books as when it
concerns Às the World Turns' and appears in Soap Opera Digest.")). In other
words, the fact that the subject matter of the quiz is plebeian, banal, or ordinary
stuff does not alter the fair use analysis. Criticism, comment, scholarship, research,
and other potential fair uses are no less protectable because their subject is the
ordinary.
ChapterNumber:
378
Second, defendants style The SAT as a work "decod[ing] the obsession with ... and
mystique that surround[s] `Seinfeld,'" by "critically restructur[ing] [ Seinfeld's
mystique] into a system complete with varying levels of `mastery' that relate the
reader's control of the show's trivia to knowledge of and identification with their
hero, Jerry Seinfeld." Citing one of their own experts for the proposition that "[t]he
television environment cannot speak for itself but must be spoken for and about,"
defendants argue that "The SAT is a quintessential example of critical text of the TV
environment .... expos[ing] all of the show's nothingness to articulate its true
motive forces and its social and moral dimensions." (Quotation marks omitted).
Castle Rock dismisses these arguments as post hoc rationalizations, claiming that
had defendants been half as creative in creating The SAT as were their lawyers in
crafting these arguments about transformation, defendants might have a colorable
fair use claim.
Any transformative purpose possessed by The SAT is slight to non-existent. We

reject the argument that The SAT was created to educate Seinfeld viewers or to
criticize, "expose," or otherwise comment upon Seinfeld. The SAT's purpose, as
evidenced definitively by the statements of the book's creators and by the book
itself, is to repackage Seinfeld to entertain Seinfeld viewers. The SAT's back cover
makes no mention of exposing Seinfeld to its readers, for example, as a pitiably
vacuous reflection of a puerile and pervasive television culture, but rather urges
SAT readers to "open this book to satisfy [their] between-episode [Seinfeld]
cravings." Golub, The SAT's author, described the trivia quiz book not as a
commentary or a Seinfeld research tool, but as an effort to "capture Seinfeld's flavor
in quiz book fashion." Finally, even viewing The SAT in the light most favorable to
defendants, we find scant [143] reason to conclude that this trivia quiz book seeks
to educate, criticize, parody, comment, report upon, or research Seinfeld, or
otherwise serve a transformative purpose. [7] The book does not contain commentary
or analysis about Seinfeld, nor does it suggest how The SAT can be used to research
Seinfeld; rather, the book simply poses trivia questions. The SAT's plain purpose,
therefore, is not to expose Seinfeld's "nothingness," but to satiate Seinfeld fans'
passion for the "nothingness" that Seinfeld has elevated into the realm of
protectable creative expression.
Although a secondary work need not necessarily transform the original work's
expression to have a transformative purpose, see, e.g., 4 Nimmer § 13.05[D][2], at
13-227-13-228 (discussing reproduction of entire works in judicial proceedings),
the fact that The SAT so minimally alters Seinfeld's original expression in this case
is further evidence of The SAT's lack of transformative purpose. To be sure, the act
of testing trivia about a creative work, in question and answer form, involves some
creative expression. While still minimal, it does require posing the questions and
hiding the correct answer among three or four incorrect ones. [8] Also, dividing the
trivia questions into increasing levels of difficulty is somewhat more original than
arranging names in a telephone book in alphabetical order. See Feist, 499 U.S. at
362-63, 111 S.Ct. 1282. The SAT's incorrect multiple choice answers are also
original. However, the work as a whole, drawn directly from the Seinfeld episodes
without substantial alteration, is far less transformative than other works we have
held not to constitute fair use. See, e.g., Twin Peaks, 996 F.2d at 1378 (book about
Twin Peaks television series that discusses show's popularity, characters, actors,
plots, creator, music, and poses trivia questions about show held not to be fair use).
379
Finally, we note a potential source of confusion in our copyright jurisprudence over

the use of the term "transformative." A "derivative work," over which a copyright
owner has exclusive control, is defined as

any other form in which a work may be recast, transformed, or adapted.
17 U.S.C. §§ 101, 106(2) (emphasis added). Although derivative works that are
subject to the author's copyright transform an original work into a new mode of
presentation, such works — unlike works of fair use — take expression for
purposes that are not "transformative." [9] In the instant case, since The SAT has
transformed Seinfeld's expression into trivia quiz book form with little, if any,
transformative purpose, the first fair use factor weighs against defendants.
Nature of the Copyrighted Work

The second statutory factor, "the nature of the copyrighted work," 17 U.S.C. §
107(2), "calls for recognition that some works are closer to the core of intended
copyright protection than others, with the consequence that fair use is more difficult
to establish when the former works are copied." Campbell, 510 U.S. at 586, 114
S.Ct. 1164. Defendants concede that the scope of fair use is somewhat narrower
with respect to fictional works, such as Seinfeld, than to factual works. [ … ]
Although this factor may be of less (or even of no) importance when assessed in the
context of certain transformative uses,[ … ]ificant in the instant case, where the
secondary use is at best minimally transformative. Thus, the second statutory factor
favors the plaintiff.
Amount and Substantiality of the Portion

Used in Relation to the Copyrighted Work as
a Whole
As a preliminary matter, the district court held that its determination that The SAT
is substantially similar to Seinfeld "`should suffice for a determination that the third
fair use factor favors the plaintiff.'" Castle Rock, 955 F.Supp. at 269-70 (quoting
Twin Peaks, 996 F.2d at 1377). However, because secondary users need invoke the
fair use defense only where there is substantial similarity between the original and
allegedly infringing works, and thus actionable copying, the district court's analysis
is of little if any assistance. Under the district court's analysis, the third fair use
factor would always and unfairly favor the original copyright owner claiming no
fair use. [ … ]
In Campbell, a decision post-dating Twin Peaks, the Supreme Court clarified that
the third factor — the amount and substantiality of the portion of the copyrighted
work used — must be examined in context. The inquiry must focus upon whether
"[t]he extent of ... copying" is consistent with or more than necessary to further "the
purpose and character of the use." 510 U.S. at 586-87, 114 S.Ct. 1164; see Sony
Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 449-50, 104 S.Ct.
ChapterNumber:
380
774, 78 L.Ed.2d 574 (1984) (reproduction of entire work "does not have its
ordinary effect of militating against a finding of fair use" as to home videotaping of
television programs); Harper & Row, 471 U.S. at 564, 105 S.Ct. 2218 ("[E]ven
substantial quotations might qualify as fair use in a review of a published work or a
news account of a speech" but not in a scoop of a soon-to-be-published memoir.).
"[B]y focussing [sic] on the amount and substantiality of the original work used by
the secondary user, we gain insight into the purpose and character of the use as we
consider whether the quantity of the material used was reasonable in relation to the
purpose of the copying." Texaco, 60 F.3d at 926 (quotation marks omitted). In
Campbell, for example, the Supreme Court determined that a "parody must be able
to `conjure up' at least enough of [the] original [work] to make the object of its
critical wit recognizable" and then determined whether the amount used of the
original work was "no more than necessary" to satisfy the purpose of parody. 510
U.S. at 588-89, 114 S.Ct. 1164.
In the instant case, it could be argued that The SAT could not expose Seinfeld's
"nothingness" without repeated, indeed exhaustive examples deconstructing
Seinfeld's humor, thereby emphasizing Seinfeld's meaninglessness to The SAT's
readers. That The SAT posed as many as 643 trivia questions to make this rather
straightforward point, however, suggests that The SAT's purpose was entertainment,
not commentary. Such an argument has not been advanced on appeal, but if it had
been, it would not disturb our conclusion that, under any fair reading, The SAT does
not serve a critical or otherwise transformative purpose. Accordingly, the third
factor weighs against fair use.
Effect of Use Upon Potential Market for or

Value of Copyrighted Work
Defendants claim that the fourth factor favors their case for fair use because Castle
Rock has offered no proof of actual market harm to Seinfeld caused by The SAT. To
the contrary, Seinfeld's audience grew after publication of The SAT, and Castle
Rock has evidenced no interest in publishing Seinfeld [145] trivia quiz books and
only minimal interest in publishing Seinfeld-related books.
The Supreme Court has recently retreated from its earlier cases suggesting that the
fourth statutory factor is the most important element of fair use, see Harper & Row,
471 U.S. at 566, 105 S.Ct. 2218, recognizing instead that "[a]ll [factors] are to be
explored, and the results weighed together, in light of the purposes of copyright,"
Campbell, 510 U.S. at 578, 114 S.Ct. 1164; see Texaco, 60 F.3d at 926 (applying
Campbell approach). Under this factor, we "consider not only the extent of market
harm caused by the particular actions of the alleged infringer, but also whether
unrestricted and widespread conduct of the sort engaged in by the defendant ...
would result in a substantially adverse impact on the potential market for the
original." [ … ]The fourth factor must also "take account ... of harm to the market
for derivative works," id., defined as those markets "that creators of original works
would in general develop or license others to develop," id. at 592, 114 S.Ct. 1164.
In considering the fourth factor, our concern is not whether the secondary use
suppresses or even destroys the market for the original work or its potential
derivatives, but whether the secondary use usurps or substitutes for the market of
the original work. Id. at 593, 114 S.Ct. 1164. The more transformative the
381
secondary use, the less likelihood that the secondary use substitutes for the original.
Id. at 591, 114 S.Ct. 1164. As noted by the district court, "[b]y the very nature of
[transformative] endeavors, persons other than the copyright holder are undoubtedly
better equipped, and more likely, to fill these particular market and intellectual
niches." Castle Rock, 955 F.Supp. at 271. And yet the fair use, being
transformative, might well harm, or even destroy, the market for the original. See
Campbell, 510 U.S. at 591-92, 114 S.Ct. 1164 ("[A] lethal parody, like a scathing
theater review, kills demand for the original, [but] does not produce a harm
cognizable under the Copyright Act."); New Era Publications, 904 F.2d at 160 ("a
critical biography serves a different function than does an authorized, favorable
biography, and thus injury to the potential market for the favorable biography by
the publication of the unfavorable biography does not affect application of factor
four"). [10]
Unlike parody, criticism, scholarship, news reporting, or other transformative uses,

The SAT substitutes for a derivative market that a television program copyright
owner such as Castle Rock "would in general develop or license others to develop."
Campbell, 510 U.S. at 592, 114 S.Ct. 1164. [11] Because The SAT borrows
exclusively from Seinfeld and not from any other television or entertainment
programs, The SAT is likely to fill a market niche that Castle Rock would in general
develop. Moreover, as noted by the district court, this "Seinfeld trivia game is not
critical of the program, nor does it parody the program; if anything, SAT pays
homage to Seinfeld." Castle Rock, 955 F.Supp. at 271-72. Although Castle Rock has
evidenced little if any interest in exploiting this market for derivative works based
on Seinfeld, such as by creating and publishing Seinfeld trivia books (or at least
trivia books that endeavor to "satisfy" the "between-episode [146] cravings" of
Seinfeld lovers), the copyright law must respect that creative and economic choice.
"It would ... not serve the ends of the Copyright Act — i.e., to advance the arts — if
artists were denied their monopoly over derivative versions of their creative works
merely because they made the artistic decision not to saturate those markets with
variations of their original." Castle Rock, 955 F.Supp. at 272; see Salinger, 811
F.2d at 99 ("The need to assess the effect on the market for Salinger's letters is not
lessened by the fact that their author has disavowed any intention to publish them
during his lifetime."). The fourth statutory factor therefore favors Castle Rock.
Other Factors
As we have noted, the four statutory fair use factors are non-exclusive and serve
only as a guide to promote the purposes underlying the copyright law. One factor
that is of no relevance to the fair use equation, however, is defendants' continued
distribution of The SAT after Castle Rock notified defendants of its copyright
infringement claim, because "[i]f the use is otherwise fair, then no permission need
be sought or granted.... [B]eing denied permission to use a work does not weigh
against a finding of fair use." [ … ]
We also note that free speech and public interest considerations are of little
relevance in this case, which concerns garden-variety infringement of creative
fictional works. See 4 Nimmer § 13.05[B][4], at 13-205 ("The public interest is also
a factor that continually informs the fair use analysis."); cf. Time Inc. v. Bernard
Geis Assocs., 293 F.Supp. 130, 146 (S.D.N.Y.1968) (discussing importance of
ChapterNumber:
382
access to information about President Kennedy assassination in fair use analysis of

home video of assassination).
Aggregate Assessment
Considering all of the factors discussed above, we conclude that the copyright law's
objective "[t]o promote the Progress of Science and useful Arts" would be
undermined by permitting The SAT's copying of Seinfeld, see Arica, 970 F.2d at
1077, and we therefore reject defendants' fair use defense. Finally, we note that
defendants do not assert that Castle Rock abandoned, forfeited, or misused
copyrights in Seinfeld, and that defendants have asserted no defense on appeal other
than that of fair use.
Conclusion
[…]

9.1.4
Sony Computer Entertainment, Inc. v. Connectix

Corp.


203 F.3d 596
No. 99-15852
2000-02-10
203 F.3d 596 (9th Cir. 2000)
SONY COMPUTER ENTERTAINMENT,

INC.[ … ]
v.
CONNECTIX CORPORATION [ … ]
CANBY, Circuit Judge:
[…]
I. Background
383
A. The products
Sony is the developer, manufacturer and distributor of both the Sony PlayStation
and Sony PlayStation games. Sony also licenses other companies to make games
that can play on the PlayStation. The PlayStation system consists of a console
(essentially a mini-computer), controllers, and software that produce a three-
dimensional game for play on a television set. The PlayStation games are CDs that
load into the top of the console. The PlayStation console contains both (1) hardware
components and (2) software known as firmware that is written onto a read-only
memory (ROM) chip. The firmware is the Sony BIOS. Sony has a copyright on the
BIOS. It has claimed no patent relevant to this proceeding on any component of the
PlayStation. PlayStation is a registered trademark of Sony.
Connectix's Virtual Game Station is software that "emulates" the functioning of the
PlayStation console. That is, a consumer can load the Virtual Game Station
software onto a computer, load a PlayStation game into the computer's CDROM
drive, and play the PlayStation game. The Virtual Game Station software thus
emulates both the hardware and firmware components of the Sony console. The
Virtual Game Station does not play PlayStation games as well as Sony's PlayStation
does. At the time of the injunction, Connectix had marketed its Virtual Game
Station for Macintosh computer systems but had not yet completed Virtual Game
Station software for Windows.
B. Reverse engineering
Copyrighted software ordinarily contains both copyrighted and unprotected or
functional elements. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1520 (9th
Cir. 1993) (amended opinion)[ … ]. Software engineers designing a product that
must be compatible with a copyrighted product frequently must "reverse engineer"
the copyrighted product to gain access to the functional elements of the copyrighted
product.[ … ]
Reverse engineering encompasses several methods of gaining access to the

functional elements of a software program. They include: (1) reading about the
program; (2) observing "the program in operation by using it on a computer;" (3)
performing a "static examination of the individual computer instructions contained
within the program;" and (4) performing a "dynamic examination of the individual
computer instructions as the program is being run on a computer." [ … ]Method (1)
is the least effective, because individual software manuals often misdescribe the
real product. See id. It would be particularly ineffective in this case because Sony
does not make such information available about its PlayStation. Methods (2), (3),
and (4) require that the person seeking access load the target program on to a
computer, an operation that necessarily involves copying the copyrighted program
into the computer's random access memory or RAM. [1]
Method (2), observation of a program, can take several forms. The functional
elements of some software programs, for example word processing programs,
spreadsheets, and video game displays may be discernible by observation of the
computer screen. [ … ]Of course, the reverse engineer in such a situation is not
observing the object code itself, [2] only the external visual expression of this code's
ChapterNumber:
384
operation on the computer. Here, the software program is copied each time the
engineer boots up the computer, and the computer copies the program into RAM.
Other forms of observation are more intrusive. Operations systems, system interface
procedures, and other programs like the Sony BIOS are not visible to the user when
they are operating. [ … ] One method of "observing" the operation of these
programs is to run the program in an emulated environment. In the case of the Sony
BIOS, this meant operating the BIOS on a computer with software that simulated
the operation of the PlayStation hardware; operation of the program, in conjunction
with another program known as a "debugger," permitted the engineers to observe
the signals sent between the BIOS and other programs on the computer. This latter
method required copying the Sony BIOS from a chip in the PlayStation onto the
computer. The Sony BIOS was copied again each time the engineers booted up their
computer and the computer copied the program into RAM. All of this copying was
intermediate; that is, none of the Sony copyrighted material was copied into, or
appeared in, Connectix's final product, the Virtual Game Station.
Methods (3) and (4) constitute "disassembly" of object code into source code. [3] In
each case, engineers use a program known as a "dissassembler" to translate the ones
and zeros of binary machine-readable object code into the words and mathematical
symbols of source code. This translated source code is similar to the source code
used originally to create the object code [4] but lacks the annotations drafted by the
authors of the program that help explain the functioning of the source code. In a
static examination of the computer instructions, method (3), the engineer
disassembles the object code of all or part of the program. The program must
generally be copied one or more times to perform disassembly. In a dynamic
examination of the computer instructions, method (4), the engineer uses the
disassembler program to disassemble parts of the program, one instruction at a
time, while the program is running. This method also requires copying [601] the
program and, depending on the number of times this operation is performed, may
require additional copying of the program into RAM every time the computer is
booted up.
C. Connectix's reverse engineering of the

Sony BIOS
Connectix began developing the Virtual Game Station for Macintosh on about July
1, 1998. In order to develop a PlayStation emulator, Connectix needed to emulate
both the PlayStation hardware and the firmware (the Sony BIOS).
Connectix first decided to emulate the PlayStation's hardware. In order to do so,

Connectix engineers purchased a Sony PlayStation console and extracted the Sony
BIOS from a chip inside the console. Connectix engineers then copied the Sony
BIOS into the RAM of their computers and observed the functioning of the Sony
BIOS in conjunction with the Virtual Game Station hardware emulation software as
that hardware emulation software was being developed by Connectix. The engineers
observed the operation of the Sony BIOS through use of a debugging program that
permitted the engineers to observe the signals sent between the BIOS and the
hardware emulation software. During this process, Connectix engineers made
additional copies of the Sony BIOS every time they booted up their computer and
the Sony BIOS was loaded into RAM.
385
Once they had developed the hardware emulation software, Connectix engineers
also used the Sony BIOS to "debug" the emulation software. In doing so, they
repeatedly copied and disassembled discrete portions of the Sony BIOS.
Connectix also used the Sony BIOS to begin development of the Virtual Game
Station for Windows. Specifically, they made daily copies to RAM of the Sony
BIOS and used the Sony BIOS to develop certain Windows-specific systems for the
Virtual Game Station for Windows. Although Connectix had its own BIOS at the
time, Connectix engineers used the Sony BIOS because it contained CD-ROM code
that the Connectix BIOS did not contain.
Early in the development process, Connectix engineer Aaron Giles disassembled a

copy of the entire Sony BIOS that he had downloaded from the Internet. He did so
for the purpose of testing a "disassembler" program he had written. The print-out of
the source code was not used to develop the Virtual Game Station emulator.
Connectix engineers initially used this copy of the Sony BIOS to begin the reverse
engineering process, but abandoned it after realizing that it was a Japanese-
language version.
During development of the Virtual Game Station, Connectix contacted Sony and
requested "technical assistance" from Sony to complete the development of the
Virtual Game Station. Connectix and Sony representatives met during September
1998. Sony declined Connectix's request for assistance.
Connectix completed Virtual Game Station for Macintosh computers in late

December 1998 or early January 1999. Connectix announced its new product at the
MacWorld Expo on January 5, 1999. At MacWorld, Connectix marketed the Virtual
Game Station as a "PlayStation emulator." The materials stated that the Virtual
Game Station permits users to play "their favorite Playstation games" on a
computer "even if you don't yet have a Sony PlayStation console."
D. Procedural history
On January 27, 1999, Sony filed a complaint alleging copyright infringement and
other causes of action against Connectix. Sony subsequently moved for a
preliminary injunction on the grounds of copyright and trademark infringement.
The district court granted the motion, enjoining Connectix: (1) from copying or
using the Sony BIOS code in the development of the Virtual Game Station for
Windows; and (2) from selling the Virtual Game Station for Macintosh or the
Virtual Game [602] Station for Windows. Order on Mot. for Prelim. Inj. at 27. The
district court also impounded all Connectix's copies of the Sony BIOS and all
copies of works based upon or incorporating Sony BIOS. Id. at 27-28. Connectix
now appeals from this order.
II. Discussion
To prevail on its motion for injunctive relief, Sony was required to demonstrate
"either a likelihood of success on the merits and the possibility of irreparable injury
or that serious questions going to the merits were raised and the balance of the
hardships tip sharply in its favor." [ … ] We reverse the grant of a preliminary
ChapterNumber:
386
injunction only when "the district court abused its discretion or based its decision
on an erroneous legal standard or on clearly erroneous findings of fact." [ … ] We
review the scope of injunctive relief for an abuse of discretion. [ … ]
In Sega, we recognized that intermediate copying could constitute copyright [603]

infringement even when the end product did not itself contain copyrighted material.
Id. at 1518-19. But this copying nonetheless could be protected as a fair use if it
was "necessary" to gain access to the functional elements of the software itself. Id.
at 1524-26. We drew this distinction because the Copyright Act protects expression
only, not ideas or the functional aspects of a software program. [ … ]We also
recognized that, in the case of computer programs, this idea/expression distinction
poses "unique problems" because computer programs are "in essence, utilitarian
articles — articles that accomplish tasks. As such, they contain many logical,
structural, and visual display elements that are dictated by the function to be
performed, by considerations of efficiency, or by external factors such as
compatibility requirements and industry demands." Id. Thus, the fair use doctrine
preserves public access to the ideas and functional elements embedded in
copyrighted computer software programs. This approach is consistent with the
"'ultimate aim [of the Copyright Act], to stimulate artistic creativity for the general
public good.'"[ … ]
We turn then to the statutory fair use factors, as informed by our precedent in Sega.
1. Nature of the copyrighted work

Under our analysis of the second statutory factor, nature of the copyrighted work,
we recognize that "some works are closer to the core of intended copyright
protection than others." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 586
(1994). Sony's BIOS lies at a distance from the core because it contains unprotected
aspects that cannot be examined without copying. See Sega, 977 F.2d at 1526. We
consequently accord it a "lower degree of protection than more traditional literary
works." Id. As we have applied this standard, Connectix's copying of the Sony
BIOS must have been "necessary" to have been fair use. See id. at 1524-26. We
conclude that it was.
There is no question that the Sony BIOS contains unprotected functional elements.
Nor is it disputed that Connectix could not gain access to these unprotected
functional elements without copying the Sony BIOS. Sony admits that little
technical information about the functionality of the Sony BIOS is publicly
available. The Sony BIOS is an internal operating system that does not produce a
screen display to reflect its functioning. Consequently, if Connectix was to gain
access to the functional elements of the Sony BIOS it had to be through a form of
reverse engineering that required copying the Sony BIOS onto a computer. [ … ] Sony
does not dispute this proposition.
The question then becomes whether the methods by which Connectix reverse-
engineered the Sony BIOS were necessary to gain access to the unprotected
functional elements within the program. We conclude that they were. Connectix
employed several methods of reverse engineering (observation and observation with
partial disassembly) each of which required Connectix to make intermediate copies
of copyrighted material. Neither of these methods renders fair use protection
inapplicable. Sega expressly sanctioned [604] disassembly.[ … ] We see no reason
387
to distinguish observation of copyrighted software in an emulated computer

environment. Both methods require the reverse engineer to copy protected as well
as unprotected elements of the computer program. Because this intermediate
copying is the gravamen of the intermediate infringement claim, [ … ] and both
methods of reverse engineering require it, we find no reason inherent in these
methods to prefer one to another as a matter of copyright law. Connectix presented
evidence that it observed the Sony BIOS in an emulated environment to observe the
functional aspects of the Sony BIOS. When this method of reverse engineering was
unsuccessful, Connectix engineers disassembled discrete portions of the Sony BIOS
to view directly the ideas contained therein. We conclude that intermediate copying
in this manner was "necessary" within the meaning of Sega.
We decline to follow the approach taken by the district court. The district court did
not focus on whether Connectix's copying of the Sony BIOS was necessary for
access to functional elements. Instead, it found that Connectix's copying and use of
the Sony BIOS to develop its own software exceeded the scope of Sega. [ … ] This
rationale is unpersuasive. It is true that Sega referred to "studying or examining the
unprotected aspects of a copyrighted computer program." [ … ]But in Sega,
Accolade's copying, observation and disassembly of Sega's game cartridges was
held to be fair use, even though Accolade "loaded the disassembled code back into
a computer, and experimented to discover the interface specifications for the
Genesis console by modifying the programs and studying the results." [ … ]Thus,
the distinction between "studying" and "use" is unsupported in Sega. Moreover,
reverse engineering is a technically complex, frequently iterative process. [ … ]
Within the limited context of a claim of intermediate infringement, we find the
semantic distinction between "studying" and "use" to be artificial, and decline to
adopt it for purposes of determining fair use. [7]
We also reject the argument, urged by Sony, that Connectix infringed the Sony
copyright by repeatedly observing the Sony BIOS in an emulated environment,
thereby making repeated copies of the Sony BIOS. These intermediate copies could
not have been "necessary" under Sega, contends Sony, because Connectix engineers
could have disassembled the entire Sony BIOS first, then written their own
Connectix BIOS, and used the Connectix BIOS to develop the Virtual Game Station
hardware emulation software. We accept Sony's factual predicate for the limited
purpose of this appeal. [8] Our doing so, however, does not aid Sony.
[605] Sony contends that Connectix's reverse engineering of the Sony BIOS should
be considered unnecessary on the rationale that Connectix's decision to observe the
Sony BIOS in an emulated environment required Connectix to make more
intermediate copies of the Sony BIOS than if Connectix had performed a complete
disassembly of the program. Under this logic, at least some of the intermediate
copies were not necessary within the meaning of Sega. This construction stretches
Sega too far. The "necessity" we addressed in Sega was the necessity of the method,
i.e., disassembly, not the necessity of the number of times that method was applied.
See 977 F.2d at 1524-26. In any event, the interpretation advanced by Sony would
be a poor criterion for fair use. Most of the intermediate copies of the Sony BIOS
were made by Connectix engineers when they booted up their computers and the
Sony BIOS was copied into RAM. But if Connectix engineers had left their
computers turned on throughout the period during which they were observing the
Sony BIOS in an emulated environment, they would have made far fewer
intermediate copies of the Sony BIOS (perhaps as few as one per computer). Even
if we were inclined to supervise the engineering solutions of software companies in
ChapterNumber:
388
minute detail, and we are not, our application of the copyright law would not turn
on such a distinction. [9] Such a rule could be easily manipulated. More important,
the rule urged by Sony would require that a software engineer, faced with two
engineering solutions that each require intermediate copying of protected and
unprotected material, often follow the least efficient solution. (In cases in which the
solution that required the fewest number of intermediate copies was also the most
efficient, an engineer would pursue it, presumably, without our urging.) This is
precisely the kind of "wasted effort that the proscription against the copyright of
ideas and facts . . . [is] designed to prevent." Feist Publications, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 354 (1991) (internal quotation marks omitted). Such an
approach would erect an artificial hurdle in the way of the public's access to the
ideas contained within copyrighted software programs. These are "aspects that were
expressly denied copyright protection by Congress." Sega, 977 F.2d at 1526 (citing
17 U.S.C. S 102(b)). We decline to erect such a barrier in this case. If Sony wishes
to obtain a lawful monopoly on the functional concepts in its software, it must
satisfy the more stringent standards of the patent laws. See Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 160-61 (1989); Sega, 977 F.2d at 1526.
This Sony has not done. The second statutory factor strongly favors Connectix.
2. Amount and substantiality of the portion

used
With respect to the third statutory factor, amount and substantiality of the portion
[606] used in relation to the copyrighted work as a whole, Connectix disassembled
parts of the Sony BIOS and copied the entire Sony BIOS multiple times. This factor
therefore weighs against Connectix. But as we concluded in Sega, in a case of
intermediate infringement when the final product does not itself contain infringing
material, this factor is of "very little weight." [ … ]
3. Purpose and character of the use

Under the first factor, purpose and character of the use, we inquire into whether
Connectix's Virtual Game Station merely supersedes the objects of the original cre
ation, or instead adds something new, with a further purpose or different character,
altering the first with new expression, meaning, or message; it asks, in other words,
whether and to what extent the new work is "transformative."
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) (internal quotation
marks and citations omitted). As an initial matter, we conclude that the district
court applied an erroneous legal standard; the district court held that Connectix's
commercial purpose in copying the Sony BIOS gave rise to a "presumption of
unfairness that . . . can be rebutted by the characteristics of a particular commercial
use." Order at 14-15 (citing Sega, 977 F.2d at 1522). Since Sega, however, the
Supreme Court has rejected this presumption as applied to the first and fourth factor
of the fair use analysis. Acuff-Rose, 510 U.S. at 584, 594 (clarifying Sony, 464
U.S. at 451). Instead, the fact that Connectix's copying of the Sony BIOS was for a
commercial purpose is only a "separate factor that tends to weigh against a finding
of fair use." Id. at 585 (internal quotation marks omitted). [10]
389
We find that Connectix's Virtual Game Station is modestly transformative. The

product creates a new platform, the personal computer, on which consumers can
play games designed for the Sony PlayStation. This innovation affords
opportunities for game play in new environments, specifically anywhere a Sony
PlayStation console and television are not available, but a computer with a CD-
ROM drive is. More important, the Virtual Game Station itself is a wholly new
product, notwithstanding the similarity of uses and functions between the Sony
PlayStation and the Virtual Game Station. The expressive element of software lies
as much in the organization and structure of the object code that runs the computer
as it does in the visual expression of that code that appears on a computer screen.
See 17 U.S.C. S 102(a) (extending copyright protection to original works of
authorship that "can be perceived, reproduced, or otherwise communicated, either
directly or with the aid of a machine or device"). Sony does not claim that the
Virtual Game Station itself contains object code that infringes Sony's copyright. We
are therefore at a loss to see how Connectix's drafting of entirely new object code
for its VGS [607] program could not be transformative, despite the similarities in
function and screen output.
Finally, we must weigh the extent of any transformation in Connectix's Virtual

Game Station against the significance of other factors, including commercialism,
that militate against fair use. See Acuff-Rose, 510 U.S. at 579. Connectix's
commercial use of the copyrighted material was an intermediate one, and thus was
only "indirect or derivative." Sega, 977 F.2d at 1522. Moreover, Connectix reverse-
engineered the Sony BIOS to produce a product that would be compatible with
games designed for the Sony PlayStation. We have recognized this purpose as a
legitimate one under the first factor of the fair use analysis. See id. Upon weighing
these factors, we find that the first factor favors Connectix.
The district court ruled, however, that the Virtual Game Station was not
transformative on the rationale that a computer screen and a television screen are
interchangeable, and the Connectix product therefore merely "supplants" the Sony
PlayStation console. Order at 15. The district court clearly erred. For the reasons
stated above, the Virtual Game Station is transformative and does not merely
supplant the PlayStation console. In reaching its decision, the district court
apparently failed to consider the expressive nature of the Virtual Game Station
software itself. Sony's reliance on Infinity Broadcast Corp. v. Kirkwood, 150 F.3d
104 (2d Cir. 1998), suffers from the same defect. The Infinity court reasoned that a
"change of format, though useful, is not technically a transformation." Id. at 108
n.2. But the infringing party in that case was merely taking copyrighted radio
transmissions and retransmitting them over telephone lines; there was no new
expression. Id. at 108. Infinity does not change our conclusion; the purpose and
character of Connectix's copying points toward fair use.
4. Effect of the use upon the potential market

We also find that the fourth factor, effect of the use upon the potential market,
favors Connectix. Under this factor, we consider
not only the extent of market harm caused by the particular actions of the
alleged infringer, but also "whether unrestricted and widespread conduct
ChapterNumber:
390
of the sort engaged in by the defendant . . . would result in a substantially

adverse impact on the potential market" for the original.
Acuff-Rose, 510 U.S. at 590[ … ]. Whereas a work that merely supplants or

supersedes another is likely to cause a substantially adverse impact on the potential
market of the original, a transformative work is less likely to do so. [ … ]
The district court found that "[t]o the extent that such a substitution [of Connectix's
Virtual Game Station for Sony PlayStation console] occurs, Sony will lose console
sales and profits." Order at 19. We recognize that this may be so. But because the
Virtual Game Station is transformative, and does not merely supplant the
PlayStation console, the Virtual Game Station is a legitimate competitor in the
market for platforms on which Sony and Sony-licensed games can be played. See
Sega, 977 F.2d at 1522-23. For this reason, some economic loss by Sony as a result
of this competition does not compel a finding of no fair use. Sony understandably
seeks control over the market for devices that play games Sony produces or
licenses. The copyright law, however, does not confer such a monopoly. See id. at
1523-24 ("[A]n attempt to monopolize the market by making it impossible for
others to compete runs counter to the statutory purpose of promoting creative [608]
expression and cannot constitute a strong equitable basis for resisting the invocation
of the fair use doctrine."). This factor favors Connectix.
The four statutory fair use factors must be "weighed together, in light of the
purposes of copyright." Acuff-Rose, 510 U.S. at 578. Here, three of the factors
favor Connectix; one favors Sony, and it is of little weight. Of course, the statutory
factors are not exclusive, Harper & Row, 471 U.S. at 560, but we are unaware of
other factors not already considered that would affect our analysis. Accordingly, we
conclude that Connectix's intermediate copying of the Sony BIOS during the course
of its reverse engineering of that product was a fair use under 17 U.S.C. S 107, as a
matter of law. With respect to its claim of copyright infringement, Sony has not
established either a likelihood of success on the merits or that the balance of
hardships tips in its favor. [ … ] Accordingly, we need not address defenses
asserted by Connectix under 17 U.S.C. S 117(a)(1) and our doctrine of copyright
misuse. We reverse the district court's grant of a preliminary injunction on the
ground of copyright infringement. [11]
[…]
REVERSED AND REMANDED.
[1] Any purchaser of a copyrighted software program must copy the program into
the memory of a computer in order to make any use at all of the program. For that
reason, 17 U.S.C. S 117(a)(1) provides that it shall not be an infringement for one
who owns a software copy to make another copy "created as an essential step in the
utilization of the computer program in conjunction with a machine and that it is
used in no other manner." Connectix contends that its copying is within the
protection of section 117, but our disposition of the fair use issue makes it
unnecessary for us to address that contention. See Sega, 977 F.2d at 1517-18
(rejecting contention that disassembly is protected by section 117).
[2] Object code is binary code, consisting of a series of the numerals zero and one,
readable only by computers.
391
[3] Source code is readable by software engineers, but not by computers.
[4] Software is generally written by programmers in source code (and in other more
conceptual formats) and then assembled into object code.
[5] The factors for determining fair use include:
copyrighted work.
17 U.S.C. S 107.
[6] Connectix offers evidence that it attempted to gain access to the functionality of
the Sony BIOS by attaching a "logic analyzer" to the input and output leads of the
chip on which the Sony BIOS was located within the PlayStation console. This
form of observation does not appear to require the making of an intermediate copy,
but was of limited value because it permitted the observation of inter-chip, but not
intra-chip signals. Sony does not suggest that this form of observation alone would
have permitted Connectix engineers to gain access to the functional elements of the
Sony BIOS.
[7] We are unable to locate evidence in the record to support the district court's
finding that Connectix "gradually convert[ed] Sony's code to their own code,"
Order at 11, if by this statement the court meant that Connectix engineers failed to
create an original work. True, Connectix engineers admitted to combining the Sony
BIOS with the Virtual Game Station hardware emulation software to test and
develop the hardware emulation software. But in drafting the Connectix BIOS,
Connectix engineers never claimed to do anything other than write their own code,
even though they used, observed, copied and sometimes disassembled the Sony
BIOS as they did so. Sony presents no evidence to the contrary, nor does Sony
contend that Connectix's final product contains infringing material.
[8] The depositions of Connectix engineers Aaron Giles and Eric Traut suggest that
Connectix engineers recognized that other engineering solutions were sometimes
available.
With respect to the observation of the Sony BIOS in an emulated environment,

Traut admitted that it was easier to use the Sony BIOS to develop the hardware
emulation software than to develop Connectix own BIOS first, and then use the
Connectix BIOS to develop the hardware emulation software.
With respect to the observation of the Sony BIOS with selective disassembly of the
code, Traut stated with respect to one bug that there would have been no way to fix
the bug without disassembling a portion of the Sony BIOS. He also stated that at
other times he disassembled portions of the Sony BIOS when doing so was "the
most efficient way of finding that bug." In a subsequent question, he clarified that
disassembly was not the only way to fix the bug, just the fastest way to do so.
ChapterNumber:
392
With respect to Connectix's observation of the Sony BIOS in the development of

the Virtual Game Station for Windows, other solutions, presumably disassembly,
may have been possible. Connectix engineer Giles responded "I don't know" when
asked by Sony counsel if "it would have been possible to write the CD-ROM code
before building the emulator."
[9] Sony relies on these RAM copies for its contention, which we reject, that there
is no significant difference between the facts of this case and our decisions in Triad
Systems Corp. v. Southeastern Express Co., 64 F.3d 1330 (9th Cir. 1995) and MAI
Systems Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993). Those cases
are inapposite to our fair use analysis. Neither involved reverse engineering of
software to gain access to unprotected functional elements.
[10] Sony points to Micro Star v. Formgen, Inc., 154 F.3d 1107 (9th Cir. 1998), for
the proposition that commercial use creates a presumption of unfairness. See id. at
1113 (quoting Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 451
(1984)). We do not read Micro Star that way; moreover, such a reading would be
contrary to Acuff-Rose. AcuffRose expressly rejected such a "hard evidentiary
presumption" and stated that the Court of Appeals "erred" by giving such
dispositive weight to the commercial nature of the use. 510 U.S. at 584. Also,
Micro Star itself involved a use that was non-transformative, which is not the case
here. See Micro Star, 154 F.3d at 1113 & n.6. Cf. American Geophysical Union v.
Texaco, Inc., 60 F.3d 913, 921-22 (2d Cir. 1995) (amended opinion) (rejecting, on
grounds of Acuff-Rose and collected cases, presumption of unfairness for
commercial use as applied to Texaco's intermediate copying of copyrighted
articles).
[11] We do not accept Sony's argument that the downloading of Sony's BIOS from
the Internet was itself an infringement justifying the injunction. The evidence of
record suggests that the downloaded BIOS played a minimal role, if any, in
development of the Virtual Game Station. We conclude that, on this record, the
downloading infringement, if such it was, would not justify our upholding the
injunction on the development and sale of the Virtual Game Station. The Virtual
Game Station itself infringes no copyright. Bearing in mind the goals of the
copyright law, "to stimulate artistic creativity for the general public good," Sony,
464 U.S. at 432 (internal quotation marks omitted), we conclude that there is a
legitimate public interest in the publication of Connectix's software, and that this
interest is not overborne by the record evidence related to the downloaded BIOS.
The imposition of an injunction is discretionary. See 17 U.S.C. S 502(a). On this
record, we conclude that it would be inappropriate to uphold the injunction because
of Connectix's copying and use of the downloaded Sony BIOS; damages would
adequately protect Sony's interest with respect to that alleged infringement. See
Acuff-Rose, 510 U.S. at 578 n.10 (discussing factors to be evaluated in deciding
whether to enjoin product found to have exceeded bounds of fair use).

9.1.5

393

508 F.3d 1146
Nos. 06-55405, 06-55406, 06-55425, 06-55759, 06-
55854, 06-55877
2007-12-03
508 F.3d 1146
v.
AMAZON.COM, INC., a corporation; A9.Com Inc., a
corporation, Defendants-Appellees.
Perfect 10, Inc., a California corporation, Plaintiff-
Appellant,
v.
Google Inc., a corporation, Defendant-Appellee.
Appellee,
v.
Google Inc., a corporation, Defendant-Appellant.
Appellant,
v.
Appellee,
v.
Appellee,
v.
No. 06-55405.
No. 06-55406.
ChapterNumber:
394
No. 06-55425.
No. 06-55759.
No. 06-55854.
No. 06-55877.
Filed May 16, 2007.
[1153] Russell J. Frackman and Jeffrey D. Goldman, Mitchell, Silberberg & Knupp
LLP, Los Angeles, CA, Jeffrey N. Mausner, Berman, Mausner & Resser, Los
Angeles, CA, Daniel J. Cooper, Perfect 10, Inc., Beverly Hills, CA, for plaintiff-
appellant Perfect 10, Inc.
Andrew P. Bridges and Jennifer A. Golinveaux, Winston & Strawn LLP, San
Francisco, CA, Gene C. Schaerr, Winston & Strawn LLP, Washington, DC, for
defendant-appellee and cross-appellant Google Inc.
Mark T. Jansen & Anthony J. Malutta, Townsend and Townsend and Crew LLP,
San Francisco, CA, for defendants-appellees Amazon.com and A9.com, Inc.
Fred von Lohmann, Electronic Frontier Foundation, San Francisco, CA, for amicus
curiae Electronic Frontier Foundation, American Library Association, Medical
Library [1154] Association, American Association of Law Libraries, Association of
Research Libraries, and Special Libraries Association in support of Google Inc.
Victor S. Perlman, of counsel, American Society of Media Photographers; Nancy E.

Wolff, of counsel, Cowan, DeBaets, Abrahams & Sheppard, LLP; Robert W.
Clarida and Jason D. Sanders, Cowan, Liebowitz & Latman, P.C., New York, NY,
for amicus curiae American Society of Media Photographers, Inc., Picture Archive
Council of America, Inc., British Association of Picture Libraries and Agencies,
Inc., Stock Artists Alliance, The Graphic Artists Guild, American Society of Picture
Professionals and National Press Photographers, in support of Perfect 10 on issue of
Google's liability for the display of full-size images.
Eric J. Schwartz and Steven J. Metalitz, Smith & Metalitz LLP, Washington, DC,
for amicus curiae Motion Picture Association of America, Inc. in support of Perfect
10.
Jonathan Band, Jonathan Band PLLC, Washington, DC, for amicus curiae Net-
Coalition, Computer and Communications Industry Association, U.S. Internet
Service Provider Association, Consumer Electronics Association, Home Recording
Rights Coalition, Information Technology Association of America, and Internet
Commerce Coalition in support of Google Inc.
Kenneth L. Doroshow and Linda J. Zirkelbach, Recording Industry Association of

America, Washington, DC; Jacqueline C. Charlesworth, National Music Publishers'
Association, Washington, DC; Robert W. Clarida, Richard S. Mandel and Jonathan
Z. King, Cowan, Liebowitz & Latman, P.C., New York, NY, for amicus curiae
395
Recording Industry Association of America and National Music Publishers'

Association in support of neither party.
Appeal from the United States District Court for the Central District of California;
A. Howard Matz, District Judge, Presiding. D.C. Nos. CV-05-04753-AHM, CV-04-
09484-AHM.
Before: CYNTHIA HOLCOMB HALL, HAWKINS, and SANDRA S. IKUTA,

Circuit Judges.

Background
networks ... all sharing a common communications technology." Religious Tech.
Ctr. v. Netcom On-Line Commc'n Servs., Inc., 923 F.Supp. 1231, 1238 n. 1
(N.D.Cal.1995). Computer owners can provide information stored on their
computers to other users connected to the Internet through a medium called a
webpage. A webpage consists of text interspersed with instructions written in
Hypertext Markup Language ("HTML") that is stored in a computer. No images are
stored on a webpage; rather, the HTML instructions on the webpage provide an
address for where the images are stored, whether in the webpage publisher's
computer or some other computer. In general, webpages are publicly available and
can be accessed by computers connected to the Internet through the use of a web
browser.

ChapterNumber:
396
infringing image.
397

with Google.

back to its users.
webpage.
ChapterNumber:
398
II
Standard of Review
abuse of discretion. A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th
Cir.2001). The district court must support a preliminary injunction with findings of
fact, which we review for clear error. Earth Island Inst. v. U.S. Forest Serv., 442
F.3d 1147, 1156 (9th Cir.2006). We review the district court's conclusions of law
de novo. Napster, 239 F.3d at 1013.
affirmative defense will succeed. Gonzales v. O Centro Espirita Beneficente Uniao
do Vegetal, 546 U.S. 418, 429, 126 S.Ct. 1211, 163 L.Ed.2d 1017 (2006); see also
Abbott Labs. v. Andrx Pharms., Inc., 473 F.3d 1196, 1201 (Fed. Cir.2007) (to defeat
a motion for preliminary injunctive relief in a patent infringement case, the non-
moving party must establish a likelihood of success in proving its defenses of
invalidity or unenforceability); PHG Techs., LLC v. St. John Cos., 469 F.3d 1361,
1365 (Fed.Cir.2006). Accordingly, once Perfect 10 has shown a likelihood of
success on the merits, the burden shifts to Google to show a likelihood that its
affirmative defenses will succeed.
399
[4]
[1159]
III
Direct Infringement
A. Display Right
at 838-39.
ChapterNumber:
400


copy. 17 U.S.C. § 101.
401

issues, see Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913,
929-30, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005), Napster, 239 F.3d at 1019, and
does not constitute direct infringement of the copyright owner's display rights.
cause consumer confusion. Cf. 15 U.S.C. § 1114(1) (providing that a person who
uses a trademark in a manner likely to cause confusion shall be liable in a civil
action to the trademark registrant). [7]
right must be infringed in order for an infringement claim to arise. For example, a
"Game Genie" device that allowed a player to alter features of a Nintendo computer
game did not infringe Nintendo's right to prepare derivative works because the
Game Genie did not incorporate any portion of the game itself. See Lewis Galoob
Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 967 (9th Cir.1992). We held that
a copyright holder's right to create derivative works is not infringed unless the
alleged derivative work "incorporate[s] a protected work in some concrete or
permanent `form.'" Id. In other words, in some contexts, the claimant must be able
to claim infringement of its reproduction right in order to claim infringement of its
right to prepare derivative works.
image.
ChapterNumber:
402

C. Fair Use Defense

403

U.S.C. § 107.
foster.'" Id. at 577, 114 S.Ct. 1164 (quoting Stewart v. Abend, 495 U.S. 207, 236,
110 S.Ct. 1750, 109 L.Ed.2d 184 (1990)) (alteration in original).
include—
copyrighted work.
17 U.S.C. § 107.
"`the welfare of the public.'" Sony Corp. of Am. v. Universal City Studios, Inc., 464
U.S. 417, 429 n. 10, 104 S.Ct. 774, 78 L.Ed.2d 574 (quoting H.R.Rep. No. 2222,
60th Cong., 2d Sess. 7 (1909)).
ChapterNumber:
404

405

ChapterNumber:
406
public. See Campbell, 510 U.S. at 579, 114 S.Ct. 1164; Harper & Row, 471 U.S. at
556-57, 105 S.Ct. 2218; Sony, 464 U.S. at 431-32, 104 S.Ct. 774.

of Google.
407

Campbell, 510 U.S. at 586, 114 S.Ct. 1164 (internal quotation omitted); see also 17
U.S.C. § 107(3). In Kelly, we held Arriba's use of the entire photographic image
was reasonable in light of the purpose of a search engine. Kelly, 336 F.3d at 821.
Specifically, we noted, "[i]t was necessary for Arriba to copy the entire image to
allow users to recognize the image and decide whether to pursue more information
about the image or the originating [website]. If Arriba only copied part of the
image, it would be more difficult to identify it, thereby reducing the usefulness of
the visual search engine." Id. Accordingly, we concluded that this factor did not
weigh in favor of either [1168] party. Id. Because the same analysis applies to
Google's use of Perfect 10's image, the district court did not err in finding that this
factor favored neither party.
factors together "in light of the purposes of copyright." Campbell, 510 U.S. at 578,
114 S.Ct. 1164; see also Kelly, 336 F.3d at 818 ("We must balance[the section 107]
factors in light of the objectives of copyright law, rather than view them as
ChapterNumber:
408
definitive or determinative tests."). In this case, Google has put Perfect 10's
thumbnail images (along with millions of other thumbnail images) to a use
fundamentally different than the use intended by Perfect 10. In doing so, Google
has provided a significant benefit to the public. Weighing this significant
transformative use against the unproven use of Google's thumbnails for cell phone
downloads, and considering the other fair use factors, all in light of the purpose of
copyright, we conclude that Google's use of Perfect 10's thumbnails is a fair use.
Because the district court here "found facts sufficient to evaluate each of the
statutory factors ... [we] need not remand for further factfinding." Harper & Row,
471 U.S. at 560, 105 S.Ct. 2218 (internal quotation omitted). We conclude that
Google is likely to succeed in proving its fair use defense and, accordingly, we
IV

Infringement

409

significant' noninfringing uses." Id. at 942, 125 S.Ct. 2764 (Ginsburg, J.,
concurring) (quoting Sony, 464 U.S. at 442, 104 S.Ct. 774); see also id. at 936-37,
125 S.Ct. 2764.

ChapterNumber:
410
411

works.
ChapterNumber:
412
take such steps.
ability to do so.
413

ChapterNumber:
414

liability." Perfect 10, 416 F.Supp.2d at 858.[15]

Amazon.com
to the full-size images on third-party websites. [16] Perfect 10 v. Amazon, No. 05-
4753, consolidated with 04-9484 (C.D.Cal. February 21, 2006) (order denying
preliminary injunction). In addition, the district court concluded that Perfect 10's
secondary infringement claims against Amazon.com were likely to fail because
Amazon.com had no program analogous to AdSense, and thus did not provide any
revenues to infringing sites. Id. Finally, the district court determined that
Amazon.com's right and ability to control the infringing conduct of third-party
websites was substantially less than Google's. Id. Therefore, the district court
denied Perfect 10's motion for a preliminary injunction against Amazon.com. Id.
415
today.
VI
ChapterNumber:
416
own computer.
just as they would be in the non-online world." Id.; see also 17 U.S.C. § 512(l)
("The failure of a service provider's conduct to qualify for limitation of liability
under this section shall not bear adversely upon the consideration of a defense by
the service provider that the service provider's conduct is not infringing under this
417
title or any other defense."). Therefore, we must consider Google's potential

liability under the Copyright Act without reference to title II of the DMCA.
....

lending;
....

F.3d 544 (4th Cir.2004).
ChapterNumber:
418
models. See id.
infringe copyrights. See Grokster, 545 U.S. at 935-37, 125 S.Ct. 2764. However,
the Supreme Court in Grokster did not suggest that a court must find inducement in
order to impose contributory liability under common law principles.
907 F.Supp. 1361, 1365 n. 1 (N.D.Cal.1995).

merits of its contributory liability claim. See Napster, 239 F.3d at 1013 n. 2
("Secondary liability for copyright infringement does not exist in the absence of

419
containing copyrighted music violate plaintiffs' reproduction rights." Id. at 1014.
wrongful behavior cannot reasonably be expected to recur." F.T.C. v. Affordable
Media, LLC, 179 F.3d 1228, 1238 (9th Cir.1999) (internal quotation omitted).
moot.

9.2

Fair Use (Part 2)

9.2.1
Cariou v. Prince


714 F.3d 694
Docket No. 11-1197-cv
2013-04-25
714 F.3d 694 (2013)
Patrick CARIOU, Plaintiff-Appellee,
v.
Richard PRINCE, Defendant-Appellant,
Gagosian Gallery, Inc., Lawrence Gagosian,
Defendants-Cross-Defendants-Appellants.
Docket No. 11-1197-cv.

ChapterNumber:
420
Argued: May 21, 2012.
Decided: April 25, 2013.
[…]
B.D. PARKER, J., delivered the opinion of the Court, in which HALL, J., joined.
WALLACE, J., filed an opinion concurring in part and dissenting in part.
BARRINGTON D. PARKER, Circuit Judge:

[…]
BACKGROUND
The relevant facts, drawn primarily from the parties' submissions in connection
with their cross-motions for summary judgment, are undisputed. Cariou is a
professional photographer who, over the course of six years in the mid-1990s, lived
and worked among Rastafarians in Jamaica. The relationships that Cariou
developed with them allowed him to take a series of portraits and landscape
photographs that Cariou published in 2000 in a book titled Yes Rasta. As Cariou
testified, Yes Rasta is "extreme classical photography [and] portraiture," and he did
not "want that book to look pop culture at all." Cariou Dep. 187:8-15, Jan. 12,
2010.
Cariou's publisher, PowerHouse Books, Inc., printed 7,000 copies of Yes Rasta, in a
single printing. Like many, if not most, such works, the book enjoyed limited
commercial success. The book is currently out of print. As of January 2010,
PowerHouse had sold 5,791 copies, over sixty percent of which sold below the
suggested retail price of sixty dollars. PowerHouse has paid Cariou, who holds the
copyrights to the Yes Rasta photographs, just over $8,000 from sales of the book.
Except for a handful of private sales to personal acquaintances, he has never sold or
licensed the individual photographs.
Prince is a well-known appropriation artist. The Tate Gallery has defined

appropriation art as "the more or less direct taking over into a work of art a real
object or even an existing work of art." J.A. 446. Prince's work, going back to the
mid-1970s, has involved taking photographs and other images that others have
produced and incorporating them into paintings and collages that he then presents,
in a different context, as his own. He is a leading exponent of this genre and his
work has been displayed in museums around the world, including New York's
Solomon R. Guggenheim Museum and Whitney Museum, San Francisco's Museum
of Modern Art, Rotterdam's Museum Boijmans van Beuningen, and Basel's
Museum fur Gegenwartskunst. As Prince has described his work, he "completely
tr[ies] to change [another artist's work] into something that's completely different."
Prince Dep. 338:4-8, Oct. 6, 2009.
Prince first came across a copy of Yes Rasta in a bookstore in St. Barth's in 2005.
Between December 2007 and February 2008, Prince had a show at the Eden Rock
hotel in St. Barth's that included a collage, titled Canal Zone (2007), comprising 35
photographs torn out of Yes Rasta and pinned to a piece of plywood. Prince altered
421
those photographs significantly, by among other things painting "lozenges" over

their subjects' facial features and using only portions of some of the images. In June
2008, Prince purchased three additional copies of Yes Rasta. He went on to create
thirty additional artworks in the Canal Zone series, twenty-nine of which
incorporated partial or whole images from Yes Rasta. [4] The portions of Yes Rasta
[700] photographs used, and the amount of each artwork that they constitute, vary
significantly from piece to piece. In certain works, such as James Brown Disco
Ball, Prince affixed headshots from Yes Rasta onto other appropriated images, all of
which Prince placed on a canvas that he had painted. In these, Cariou's work is
almost entirely obscured. The Prince artworks also incorporate photographs that
have been enlarged or tinted, and incorporate photographs appropriated from artists
other than Cariou as well. Yes Rasta is a book of photographs measuring
approximately 9.5″ × 12″. Prince's artworks, in contrast, comprise inkjet printing
and acrylic paint, as well as pasted-on elements, and are several times that size. For
instance, Graduation measures 72 3/4″ × 52 1/2″ and James Brown Disco Ball 100
1/2″ × 104 1/2″. The smallest of the Prince artworks measures 40″ × 30″, or
approximately ten times as large as each page of Yes Rasta.
Patrick Cariou, Photographs from Yes Rasta, pp. 11, 59
[701]
ChapterNumber:
422
Richard Prince, James Brown Disco Ball
In other works, such as Graduation, Cariou's original work is readily apparent:

Prince did little more than paint blue lozenges over the subject's eyes and mouth,
and paste a picture of a guitar over the subject's body.
[702]
Patrick Carious, Photograph from Yes Rasta, p. 118
[703]
423
Richard Prince, Graduation
Between November 8 and December 20, 2008, the Gallery put on a show featuring
twenty-two of Prince's Canal Zone artworks, and also published and sold an
exhibition catalog from the show. The catalog included all of the Canal Zone
artworks (including those not in the Gagosian show) except for one, as well as,
among other things, photographs showing Yes Rasta photographs in Prince's studio.
Prince never sought or received permission from Cariou to use his photographs.
Prior to the Gagosian show, in late August, 2008, a gallery owner named Cristiane
Celle contacted Cariou and asked if he would be interested in discussing the
possibility of an exhibit in New York City. Celle did not mention Yes Rasta, but did
express interest in photographs Cariou took of surfers, which he published in 1998
in the aptly titled Surfers. Cariou responded that Surfers would be republished in
2008, and inquired whether Celle might also be interested in a book Cariou had
recently completed on gypsies. The two subsequently met and discussed Cariou's
exhibiting work in Celle's gallery, including prints from Yes Rasta. They did not
select a date or photographs to exhibit, nor [704] did they finalize any other details
about the possible future show.
At some point during the Canal Zone show at Gagosian, Celle learned that Cariou's
photographs were "in the show with Richard Prince." Celle then phoned Cariou and,
when he did not respond, Celle mistakenly concluded that he was "doing something
with Richard Prince.... [Maybe] he's not pursuing me because he's doing something
better, bigger with this person.... [H]e didn't want to tell the French girl I'm not
doing it with you, you know, because we had started a relation and that would have
been bad." Celle Dep. 88:15-89:7, Jan. 26, 2010. At that point, Celle decided that
she would not put on a "Rasta show" because it had been "done already," and that
any future Cariou exhibition she put on would be of photographs from Surfers.
Celle remained interested in exhibiting prints from Surfers, but Cariou never
followed through.
According to Cariou, he learned about the Gagosian Canal Zone show from Celle in
December 2008. On December 30, 2008, he sued Prince, the Gagosian Gallery, and
Lawrence Gagosian, raising claims of copyright infringement. See 17 U.S.C. §§
106, 501. The defendants asserted a fair use defense, arguing that Prince's artworks
ChapterNumber:
424
are transformative of Cariou's photographs and, accordingly, do not violate Cariou's

copyrights. See, e.g., Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-79,
114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). Ruling on the parties' subsequently-filed
cross-motions for summary judgment, the district court (Batts, J.) "impose[d] a
requirement that the new work in some way comment on, relate to the historical
context of, or critically refer back to the original works" in order to be qualify as
fair use, and stated that "Prince's Paintings are transformative only to the extent that
they comment on the Photos." Cariou v. Prince, 784 F.Supp.2d 337, 348-49
(S.D.N.Y.2011). The court concluded that "Prince did not intend to comment on
Cariou, on Cariou's Photos, or on aspects of popular culture closely associated with
Cariou or the Photos when he appropriated the Photos," id. at 349, and for that
reason rejected the defendants' fair use defense and granted summary judgment to
Cariou. The district court also granted sweeping injunctive relief, ordering the
defendants to "deliver up for impounding, destruction, or other disposition, as
[Cariou] determines, all infringing copies of the Photographs, including the
Paintings and unsold copies of the Canal Zone exhibition book, in their
possession." Id. at 355. [5] This appeal followed.
DISCUSSION
I.
We review a grant of summary judgment de novo. See Blanch v. Koons, 467 F.3d
244, 249-50 (2d Cir.2006). The well known standards for summary judgment set
forth in Rule 56(c) apply. See Fed.R.Civ.P. 56. "Although fair use is a mixed
question of law and fact, this court has on numerous occasions resolved fair use
determinations at the summary judgment stage where ... there are no genuine issues
of material fact." [ … ] This case lends itself to that approach.
[705] II.
The purpose of the copyright law is "[t]o promote the Progress of Science and
useful Arts...." U.S. Const., Art. I, § 8, cl. 8. As Judge Pierre Leval of this court has
explained, "[t]he copyright is not an inevitable, divine, or natural right that confers
on authors the absolute ownership of their creations. It is designed rather to
stimulate activity and progress in the arts for the intellectual enrichment of the
public." Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105,
1107 (1990) (hereinafter "Leval"). Fair use is "necessary to fulfill [that] very
purpose." Campbell, 510 U.S. at 575, 114 S.Ct. 1164. Because "èxcessively broad
protection would stifle, rather than advance, the law's objective,'" fair use doctrine
"mediates between" "the property rights [copyright law] establishes in creative
works, which must be protected up to a point, and the ability of authors, artists, and
the rest of us to express them — or ourselves by reference to the works of others,
which must be protected up to a point." [ … ]
The doctrine was codified in the Copyright Act of 1976, which lists four non-
exclusive factors that must be considered in determining fair use. Under the statute,
425
copyrighted work.
17 U.S.C. § 107. As the statute indicates, and as the Supreme Court and our court
have recognized, the fair use determination is an open-ended and context-sensitive
inquiry. Campbell, 510 U.S. at 577-78, 114 S.Ct. 1164; Blanch, 467 F.3d at 251.
The statute "employs the terms ìncluding' and `such as' in the preamble paragraph
to indicate the illustrative and not limitative function of the examples given, which
thus provide only general guidance about the sorts of copying that courts and
Congress most commonly had found to be fair uses." Campbell, 510 U.S. at 577-78,
114 S.Ct. 1164 (quotation marks and citation omitted). The "ultimate test of fair use
... is whether the copyright law's goal of `promoting the Progress of Science and
useful Arts' ... would be better served by allowing the use than by preventing it."
Castle Rock, 150 F.3d at 141 (brackets and citation omitted).
The first statutory factor to consider, which addresses the manner in which the
copied work is used, is "[t]he heart of the fair use inquiry." Blanch, 467 F.3d at
251. We ask
whether the new work merely `supersedes the objects' of the original
creation, or instead adds something new, with a further purpose or
different character, altering the first with new expression, meaning, or
message[,] ... in other words, whether and to what extent the new work is
transformative.... [T]ransformative works ... lie at the heart of [706] the
fair use doctrine's guarantee of breathing space....
Campbell, 510 U.S. at 579, 114 S.Ct. 1164 (citations and some quotation marks
omitted) (quoting Folsom v. Marsh, 9 F.Cas. 342, 348 *No. 4,901)
(C.C.D.Mass.1841) (Story, J.). "If `the secondary use adds value to the original —
if [the original work] is used as raw material, transformed in the creation of new
information, new aesthetics, new insights and understandings — this is the very
type of activity that the fair use doctrine intends to protect for the enrichment of
society.'" Castle Rock, 150 F.3d at 142 (quoting Leval 1111). For a use to be fair, it
"must be productive and must employ the quoted matter in a different manner or for
a different purpose from the original." Leval at 1111.
The district court imposed a requirement that, to qualify for a fair use defense, a
secondary use must "comment on, relate to the historical context of, or critically
refer back to the original works." Cariou, 784 F.Supp.2d at 348. Certainly, many
ChapterNumber:
426
types of fair use, such as satire and parody, invariably comment on an original work
and/or on popular culture. For example, the rap group 2 Live Crew's parody of Roy
Orbison's "Oh, Pretty Woman" "was clearly intended to ridicule the white-bread
original." Campbell, 510 U.S. at 582, 114 S.Ct. 1164 (quotation marks omitted).
Much of Andy Warhol's work, including work incorporating appropriated images of
Campbell's soup cans or of Marilyn Monroe, comments on consumer culture and
explores the relationship between celebrity culture and advertising. As even Cariou
concedes, however, the district court's legal premise was not correct. The law
imposes no requirement that a work comment on the original or its author in order
to be considered transformative, and a secondary work may constitute a fair use
even if it serves some purpose other than those (criticism, comment, news
reporting, teaching, scholarship, and research) identified in the preamble to the
statute. Id. at 577, 114 S.Ct. 1164; Harper & Row, 471 U.S. at 561, 105 S.Ct. 2218.
Instead, as the Supreme Court as well as decisions from our court have emphasized,
to qualify as a fair use, a new work generally must alter the original with "new
expression, meaning, or message." Campbell, 510 U.S. at 579, 114 S.Ct. 1164; see
also Blanch, 467 F.3d at 253 (original must be employed "in the creation of new
information, new aesthetics, new insights and understandings" (quotation marks
omitted)); Castle Rock, 150 F.3d at 142.
Here, our observation of Prince's artworks themselves convinces us of the

transformative nature of all but five, which we discuss separately below. These
twenty-five of Prince's artworks manifest an entirely different aesthetic from
Cariou's photographs. Where Cariou's serene and deliberately composed portraits
and landscape photographs depict the natural beauty of Rastafarians and their
surrounding environs, Prince's crude and jarring works, on the other hand, are
hectic and provocative. Cariou's black-and-white photographs were printed in a 9
1/2″ × 12″ book. Prince has created collages on canvas that incorporate color,
feature distorted human and other forms and settings, and measure between ten and
nearly a hundred times the size of the photographs. Prince's composition,
presentation, scale, color palette, and media are fundamentally different and new
compared to the photographs, as is the expressive nature of Prince's work. See
Campbell, 510 U.S. at 579, 114 S.Ct. 1164.
Prince's deposition testimony further demonstrates his drastically different approach

and aesthetic from Cariou's. Prince testified that he "[doesn't] have any really
interest in what [another artist's] [707] original intent is because ... what I do is I
completely try to change it into something that's completely different.... I'm trying
to make a kind of fantastic, absolutely hip, up to date, contemporary take on the
music scene." Prince Dep. 338:4-339:3, Oct. 6, 2009. As the district court
determined, Prince's Canal Zone artworks relate to a "post-apocalyptic screenplay"
Prince had planned, and "emphasize themes [of Prince's planned screenplay] of
equality of the sexes; highlight `the three relationships in the world, which are men
and women, men and men, and women and women'; and portray a contemporary
take on the music scene." Cariou, 784 F.Supp.2d at 349; see Prince Dep. 339:3-7,
Oct. 6, 2009.
The district court based its conclusion that Prince's work is not transformative in
large part on Prince's deposition testimony that he "do[es]n't really have a
message," that he was not "trying to create anything with a new meaning or a new
message," and that he "do[es]n't have any ... interest in [Cariou's] original intent."
[ … ]On appeal, Cariou argues that we must hold Prince to his testimony and that
we are not to consider how Prince's works may reasonably be perceived unless
427
Prince claims that they were satire or parody. No such rule exists, and we do not
analyze satire or parody differently from any other transformative use.
It is not surprising that, when transformative use is at issue, the alleged infringer
would go to great lengths to explain and defend his use as transformative. Prince
did not do so here. However, the fact that Prince did not provide those sorts of
explanations in his deposition — which might have lent strong support to his
defense — is not dispositive. What is critical is how the work in question appears to
the reasonable observer, not simply what an artist might say about a particular piece
or body of work. Prince's work could be transformative even without commenting
on Cariou's work or on culture, and even without Prince's stated intention to do so.
Rather than confining our inquiry to Prince's explanations of his artworks, we
instead examine how the artworks may "reasonably be perceived" in order to assess
their transformative nature. Campbell, 510 U.S. at 582, 114 S.Ct. 1164; Leibovitz v.
Paramount Pictures Corp., 137 F.3d 109, 113-14 (2d Cir.1998) (evaluating parodic
nature of advertisement in light of how it "may reasonably be perceived"). The
focus of our infringement analysis is primarily on the Prince artworks themselves,
and we see twenty-five of them as transformative as a matter of law.
[…]
Here, looking at the artworks and the photographs side-by-side, we conclude [708]
that Prince's images, except for those we discuss separately below, have a different
character, give Cariou's photographs a new expression, and employ new aesthetics
with creative and communicative results distinct from Cariou's. Our conclusion
should not be taken to suggest, however, that any cosmetic changes to the
photographs would necessarily constitute fair use. A secondary work may modify
the original without being transformative. For instance, a derivative work that
merely presents the same material but in a new form, such as a book of synopses of
televisions shows, is not transformative. See Castle Rock, 150 F.3d at 143; Twin
Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1378 (2d Cir.1993). In
twenty-five of his artworks, Prince has not presented the same material as Cariou in
a different manner, but instead has "add[ed] something new" and presented images
with a fundamentally different aesthetic. Leibovitz, 137 F.3d at 114.
The first fair use factor — the purpose and character of the use — also requires that
we consider whether the allegedly infringing work has a commercial or nonprofit
educational purpose. See, e.g., Blanch, 467 F.3d at 253. That being said, "nearly all
of the illustrative uses listed in the preamble paragraph of § 107, including news
reporting, comment, criticism, teaching, scholarship, and research... are generally
conducted for profit." Campbell, 510 U.S. at 584, 114 S.Ct. 1164 (quotation marks
omitted). "The commercial/nonprofit dichotomy concerns the unfairness that arises
when a secondary user makes unauthorized use of copyrighted material to capture
significant revenues as a direct consequence of copying the original work." Am.
Geophysical Union v. Texaco Inc., 60 F.3d 913, 922 (2d Cir.1994). This factor must
be applied with caution because, as the Supreme Court has recognized, Congress
"could not have intended" a rule that commercial uses are presumptively unfair.
Campbell, 510 U.S. at 584, 114 S.Ct. 1164 Instead, "[t]he more transformative the
new work, the less will be the significance of other factors, like commercialism,
that may weigh against a finding of fair use." Id. at 579, 114 S.Ct. 1164. Although
there is no question that Prince's artworks are commercial, we do not place much
significance on that fact due to the transformative nature of the work.
ChapterNumber:
428
We turn next to the fourth statutory factor, the effect of the secondary use upon the
potential market for the value of the copyrighted work, because such discussion
further demonstrates the significant differences between Prince's work, generally,
and Cariou's. Much of the district court's conclusion that Prince and Gagosian
infringed on Cariou's copyrights was apparently driven by the fact that Celle
decided not to host a Yes Rasta show at her gallery once she learned of the
Gagosian Canal Zone show. The district court determined that this factor weighs
against Prince because he "has unfairly damaged both the actual and potential
markets for Cariou's original work and the potential market for derivative use
licenses for Cariou's original work." Cariou, 784 F.Supp.2d at 353.
Contrary to the district court's conclusion, the application of this factor does not
focus principally on the question of damage to Cariou's derivative market. We have
made clear that "our concern is not whether the secondary use suppresses or even
destroys the market for the original work or its potential derivatives, but whether
the secondary use usurps the market of the original work." Blanch, 467 F.3d at 258
(quotation marks omitted) (emphasis added); NXIVM Corp. v. Ross Inst., 364 F.3d
471, 481-82 (2d Cir.2004). "The market for potential derivative uses [709] includes
only those that creators of original works would in general develop or license others
to develop." Campbell, 510 U.S. at 592, 114 S.Ct. 1164. Our court has concluded
that an accused infringer has usurped the market for copyrighted works, including
the derivative market, where the infringer's target audience and the nature of the
infringing content is the same as the original. For instance, a book of trivia about
the television show Seinfeld usurped the show's market because the trivia book
"substitute[d] for a derivative market that a television program copyright owner ...
would in general develop or license others to develop." Castle Rock, 150 F.3d at
145 (quotation marks omitted). Conducting this analysis, we are mindful that "[t]he
more transformative the secondary use, the less likelihood that the secondary use
substitutes for the original," even though "the fair use, being transformative, might
well harm, or even destroy, the market for the original." Id.
As discussed above, Celle did not decide against putting on a Yes Rasta show
because it had already been done at Gagosian, but rather because she mistakenly
believed that Cariou had collaborated with Prince on the Gagosian show. Although
certain of Prince's artworks contain significant portions of certain of Cariou's
photographs, neither Prince nor the Canal Zone show usurped the market for those
photographs. Prince's audience is very different from Cariou's, and there is no
evidence that Prince's work ever touched — much less usurped — either the
primary or derivative market for Cariou's work. There is nothing in the record to
suggest that Cariou would ever develop or license secondary uses of his work in the
vein of Prince's artworks. Nor does anything in the record suggest that Prince's
artworks had any impact on the marketing of the photographs. Indeed, Cariou has
not aggressively marketed his work, and has earned just over $8,000 in royalties
from Yes Rasta since its publication. He has sold four prints from the book, and
only to personal acquaintances.
Prince's work appeals to an entirely different sort of collector than Cariou's. Certain
of the Canal Zone artworks have sold for two million or more dollars. The
invitation list for a dinner that Gagosian hosted in conjunction with the opening of
the Canal Zone show included a number of the wealthy and famous such as the
musicians Jay-Z and Beyonce Knowles, artists Damien Hirst and Jeff Koons,
professional football player Tom Brady, model Gisele Bundchen, Vanity Fair editor
Graydon Carter, Vogue editor Anna Wintour, authors Jonathan Franzen and
429
Candace Bushnell, and actors Robert DeNiro, Angelina Jolie, and Brad Pitt. Prince
sold eight artworks for a total of $10,480,000, and exchanged seven others for
works by painter Larry Rivers and by sculptor Richard Serra. Cariou on the other
hand has not actively marketed his work or sold work for significant sums, and
nothing in the record suggests that anyone will not now purchase Cariou's work, or
derivative non-transformative works (whether Cariou's own or licensed by him) as a
result of the market space that Prince's work has taken up. This fair use factor
therefore weighs in Prince's favor.
The next statutory factor that we consider, the nature of the copyrighted work,
"calls for recognition that some works are closer to the core of intended copyright
protection than others, with the consequence that fair use is more difficult to
establish when the former works are copied." Campbell, 510 U.S. at 586, 114 S.Ct.
1164. We consider "`(1) whether the work is expressive or creative, ... with a
greater leeway being allowed to a claim of fair use where the work is factual or
informational, [710] and (2) whether the work is published or unpublished, with the
scope for fair use involving unpublished works being considerably narrower.'"
[…]
Here, there is no dispute that Cariou's work is creative and published. Accordingly,
this factor weighs against a fair use determination. However, just as with the
commercial character of Prince's work, this factor "may be of limited usefulness
where," as here, "the creative work of art is being used for a transformative
purpose." [ … ]
The final factor that we consider in our fair use inquiry is "the amount and
substantiality of the portion used in relation to the copyrighted work as a whole."
17 U.S.C. § 107(3). We ask "whether the quantity and value of the materials used[]
are reasonable in relation to the purpose of the copying." Blanch, 467 F.3d at 257
(quotation marks omitted). In other words, we consider the proportion of the
original work used, and not how much of the secondary work comprises the
original.
Many of Prince's works use Cariou's photographs, in particular the portrait of the
dreadlocked Rastafarian at page 118 of Yes Rasta, the Rastafarian on a burro at
pages 83 to 84, and the dreadlocked and bearded Rastafarian at page 108, in whole
or substantial part. In some works, such as Charlie Company, Prince did not alter
the source photograph very much at all. In others, such as Djuana Barnes, Natalie
Barney, Renee Vivien and Romaine Brooks take over the Guanahani, the entire
source photograph is used but is also heavily obscured and altered to the point that
Cariou's original is barely recognizable. Although "[n]either our court nor any of
our sister circuits has ever ruled that the copying of an entire work favors fair
use[,].... courts have concluded that such copying does not necessarily weigh
against fair use because copying the entirety of a work is sometimes necessary to
make a fair use of the image." Bill Graham, 448 F.3d at 613. "[T]he third-factor
inquiry must take into account that the extent of permissible copying varies with the
purpose and character of the use." [ … ]
The district court determined that Prince's "taking was substantially greater than
necessary." Cariou, 784 F.Supp.2d at 352. We are not clear as to how the district
court could arrive at such a conclusion. In any event, the law does not require that
the secondary artist may take no more than is necessary. See Campbell, 510 U.S. at
588, 114 S.Ct. 1164; Leibovitz, 137 F.3d at 114. We consider not only the quantity
of the materials taken but also "their quality and importance" to the original work.
ChapterNumber:
430
Campbell, 510 U.S. at 587, 114 S.Ct. 1164. The secondary use "must be [permitted]
to `conjure up' at least enough of the original" to fulfill its transformative purpose.
Id. at 588, 114 S.Ct. 1164 (emphasis added); Leibovitz, 137 F.3d at 114. Prince used
key portions of certain of Cariou's photographs. In doing that, however, we
determine that in twenty-five of his artworks, Prince transformed those photographs
into something new and different and, as a result, this factor weighs heavily in
Prince's favor.
As indicated above, there are five artworks that, upon our review, present closer
questions. Specifically, Graduation, Meditation, Canal Zone (2008), Canal Zone
(2007), and Charlie Company do not sufficiently differ from the photographs of
Cariou's that they incorporate for us confidently to make a determination about their
[711] transformative nature as a matter of law. Although the minimal alterations
that Prince made in those instances moved the work in a different direction from
Cariou's classical portraiture and landscape photos, we can not say with certainty at
this point whether those artworks present a "new expression, meaning, or message."
Campbell, 510 U.S. at 579, 114 S.Ct. 1164.
Certainly, there are key differences in those artworks compared to the photographs
they incorporate. Graduation, for instance, is tinted blue, and the jungle
background is in softer focus than in Cariou's original. Lozenges painted over the
subject's eyes and mouth — an alteration that appears frequently throughout the
Canal Zone artworks — make the subject appear anonymous, rather than as the
strong individual who appears in the original. Along with the enlarged hands and
electric guitar that Prince pasted onto his canvas, those alterations create the
impression that the subject is not quite human. Cariou's photograph, on the other
hand, presents a human being in his natural habitat, looking intently ahead. Where
the photograph presents someone comfortably at home in nature, Graduation
combines divergent elements to create a sense of discomfort. However, we cannot
say for sure whether Graduation constitutes fair use or whether Prince has
transformed Cariou's work enough to render it transformative.
We have the same concerns with Meditation, Canal Zone (2007), Canal Zone
(2008), and Charlie Company. Each of those artworks differs from, but is still
similar in key aesthetic ways, to Cariou's photographs. In Meditation, Prince again
added lozenges and a guitar to the same photograph that he incorporated into
Graduation, this time cutting the subject out of his background, switching the
direction he is facing, and taping that image onto a blank canvas. In Canal Zone
(2007), Prince created a gridded collage using 31 different photographs of Cariou's,
many of them in whole or significant part, with alterations of some of those
photographs limited to lozenges or cartoonish appendages painted or drawn on.
Canal Zone (2008) incorporates six photographs of Cariou's in whole or in part,
including the same subject as Meditation and Graduation. Prince placed the subject,
with lozenges and guitar, on a background comprising components of various
landscape photographs, taped together. The cumulative effect is of the subject in a
habitat replete with lush greenery, not dissimilar from many of Cariou's Yes Rasta
photographs. And Charlie Company prominently displays four copies of Cariou's
photograph of a Rastafarian riding a donkey, substantially unaltered, as well as two
copies of a seated nude woman with lozenges covering all six faces. Like the other
works just discussed, Charlie Company is aesthetically similar to Cariou's original
work because it maintains the pastoral background and individual focal point of the
original photograph — in this case, the man on the burro. While the lozenges,
repetition of the images, and addition of the nude female unarguably change the
431
tenor of the piece, it is unclear whether these alterations amount to a sufficient

transformation of the original work of art such that the new work is transformative.
We believe the district court is best situated to determine, in the first instance,
whether such relatively minimal alterations render Graduation, Meditation, Canal
Zone (2007), Canal Zone (2008), and Charlie Company fair uses (including whether
the artworks are transformative) or whether any impermissibly infringes on Cariou's
copyrights in his original photographs. We remand for that determination.
[712] III.
In addition to its conclusion that Prince is liable for infringing on Cariou's
copyrights, the district court determined that the Gagosian defendants are liable as
vicarious and contributory infringers. Cariou, 784 F.Supp.2d at 354. With regard to
the twenty-five of Prince's artworks, which, as we have held, do not infringe on
Cariou's copyrights, neither Lawrence Gagosian nor the Gallery may be liable as a
vicarious or contributory infringer. [ … ]If the district court concludes on remand
that Prince is liable as a direct infringer with regard to any of the remaining five
works, the district court should determine whether the Gagosian defendants should
be held liable, directly or secondarily, as a consequence of their actions with regard
to those works. See Copyright Act, 17 U.S.C. § 106(1), (2), (3), (5).
CONCLUSION
For the reasons discussed, we hold that all except five (Graduation, Meditation,
Canal Zone (2007), Canal Zone (2008), and Charlie Company) of Prince's artworks
make fair use of Cariou's photographs. We express no view as to whether the five
are also entitled to a fair use defense. We REMAND with respect to those five so
that the district court, applying the proper standard, can determine in the first
instance whether any of them infringes on Cariou's copyrights or whether Prince is
entitled to a fair use defense with regard to those artworks as well. The judgment of
the district court is REVERSED in part and VACATED in part. [6] The case is
REMANDED for further proceedings consistent with this opinion.
[…]
[1] The Honorable J. Clifford Wallace, United States Circuit Judge of the United
States Court of Appeals for the Ninth Circuit, sitting by designation.
[2] We refer to Gagosian Gallery and its owner Lawrence Gagosian collectively as
"Gagosian" or the "Gallery."
[3] The district court's opinion indicated that there are twenty-nine artworks at issue
in this case. See Cariou, 784 F.Supp.2d at 344 nn. 5, 6. There are actually thirty.
[4] Images of the Prince artworks, along with the Yes Rasta photographs
incorporated therein, appear in the Appendix to this opinion. The Appendix is
available at http://www.ca2.uscourts.gov/11-1197apx.htm.
ChapterNumber:
432
[5] At oral argument, counsel for Cariou indicated that he opposes the destruction
of any of the works of art that are the subject of this litigation.
[6] Because we reverse the district court with regard to the twenty-five of the
artworks, and leave open the question of fair use with regard to the remaining five,
we vacate the district court's injunction. In the event that Prince and Gagosian are
ultimately held liable for copyright infringement, and in light of all parties'
agreement at oral argument that the destruction of Prince's artwork would be
improper and against the public interest, a position with which we agree, the district
court should revisit what injunctive relief, if any, is appropriate. See eBay, Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006);
Salinger v. Colting, 607 F.3d 68, 77 (2d Cir.2010).

9.2.2
AUTHORS GUILD v. GOOGLE INC.

THE AUTHORS GUILD, [ … ][ … ]v.

GOOGLE, INC., [ … ]
[ … ].
[ … ] October 16, 201[ … ]
ee.
Before: LEVAL, CABRANES, PARKER, Circuit Judges.
LEVAL, Circuit Judge.

This copyright dispute tests the boundaries of fair use. Plaintiffs, who are authors of
published books under copyright, sued Google, Inc. ("Google") for copyright
infringement in the United States District Court for the Southern District of New
York (Chin, J.). They appeal from the grant of summary judgment in Google's
favor. Through its Library Project and its Google Books project, acting without
permission of rights holders, Google has made digital copies of tens of millions of
books, including Plaintiffs', that were submitted to it for that purpose by major
libraries. Google has scanned the digital copies and established a publicly available
search function. An Internet user can use this function to search without charge to
determine whether the book contains a specified word or term and also see
"snippets" of text containing the searched-for terms. In addition, Google has
allowed the participating libraries to download and retain digital copies of the
books they submit, under agreements which commit the libraries not to use their
digital copies in violation of the copyright laws. These activities of Google are
433
alleged to constitute infringement of Plaintiffs' copyrights. Plaintiffs sought

injunctive and declaratory relief as well as damages.
Google defended on the ground that its actions constitute "fair use," which, under
17 U.S.C. § 107, is "not an infringement." The district court agreed. Authors Guild,
Inc. v. Google Inc., 954 F. Supp. 2d 282, 294 (S.D.N.Y. 2013). Plaintiffs brought
this appeal.
Plaintiffs contend the district court's ruling was flawed in several respects. They
argue: (1) Google's digital copying of entire books, allowing users through the
snippet function to read portions, is not a "transformative use" within the meaning
of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-585 (1994), and provides
a substitute for Plaintiffs' works; (2) notwithstanding that Google provides public
access to the search and snippet functions without charge and without advertising,
its ultimate commercial profit motivation and its derivation of revenue from its
dominance of the world-wide Internet search market to which the books project
contributes, preclude a finding of fair use; (3) even if Google's copying and
revelations of text do not infringe plaintiffs' books, they infringe Plaintiffs'
derivative rights in search functions, depriving Plaintiffs of revenues or other
benefits they would gain from licensed search markets; (4) Google's storage of
digital copies exposes Plaintiffs to the risk that hackers will make their books freely
(or cheaply) available on the Internet, destroying the value of their copyrights; and
(5) Google's distribution of digital copies to participant libraries is not a
transformative use, and it subjects Plaintiffs to the risk of loss of copyright
revenues through access allowed by libraries. We reject these arguments and
conclude that the district court correctly sustained Google's fair use defense.
Google's making of a digital copy to provide a search function is a transformative

use, which augments public knowledge by making available information about
Plaintiffs' books without providing the public with a substantial substitute for
matter protected by the Plaintiffs' copyright interests in the original works or
derivatives of them. The same is true, at least under present conditions, of Google's
provision of the snippet function. Plaintiffs' contention that Google has usurped
their opportunity to access paid and unpaid licensing markets for substantially the
same functions that Google provides fails, in part because the licensing markets in
fact involve very different functions than those that Google provides, and in part
because an author's derivative rights do not include an exclusive right to supply
information (of the sort provided by Google) about her works. Google's profit
motivation does not in these circumstances justify denial of fair use. Google's
program does not, at this time and on the record before us, expose Plaintiffs to an
unreasonable risk of loss of copyright value through incursions of hackers. Finally,
Google's provision of digital copies to participating libraries, authorizing them to
make non-infringing uses, is non-infringing, and the mere speculative possibility
that the libraries might allow use of their copies in an infringing manner does not
make Google a contributory infringer. Plaintiffs have failed to show a material
issue of fact in dispute.
We affirm the judgment.
BACKGROUND
ChapterNumber:
434
I. Plaintiffs
The author-plaintiffs are Jim Bouton, author of Ball Four; Betty Miles, author of
The Trouble with Thirteen; and Joseph Goulden, author of The Superlawyers: The
Small and Powerful World of the Great Washington Law Firms. Each of them has a
legal or beneficial ownership in the copyright for his or her book. [1] Their books
have been scanned without their permission by Google, which made them available
to Internet users for search and snippet view on Google's websi[ … ] [2]
II. Google Books and the Google Library

Project
Google's Library Project, which began in 2004, involves bi-lateral agreements
between Google and a number of the world's major research librari[ … ][3] Under
these agreements, the participating libraries select books from their collections to
submit to Google for inclusion in the project. Google makes a digital scan of each
book, extracts a machine-readable text, and creates an index of the machine-
readable text of each book. Google retains the original scanned image of each book,
in part so as to improve the accuracy of the machine-readable texts and indices as
image-to-text conversion technologies improve.
Since 2004, Google has scanned, rendered machine-readable, and indexed more
than 20 million books, including both copyrighted works and works in the public
domain. The vast majority of the books are non-fiction, and most are out of print.
All of the digital information created by Google in the process is stored on servers
protected by the same security systems Google uses to shield its own confidential
information.
The digital corpus created by the scanning of these millions of books enables the
Google Books search engine. Members of the public who access the Google Books
website can enter search words or terms of their own choice, receiving in response a
list of all books in the database in which those terms appear, as well as the number
of times the term appears in each book. A brief description of each book, entitled
"About the Book," gives some rudimentary additional information, including a list
of the words and terms that appear with most frequency in the book. It sometimes
provides links to buy the book online and identifies libraries where the book can be
fou[ … ][4] The search tool permits a researcher to identify those books, out of
millions, that do, as well as those that do not, use the terms selected by the
researcher. Google notes that this identifying information instantaneously supplied
would otherwise not be obtainable in lifetimes of searching.
No advertising is displayed to a user of the search function. Nor does Google

receive payment by reason of the searcher's use of Google's link to purchase the
book.
The search engine also makes possible new forms of research, known as "text
mining" and "data mining." Google's "ngrams" research tool draws on the Google
Library Project corpus to furnish statistical information to Internet users about the
frequency of word and phrase usage over centuri[ … ] [5] This tool permits users to
discern fluctuations of interest in a particular subject over time and space by
showing increases and decreases in the frequency of reference and usage in
435
different periods and different linguistic regions. It also allows researchers to comb
over the tens of millions of books Google has scanned in order to examine "word
frequencies, syntactic patterns, and thematic markers" and to derive information on
how nomenclature, linguistic usage, and literary style have changed over tim [ … ][6]
The Google Books search function also allows the user a limited viewing of text. In
addition to telling the number of times the word or term selected by the searcher
appears in the book, the search function will display a maximum of three "snippets"
containing it. A snippet is a horizontal segment comprising ordinarily an eighth of a
page. Each page of a conventionally formatted b[ … ][7] in the Google Books
database is divided into eight non-overlapping horizontal segments, each such
horizontal segment being a snippet. (Thus, for such a book with 24 lines to a page,
each snippet is comprised of three lines of text.) Each search for a particular word
or term within a book will reveal the same three snippets, regardless of the number
of computers from which the search is launched. Only the first usage of the term on
a given page is displayed. Thus, if the top snippet of a page contains two (or more)
words for which the user searches, and Google's program is fixed to reveal that
particular snippet in response to a search for either term, the second search will
duplicate the snippet already revealed by the first search, rather than moving to
reveal a different snippet containing the word because the first snippet was already
revealed. Google's program does not allow a searcher to increase the number of
snippets revealed by repeated entry of the same search term or by entering searches
from different computers. A searcher can view more than three snippets of a book
by entering additional searches for different terms. However, Google makes
permanently unavailable for snippet view one snippet on each page and one
complete page out of every ten—a process Google calls "blacklisting."
Google also disables snippet view entirely for types of books for which a single
snippet is likely to satisfy the searcher's present need for the book, such as
dictionaries, cookbooks, and books of short poems. Finally, since 2005, Google will
exclude any book altogether from snippet view at the request of the rights holder by
the submission of an online form.
Under its contracts with the participating libraries, Google allows each library to
download copies—of both the digital image and machine-readable versions—of the
books that library submitted to Google for scanning (but not of books submitted by
other libraries). This is done by giving each participating library access to the
Google Return Interface ("GRIN"). The agreements between Google and the
libraries, although not in all respects uniform, require the libraries to abide by
copyright law in utilizing the digital copies they download and to take precautions
to prevent dissemination of their digital copies to the public at lar[ … ] [8] Through
the GRIN facility, participant libraries have downloaded at least 2.7 million digital
copies of their own volumes.
III. Procedural History

Plaintiffs brought this suit on September 20, 2005, as a putative class action on
behalf of similarly situated, rights-owning autho[ … ] [9] After several years of
negotiation, the parties reached a proposed settlement that would have resolved the
claims on a class-wide basis. The proposed settlement allowed Google to make
substantially more extensive use of its scans of copyrighted books than
contemplated under the present judgment, and provided that Google would make
ChapterNumber:
436
payments to the rights holders in return. On March 22, 2011, however, the district
court rejected the proposed settlement as unfair to the class members who relied on
the named plaintiffs to represent their interest[ … ]1).
On October 14, 2011, Plaintiffs filed a fourth amended class action complaint,
which is the operative complaint for this appea[ … ][ … ]nt. On the appeal from the
class certification, our court—questioning whether it was reasonable to infer that
the putative class of authors favored the relief sought by the named plaintiffs—
provisionally vacated that class certification without addressing the merits of the
issue, concluding instead that "resolution of Google's fair use defense in the first
instance will necessarily inform and perhaps moot our analysis of many class
certification issues[ … ]3).
On November 14, 2013, the district court granted Google's motion for summary
judgment, concluding that the uses made by Google of copyrighted books were fair
uses, protected by § 10[ … ]al.
DISCUSSION[10]
I. The Law of Fair Use

The ultimate goal of copyright is to expand public knowledge and understanding,
which copyright seeks to achieve by giving potential creators exclusive control over
copying of their works, thus giving them a financial incentive to create informative,
intellectually enriching works for public consumption. This objective is clearly
reflected in the Constitution's empowerment of Congress "To promote the Progress
of Science . . . by securing for limited Times to Authors . . . the exclusive Right to
their respective Writings." U.S. Const., Art. I, § 8, cl. 8) (emphasis added [ … ]1]
Thus, while authors are undoubtedly important intended beneficiaries of copyright,
the ultimate, primary intended beneficiary is the public, whose access to knowledge
copyright seeks to advance by providing rewards for authorship.
For nearly three hundred years, since shortly after the birth of copyright in England
in 171[ … ]2] courts have recognized that, in certain circumstances, giving authors
absolute control over all copying from their works would tend in some
circumstances to limit, rather than expand, public knowledge. In the words of Lord
Ellenborough, "[W]hile I shall think myself bound to secure every man in the
enjoyment of his copy-right, one must not put manacles upon science.[ … ]). Courts
thus developed the doctrine, eventually named fair use, which permits unauthorized
copying in some circumstances, so as to further "copyright's very purpose, `[t]o
promote the Progress of Science and useful Arts.'" Campbell v. Acuff-Rose Music,
Inc., 510 U.S. 569, 575 (1994[ … ]8). Although well established in the common law
development of copyright, fair use was not recognized in the terms of our statute
until the adoption of § 107 in the Copyright Act of 1976[ … ]q.
Section 107, in its present form, [13] provides:
[T]he fair use of a copyrighted work . . . for purposes such as criticism,

437

particular case is a fair use the factors to be considered shall include—
copyrighted work.
if such finding is made upon consideration of all the above factor[ … ][ …
]
. As the Supreme Court has designated fair use an affirmative defense[ … ]0, the
party asserting fair use bears the burden of pro[ … ]4).
The statute's wording, derived from a brief observation of Justice Joseph Story in
Folsom v. Mars[ … ]4] does not furnish standards for recognition of fair use. Its
instruction to consider the "purpose and character" of the secondary use and the
"nature" of the copyrighted work does not explain what types of "purpose and
character" or "nature" favor a finding of fair use and which do not. In fact, as the
Supreme Court observed in Campbell, the House Report makes clear that, in
passing the statute, Congress had no intention of normatively dictating fair use
policy. The purpose of the enactment was to give recognition in the statute itself to
such an important part of copyright law developed by the courts through the
common law process.[ … ][ … ]). Furthermore, notwithstanding fair use's long
common-law history, not until the Campbell ruling in 1994 did courts undertake to
explain the standards for finding fair use.
The Campbell Court undertook a comprehensive analysis of fair use's requirements,

discussing every segment of § 107. Beginning with the examples of purposes set
forth in the statute's preamble, the Court made clear that they are "illustrative and
not limitative" and "provide only general guidance about the sorts of copying that
courts and Congress most commonly ha[ve] found to be fair uses. [ … ]). The statute
"calls for case-by-case analysis" and "is not to be simplified with bright-line rules.
[ … ]7. Section 107's four factors are not to "be treated in isolation, one from
purposes of copyright.[ … ]8. Each factor thus stands as part of a multifaceted
assessment of the crucial question: how to define the boundary limit of the original
author's exclusive rights in order to best serve the overall objectives of the
copyright law to expand public learning while protecting the incentives of authors
to create for the public good.
At the same time, the Supreme Court has made clear that some of the statute's four
listed factors are more significant than others. The Court observed in Harper &
Row Publishers, Inc. v. Nation Enterprises that the fourth factor, which assesses the
harm the secondary use can cause to the market for, or the value of, the copyright
for the original, "is undoubtedly the single most important element of fair use." 471
ChapterNumber:
438
U.S. 539, 566 (1985[ … ])). This is consistent with the fact that the copyright is a
commercial right, intended to protect the ability of authors to profit from the
exclusive right to merchandise their own work.
In Campbell, the Court stressed also the importance of the first factor, the "purpose
and character of the secondary use.[ … ]). The more the appropriator is using the
copied material for new, transformative purposes, the more it serves copyright's
goal of enriching public knowledge and the less likely it is that the appropriation
will serve as a substitute for the original or its plausible derivatives, shrinking the
protected market opportunities of the copyrighted work[ … ]).
With this background, we proceed to discuss each of the statutory factors, as

illuminated by Campbell and subsequent case law, in relation to the issues here in
dispute.
II. The Search and Snippet View Functions
A. Factor One
(1) Transformative purpose.

Campbell's explanation of the first factor's inquiry into the "purpose and character"
of the secondary use focuses on whether the new work, "in Justice Story's words, . .
. merely `supersede[s] the objects' of the original creation, . . . or instead adds
something new, with a further purpose . . . . [I]t asks, in other words, whether and
to what extent the new work is `transformative.'[ … ]). While recognizing that a
transformative use is "not absolutely necessary for a finding of fair use," the
opinion further explains that the "goal of copyright, to promote science and the arts,
is generally furthered by the creation of transformative works" and that "[s]uch
works thus lie at the heart of the fair use doctrine's guarantee of breathing space
within the confines of copyright.[ … ]9. In other words, transformative uses tend to
favor a fair use finding because a transformative use is one that communicates
something new and different from the original or expands its utility, thus serving
copyright's overall objective of contributing to public knowledge.
The word "transformative" cannot be taken too literally as a sufficient key to

understanding the elements of fair use. It is rather a suggestive symbol for a
complex thought, and does not mean that any and all changes made to an author's
original text will necessarily support a finding of fair use. The Supreme Court's
discussion in Campbell gave important guidance on assessing when a
transformative use tends to support a conclusion of fair use. The defendant in that
case defended on the ground that its work was a parody of the original and that
parody is a time-honored category of fair use. Explaining why parody makes a
stronger, or in any event more obvious, claim of fair use than satire, the Court
stated,
[T]he heart of any parodist's claim to quote from existing material . . . is

the use of . . . a prior author's composition to . . .comment[] on that
author's works. . . . If, on the contrary, the commentary has no critical
439
bearing on the substance or style of the original composition, which the

alleged infringer merely uses to get attention or to avoid the drudgery in
working up something fresh, the claim to fairness in borrowing from
another's work diminishes accordingly (if it does not vanish). . . . Parody
needs to mimic an original to make its point, and so has some claim to use
the creation of its victim's . . . imagination, whereas satire can stand on its
own two feet and so requires justification for the very act of
borrowin[ … ][ … ]
. In other words, the would-be fair user of another's work must have justification for
the taking. A secondary author is not necessarily at liberty to make wholesale
takings of the original author's expression merely because of how well the original
author's expression would convey the secondary author's different message. Among
the best recognized justifications for copying from another's work is to provide
comment on it or criticism of it. A taking from another author's work for the
purpose of making points that have no bearing on the original may well be fair use,
but the taker would need to show a justification. This part of the Supreme Court's
discussion is significant in assessing Google's claim of fair use because, as
discussed extensively below, Google's claim of transformative purpose for copying
from the works of others is to provide otherwise unavailable information about the
originals.
A further complication that can result from oversimplified reliance on whether the
copying involves transformation is that the word "transform" also plays a role in
defining "derivative works," over which the original rights holder retains exclusive
control. Section 106 of the Act specifies the "exclusive right[]" of the copyright
owner "(2) to prepare derivative works based upon the copyrighted work.[ … ]6.
The statute defines derivative works largely by example, rather than explanation.
The examples include "translation, musical arrangement, dramatization,
fictionalization, motion picture version, sound recording, art reproduction,
abridgement, condensation," to which list the statute adds "any other form in which
a work may be . . . transformed." 17 U.S.C. § 101 (emphasis added). [15] As we noted
in Authors Guild, Inc. v. HathiTrust, "[p]aradigmatic examples of derivative works
include the translation of a novel into another language, the adaptation of a novel
into a movie or play, or the recasting of a novel as an e-book or an audiobook.
[ … ]). While such changes can be described as transformations, they do not
involve the kind of transformative purpose that favors a fair use finding. The
statutory definition suggests that derivative works generally involve
transformations in the nature of changes of form[ … ]1. By contrast, copying from
an original for the purpose of criticism or commentary on the origin[ … ]6] or
provision of information about i[ … ] 7] tends most clearly to satisfy Campbell's
notion of the "transformative" purpose involved in the analysis of Factor One. [18]
With these considerations in mind, we first consider whether Google's search and
snippet views functions satisfy the first fair use factor with respect to Plaintiffs'
rights in their books. (The question whether these functions might infringe upon
Plaintiffs' derivative rights is discussed in the next Part.)
(2) Search Function.

ChapterNumber:
440
We have no difficulty concluding that Google's making of a digital copy of

Plaintiffs' books for the purpose of enabling a search for identification of books
containing a term of interest to the searcher involves a highly transformative
purpose, in the sense intended by Campbell. Our court's exemplary discussion in
HathiTrust informs our ruling. That case involved a dispute that is closely related,
although not identical, to this one. Authors brought claims of copyright
infringement against HathiTrust, an entity formed by libraries participating in the
Google Library Project to pool the digital copies of their books created for them by
Google. The suit challenged various usages HathiTrust made of the digital copies.
Among the challenged uses was HathiTrust's offer to its patrons of "full-text
searches," which, very much like the search offered by Google Books to Internet
users, permitted patrons of the libraries to locate in which of the digitized books
specific words or phrases appeared[ … ]8. (HathiTrust's search facility did not
include the snippet view function, or any other display of text.) We concluded that
both the making of the digital copies and the use of those copies to offer the search
tool were fair uses[ … ]5.
Notwithstanding that the libraries had downloaded and stored complete digital
copies of entire books, we noted that such copying was essential to permit searchers
to identify and locate the books in which words or phrases of interest to them
appeared[ … ]7. We concluded "that the creation of a full-text searchable database
is a quintessentially transformative use . . . [as] the result of a word search is
different in purpose, character, expression, meaning, and message from the page
(and the book) from which it is drawn.[ … ]d. We cited A.V. ex rel. Vanderhye v.
iParadigms, LLC, 562 F.3d 630, 639-40 (4th Cir. 2009), Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007), and Kelly v. Arriba Soft
Corp., 336 F.3d 811, 819 (9th Cir. 2003) as examples of cases in which courts had
similarly found the creation of complete digital copies of copyrighted works to be
transformative fair uses when the copies "served a different function from the
original.[ … ]7.
As with HathiTrust (and iParadigms), the purpose of Google's copying of the

original copyrighted books is to make available significant information about those
books, permitting a searcher to identify those that contain a word or term of
interest, as well as those that do not include reference to it. In addition, through the
ngrams tool, Google allows readers to learn the frequency of usage of selected
words in the aggregate corpus of published books in different historical periods. We
have no doubt that the purpose of this copying is the sort of transformative purpose
described in Campbell as strongly favoring satisfaction of the first facto[ … ]
w.
(3) Snippet View.

Plaintiffs correctly point out that this case is significantly different from HathiTrust
in that the Google Books search function allows searchers to read snippets from the
book searched, whereas HathiTrust did not allow searchers to view any part of the
book. Snippet view adds important value to the basic transformative search
function, which tells only whether and how often the searched term appears in the
book. Merely knowing that a term of interest appears in a book does not necessarily
tell the searcher whether she needs to obtain the book, because it does not reveal
whether the term is discussed in a manner or context falling within the scope of the
441
searcher's interest. For example, a searcher seeking books that explore Einstein's
theories, who finds that a particular book includes 39 usages of "Einstein," will
nonetheless conclude she can skip that book if the snippets reveal that the book
speaks of "Einstein" because that is the name of the author's cat. In contrast, the
snippet will tell the searcher that this is a book she needs to obtain if the snippet
shows that the author is engaging with Einstein's theories.
Google's division of the page into tiny snippets is designed to show the searcher
just enough context surrounding the searched term to help her evaluate whether the
book falls within the scope of her interest (without revealing so much as to threaten
the author's copyright interests). Snippet view thus adds importantly to the highly
transformative purpose of identifying books of interest to the searcher. With respect
to the first factor test, it favors a finding of fair use (unless the value of its
transformative purpose is overcome by its providing text in a manner that offers a
competing substitute for Plaintiffs' books, which we discuss under factors three and
four below).
(4) Google's Commercial Motivation.

Plaintiffs also contend that Google's commercial motivation weighs in their favor
under the first factor. Google's commercial motivation distinguishes this case from
HathiTrust, as the defendant in that case was a non-profit entity founded by, and
acting as the representative of, libraries. Although Google has no revenues flowing
directly from its operation of the Google Books functions, Plaintiffs stress that
Google is profit-motivated and seeks to use its dominance of book search to fortify
its overall dominance of the Internet search market, and that thereby Google
indirectly reaps profits from the Google Books functions.
For these arguments Plaintiffs rely primarily on two sources. First is Congress's
specification in spelling out the first fair use factor in the text of § 107 that
consideration of the "purpose and character of the [secondary] use" should
"include[e] whether such use is of a commercial nature or is for nonprofit
educational purposes." Second is the Supreme Court's assertion in dictum in Sony
Corporation of America v. Universal City Studios, Inc, that "every commercial use
of copyrighted material is presumptively . . . unfair.[ … ]). If that were the extent of
precedential authority on the relevance of commercial motivation, Plaintiffs'
arguments would muster impressive support. However, while the commercial
motivation of the secondary use can undoubtedly weigh against a finding of fair use
in some circumstances, the Supreme Court, our court, and others have eventually
recognized that the Sony dictum was enormously overstate[ … ]9]
The Sixth Circuit took the Sony dictum at its word in Acuff-Rose Music, Inc. v.
Campbell, concluding that, because the defendant rap music group's spoof of the
plaintiff's ballad was done for profit, it could not be fair use[ … ]). The Supreme
Court reversed on this very point, observing that "Congress could not have
intended" such a broad presumption against commercial fair uses, as "nearly all of
the illustrative uses listed in the preamble paragraph of § 107 . . . are generally
conducted for profit in this country." Campbell, 510 U.S. at 584 (internal quotation
marks and citations omitted). The Court emphasized Congress's statement in the
House Report to the effect that the commercial or nonprofit character of a work is
"not conclusive" but merely "a fact to be `weighed along with other[s] in fair use
decisions.[ … ]). In explaining the first fair use factor, the Court clarified that "the
ChapterNumber:
442
more transformative the [secondary] work, the less will be the significance of other
factors, like commercialism, that may weigh against a finding of fair use.[ … ]9.
Our court has since repeatedly rejected the contention that commercial motivation
should outweigh a convincing transformative purpose and absence of significant
substitutive competition with the original[ … ]).
While we recognize that in some circumstances, a commercial motivation on the

part of the secondary user will weigh against her, especially, as the Supreme Court
suggested, when a persuasive transformative purpose is lacking[ … ]9, we see no
reason in this case why Google's overall profit motivation should prevail as a
reason for denying fair use over its highly convincing transformative purpose,
together with the absence of significant substitutive competition, as reasons for
granting fair use. Many of the most universally accepted forms of fair use, such as
news reporting and commentary, quotation in historical or analytic books, reviews
of books, and performances, as well as parody, are all normally done commercially
for profi[ … ] 0]
B. Factor Two
The second fair use factor directs consideration of the "nature of the copyrighted
work." While the "transformative purpose" inquiry discussed above is
conventionally treated as a part of first factor analysis, it inevitably involves the
second factor as well. One cannot assess whether the copying work has an objective
that differs from the original without considering both works, and their respective
objectives.
The second factor has rarely played a significant role in the determination of a fair
use dispute[ … ]). The Supreme Court in Harper & Row made a passing
observation in dictum that, "[t]he law generally recognizes a greater need to
disseminate factual works than works of fiction or fantasy.[ … ]). Courts have
sometimes speculated that this might mean that a finding of fair use is more favored
when the copying is of factual works than when copying is from works of fiction.
However, while the copyright does not protect facts or ideas set forth in a work, it
does protect that author's manner of expressing those facts and ideas. At least
unless a persuasive fair use justification is involved, authors of factual works, like
authors of fiction, should be entitled to copyright protection of their protected
expression. The mere fact that the original is a factual work therefore should not
imply that others may freely copy it. Those who report the news undoubtedly create
factual works. It cannot seriously be argued that, for that reason, others may freely
copy and re-disseminate news reports. [21]
In considering the second factor in HathiTrust, we concluded that it was "not

dispositive,[ … ]8, commenting that courts have hardly ever found that the second
factor in isolation played a large role in explaining a fair use decision. The same is
true here. While each of the three Plaintiffs' books in this case is factual, we do not
consider that as a boost to Google's claim of fair use. If one (or all) of the plaintiff
works were fiction, we do not think that would change in any way our appraisal.
Nothing in this case influences us one way or the other with respect to the second
factor considered in isolation. To the extent that the "nature" of the original
copyrighted work necessarily combines with the "purpose and character" of the
secondary work to permit assessment of whether the secondary work uses the
443
original in a "transformative" manner, as the term is used in Campbell, the second

factor favors fair use not because Plaintiffs' works are factual, but because the
secondary use transformatively provides valuable information about the original,
rather than replicating protected expression in a manner that provides a meaningful
substitute for the original.
C. Factor Three
The third statutory factor instructs us to consider "the amount and substantiality of
the portion used in relation to the copyrighted work as a whole." The clear
implication of the third factor is that a finding of fair use is more likely when small
amounts, or less important passages, are copied than when the copying is extensive,
or encompasses the most important parts of the origina[ … ]2] The obvious reason
for this lies in the relationship between the third and the fourth factors. The larger
the amount, or the more important the part, of the original that is copied, the greater
the likelihood that the secondary work might serve as an effectively competing
substitute for the original, and might therefore diminish the original rights holder's
sales and profits.
(1) Search Function.

The Google Books program has made a digital copy of the entirety of each of
Plaintiffs' books. Notwithstanding the reasonable implication of Factor Three that
fair use is more likely to be favored by the copying of smaller, rather than larger,
portions of the original, courts have rejected any categorical rule that a copying of
the entirety cannot be a fair us[ … ]3] Complete unchanged copying has repeatedly
been found justified as fair use when the copying was reasonably appropriate to
achieve the copier's transformative purpose and was done in such a manner that it
did not offer a competing substitute for the origina[ … ]4] The Supreme Court said
in Campbell that "the extent of permissible copying varies with the purpose and
character of the use" and characterized the relevant questions as whether "the
amount and substantiality of the portion used . . . are reasonable in relation to the
purpose of the copying,[ … ]7, noting that the answer to that question will be
affected by "the degree to which the [copying work] may serve as a market
substitute for the original or potentially licensed derivatives,[ … ]").
In HathiTrust, our court concluded in its discussion of the third factor that
"[b]ecause it was reasonably necessary for the [HathiTrust Digital Library] to make
use of the entirety of the works in order to enable the full-text search function, we
do not believe the copying was excessive.[ … ]8. As with HathiTrust, not only is
the copying of the totality of the original reasonably appropriate to Google's
transformative purpose, it is literally necessary to achieve that purpose. If Google
copied less than the totality of the originals, its search function could not advise
searchers reliably whether their searched term appears in a book (or how many
times).
While Google makes an unauthorized digital copy of the entire book, it does not
reveal that digital copy to the public. The copy is made to enable the search
functions to reveal limited, important information about the books. With respect to
ChapterNumber:
444
the search function, Google satisfies the third factor test, as illuminated by the
Supreme Court in Campbell.
(2) Snippet View.

Google's provision of snippet view makes our third factor inquiry different from
that inquiry in HathiTrust. What matters in such cases is not so much "the amount
and substantiality of the portion used" in making a copy, but rather the amount and
substantiality of what is thereby made accessible to a public for which it may serve
as a competing substitute. In HathiTrust, notwithstanding the defendant's full-text
copying, the search function revealed virtually nothing of the text of the originals to
the public. Here, through the snippet view, more is revealed to searchers than in
HathiTrust.
Without doubt, enabling searchers to see portions of the copied texts could have
determinative effect on the fair use analysis. The larger the quantity of the
copyrighted text the searcher can see and the more control the searcher can exercise
over what part of the text she sees, the greater the likelihood that those revelations
could serve her as an effective, free substitute for the purchase of the plaintiff's
book. We nonetheless conclude that, at least as presently structured by Google, the
snippet view does not reveal matter that offers the marketplace a significantly
competing substitute for the copyrighted work.
Google has constructed the snippet feature in a manner that substantially protects
against its serving as an effectively competing substitute for Plaintiffs' books. In the
Background section of this opinion, we describe a variety of limitations Google
imposes on the snippet function. These include the small size of the snippets
(normally one eighth of a page), the blacklisting of one snippet per page and of one
page in every ten, the fact that no more than three snippets are shown—and no more
than one per page—for each term searched, and the fact that the same snippets are
shown for a searched term no matter how many times, or from how many different
computers, the term is searched. In addition, Google does not provide snippet view
for types of books, such as dictionaries and cookbooks, for which viewing a small
segment is likely to satisfy the searcher's need. The result of these restrictions is, so
far as the record demonstrates, that a searcher cannot succeed, even after long
extended effort to multiply what can be revealed, in revealing through a snippet
search what could usefully serve as a competing substitute for the original.
The blacklisting, which permanently blocks about 22% of a book's text from
snippet view, is by no means the most important of the obstacles Google has
designed. While it is true that the blacklisting of 22% leaves 78% of a book
theoretically accessible to a searcher, it does not follow that any large part of that
78% is in fact accessible. The other restrictions built into the program work
together to ensure that, even after protracted effort over a substantial period of time,
only small and randomly scattered portions of a book will be accessible. In an effort
to show what large portions of text searchers can read through persistently
augmented snippet searches, Plaintiffs' counsel employed researchers over a period
of weeks to do multiple word searches on Plaintiffs' books. In no case were they
able to access as much as 16% of the text, and the snippets collected were usually
not sequential but scattered randomly throughout the book. Because Google's
snippets are arbitrarily and uniformly divided by lines of text, and not by complete
sentences, paragraphs, or any measure dictated by content, a searcher would have
445
great difficulty constructing a search so as to provide any extensive information

about the book's use of that term. As snippet view never reveals more than one
snippet per page in response to repeated searches for the same term, it is at least
difficult, and often impossible, for a searcher to gain access to more than a single
snippet's worth of an extended, continuous discussion of the term.
The fact that Plaintiffs' searchers managed to reveal nearly 16% of the text of
Plaintiffs' books overstates the degree to which snippet view can provide a
meaningful substitute. At least as important as the percentage of words of a book
that are revealed is the manner and order in which they are revealed. Even if the
search function revealed 100% of the words of the copyrighted book, this would be
of little substitutive value if the words were revealed in alphabetical order, or any
order other than the order they follow in the original book. It cannot be said that a
revelation is "substantial" in the sense intended by the statute's third factor if the
revelation is in a form that communicates little of the sense of the original. The
fragmentary and scattered nature of the snippets revealed, even after a determined,
assiduous, time-consuming search, results in a revelation that is not "substantial,"
even if it includes an aggregate 16% of the text of the book. If snippet view could
be used to reveal a coherent block amounting to 16% of a book, that would raise a
very different question beyond the scope of our inquiry.
D. Factor Four
The fourth fair use factor, "the effect of the [copying] use upon the potential market
for or value of the copyrighted work," focuses on whether the copy brings to the
marketplace a competing substitute for the original, or its derivative, so as to
deprive the rights holder of significant revenues because of the likelihood that
potential purchasers may opt to acquire the copy in preference to the original.
Because copyright is a commercial doctrine whose objective is to stimulate
creativity among potential authors by enabling them to earn money from their
creations, the fourth factor is of great importance in making a fair use
assessment[ … ]).
Campbell stressed the close linkage between the first and fourth factors, in that the
more the copying is done to achieve a purpose that differs from the purpose of the
original, the less likely it is that the copy will serve as a satisfactory substitute for
the original[ … ]1. Consistent with that observation, the HathiTrust court found that
the fourth factor favored the defendant and supported a finding of fair use because
the ability to search the text of the book to determine whether it includes selected
words "does not serve as a substitute for the books that are being searched. [ … ]0.
However, Campbell's observation as to the likelihood of a secondary use serving as

an effective substitute goes only so far. Even if the purpose of the copying is for a
valuably transformative purpose, such copying might nonetheless harm the value of
the copyrighted original if done in a manner that results in widespread revelation of
sufficiently significant portions of the original as to make available a significantly
competing substitute. The question for us is whether snippet view, notwithstanding
its transformative purpose, does that. We conclude that, at least as snippet view is
presently constructed, it does not.
Especially in view of the fact that the normal purchase price of a book is relatively
low in relation to the cost of manpower needed to secure an arbitrary assortment of
ChapterNumber:
446
randomly scattered snippets, we conclude that the snippet function does not give
searchers access to effectively competing substitutes. Snippet view, at best and after
a large commitment of manpower, produces discontinuous, tiny fragments,
amounting in the aggregate to no more than 16% of a book. This does not threaten
the rights holders with any significant harm to the value of their copyrights or
diminish their harvest of copyright revenue.
We recognize that the snippet function can cause some loss of sales. There are
surely instances in which a searcher's need for access to a text will be satisfied by
the snippet view, resulting in either the loss of a sale to that searcher, or reduction
of demand on libraries for that title, which might have resulted in libraries
purchasing additional copies. But the possibility, or even the probability or
certainty, of some loss of sales does not suffice to make the copy an effectively
competing substitute that would tilt the weighty fourth factor in favor of the rights
holder in the original. There must be a meaningful or significant effect "upon the
potential market for or value of the copyrighted work.[ … ]).
Furthermore, the type of loss of sale envisioned above will generally occur in
relation to interests that are not protected by the copyright. A snippet's capacity to
satisfy a searcher's need for access to a copyrighted book will at times be because
the snippet conveys a historical fact that the searcher needs to ascertain. For
example, a student writing a paper on Franklin D. Roosevelt might need to learn the
year Roosevelt was stricken with polio. By entering "Roosevelt polio" in a Google
Books search, the student would be taken to (among numerous sites) a snippet from
page 31 of Richard Thayer Goldberg's The Making of Franklin D. Roosevelt (1981),
telling that the polio attack occurred in 1921. This would satisfy the searcher's need
for the book, eliminating any need to purchase it or acquire it from a library. But
what the searcher derived from the snippet was a historical fact. Author Goldberg's
copyright does not extend to the facts communicated by his book. It protects only
the author's manner of expression[ … ]). Google would be entitled, without
infringement of Goldberg's copyright, to answer the student's query about the year
Roosevelt was afflicted, taking the information from Goldberg's book. The fact that,
in the case of the student's snippet search, the information came embedded in three
lines of Goldberg's writing, which were superfluous to the searcher's needs, would
not change the taking of an unprotected fact into a copyright infringement.
Even if the snippet reveals some authorial expression, because of the brevity of a
single snippet and the cumbersome, disjointed, and incomplete nature of the
aggregation of snippets made available through snippet view, we think it would be a
rare case in which the searcher's interest in the protected aspect of the author's
work would be satisfied by what is available from snippet view, and rarer still—
because of the cumbersome, disjointed, and incomplete nature of the aggregation of
snippets made available through snippet view—that snippet view could provide a
significant substitute for the purchase of the author's book.
Accordingly, considering the four fair use factors in light of the goals of copyright,
we conclude that Google's making of a complete digital copy of Plaintiffs' works
for the purpose of providing the public with its search and snippet view functions
(at least as snippet view is presently designed) is a fair use and does not infringe
Plaintiffs' copyrights in their books.
447
III. Derivative Rights in Search and Snippet

View
Plaintiffs next contend that, under Section 106(2), they have a derivative right in
the application of search and snippet view functions to their works, and that Google
has usurped their exclusive market for such derivatives.
There is no merit to this argument. As explained above, Google does not infringe
Plaintiffs' copyright in their works by making digital copies of them, where the
copies are used to enable the public to get information about the works, such as
whether, and how often they use specified words or terms (together with peripheral
snippets of text, sufficient to show the context in which the word is used but too
small to provide a meaningful substitute for the work's copyrighted expression).
The copyright resulting from the Plaintiffs' authorship of their works does not
include an exclusive right to furnish the kind of information about the works that
Google's programs provide to the public. For substantially the same reasons, the
copyright that protects Plaintiffs' works does not include an exclusive derivative
right to supply such information through query of a digitized copy.
The extension of copyright protection beyond the copying of the work in its original
form to cover also the copying of a derivative reflects a clear and logical policy
choice. An author's right to control and profit from the dissemination of her work
ought not to be evaded by conversion of the work into a different form. The author
of a book written in English should be entitled to control also the dissemination of
the same book translated into other languages, or a conversion of the book into a
film. The copyright of a composer of a symphony or song should cover also
conversions of the piece into scores for different instrumentation, as well as into
recordings of performances.
This policy is reflected in the statutory definition, which explains the scope of the
"derivative" largely by examples—including "a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound recording, art
reproduction, abridgement, [or] condensation"—before adding, "or any other form
in which a work may be recast, transformed, or adapted." 17 U.S.C. § 10[ … ] 5] As
noted above, this definition, while imprecise, strongly implies that derivative works
over which the author of the original enjoys exclusive rights ordinarily are those
that re-present the protected aspects of the original work, i.e., its expressive
content, converted into an altered form, such as the conversion of a novel into a
film, the translation of a writing into a different language, the reproduction of a
painting in the form of a poster or post card, recreation of a cartoon character in the
form of a three-dimensional plush toy, adaptation of a musical composition for
different instruments, or other similar conversions. If Plaintiffs' claim were based
on Google's converting their books into a digitized form and making that digitized
version accessible to the public, their claim would be strong. But as noted above,
Google safeguards from public view the digitized copies it makes and allows access
only to the extent of permitting the public to search for the very limited information
accessible through the search function and snippet view. The program does not
allow access in any substantial way to a book's expressive content. Nothing in the
statutory definition of a derivative work, or of the logic that underlies it, suggests
that the author of an original work enjoys an exclusive derivative right to supply
information about that work of the sort communicated by Google's search functions.
ChapterNumber:
448
Plaintiffs seek to support their derivative claim by a showing that there exist, or
would have existed, paid licensing markets in digitized works, such as those
provided by the Copyright Clearance Center or the previous, revenue-generating
version of the Google Partners Program. Plaintiffs also point to the proposed
settlement agreement rejected by the district court in this case, according to which
Google would have paid authors for its use of digitized copies of their works. The
existence or potential existence of such paid licensing schemes does not support
Plaintiffs' derivative argument. The access to the expressive content of the original
that is or would have been provided by the paid licensing arrangements Plaintiffs
cite is far more extensive than that which Google's search and snippet view
functions provide. Those arrangements allow or would have allowed public users to
read substantial portions of the book. Such access would most likely constitute
copyright infringement if not licensed by the rights holders. Accordingly, such
arrangements have no bearing on Google's present programs, which, in a non-
infringing manner, allow the public to obtain limited data about the contents of the
book, without allowing any substantial reading of its text.
Plaintiffs also seek to support their derivative claim by a showing that there is a
current unpaid market in licenses for partial viewing of digitized books, such as the
licenses that publishers currently grant to the Google Partners program and
Amazon's Search Inside the Book program to display substantial portions of their
books. Plaintiffs rely on Infinity Broadcast Corporation v. Kirkwood, 150 F.3d 104
(2nd Cir. 1998) and United States v. American Society of Composers, Authors and
Publishers (ASCAP), 599 F. Supp. 2d 415 (S.D.N.Y. 2009) for the proposition that
"a secondary use that replaces a comparable service licensed by the copyright
holder, even without charge, may cause market harm.[ … ]1. In the cases cited,
however, the purpose of the challenged secondary uses was not the dissemination of
information about the original works, which falls outside the protection of the
copyright, but was rather the re-transmission, or re-dissemination, of their
expressive content. Those precedents do not support the proposition Plaintiffs assert
—namely that the availability of licenses for providing unprotected information
about a copyrighted work, or supplying unprotected services related to it, gives the
copyright holder the right to exclude others from providing such information or
services.
While the telephone ringtones at issue in the ASCAP case Plaintiffs cite are
superficially comparable to Google's snippets in that both consist of brief segments
of the copyrighted work, in a more significant way they are fundamentally
different. While it is true that Google's snippets display a fragment of expressive
content, the fragments it displays result from the appearance of the term selected by
the searcher in an otherwise arbitrarily selected snippet of text. Unlike the reading
experience that the Google Partners program or the Amazon Search Inside the Book
program provides, the snippet function does not provide searchers with any
meaningful experience of the expressive content of the book. Its purpose is not to
communicate copyrighted expression, but rather, by revealing to the searcher a tiny
segment surrounding the searched term, to give some minimal contextual
information to help the searcher learn whether the book's use of that term will be of
interest to her. The segments taken from copyrighted music as ringtones, in
contrast, are selected precisely because they play the most famous, beloved
passages of the particular piece—the expressive content that members of the public
want to hear when their phone rings. The value of the ringtone to the purchaser is
not that it provides information but that it provides a mini-performance of the most
appealing segment of the author's expressive content. There is no reason to think
449
the courts in the cited cases would have come to the same conclusion if the service
being provided by the secondary user had been simply to identify to a subscriber in
what key a selected composition was written, the year it was written, or the name of
the composer. These cases, and the existence of unpaid licensing schemes for
substantial viewing of digitized works, do not support Plaintiffs' derivative works
argument.
IV. Plaintiffs' Exposure to Risks of Hacking of

Google's Files
Plaintiffs argue that Google's storage of its digitized copies of Plaintiffs' books
exposes them to the risk that hackers might gain access and make the books widely
available, thus destroying the value of their copyrights. Unlike the Plaintiffs'
argument just considered based on a supposed derivative right to supply
information about their books, this claim has a reasonable theoretical basis. If, in
the course of making an arguable fair use of a copyrighted work, a secondary user
unreasonably exposed the rights holder to destruction of the value of the copyright
resulting from the public's opportunity to employ the secondary use as a substitute
for purchase of the original (even though this was not the intent of the secondary
user), this might well furnish a substantial rebuttal to the secondary user's claim of
fair use. For this reason, the Arriba Soft and Perfect 10 courts, in upholding the
secondary user's claim of fair use, observed that thumbnail images, which
transformatively provided an Internet pathway to the original images, were of
sufficiently low resolution that they were not usable as effective substitutes for the
originals[ … ]5.
While Plaintiffs' claim is theoretically sound, it is not supported by the evidence. In

HathiTrust, we faced substantially the same exposure-to-piracy argument. The
record in HathiTrust, however, "document[ed] the extensive security measures [the
secondary user] ha[d] undertaken to safeguard against the risk of a data breach,"
evidence which was unrebutted[ … ]0. The HathiTrust court thus found "no basis . .
. on which to conclude that a security breach is likely to occur, much less one that
would result in the public release of the specific copyrighted works belonging to
any of the plaintiffs in this case.[ … ]).
Google has documented that Google Books' digital scans are stored on computers
walled off from public Internet access and protected by the same impressive
security measures used by Google to guard its own confidential information. As
Google notes, Plaintiffs' own security expert praised these security systems,
remarking that "Google is fortunate to have ample resources and top-notch
technical talents" that enable it to protect its data[ … ]0. Nor have Plaintiffs
identified any thefts from Google Books (or from the Google Library Project)
[ … ]g. Google has made a sufficient showing of protection of its digitized copies
of Plaintiffs' works to carry its burden on this aspect of its claim of fair use and thus
to shift to Plaintiffs the burden of rebutting Google's showing. Plaintiffs' effort to
do so falls far short.
V. Google's Distribution of Digital Copies to

Participant Libraries
ChapterNumber:
450
Finally, Plaintiffs contend that Google's distribution to a participating library of a

digital copy of Plaintiffs' books is not a fair use and exposes the Plaintiffs to risks
of loss if the library uses its digital copy in an infringing manner, or if the library
fails to maintain security over its digital copy with the consequence that the book
may become freely available as a result of the incursions of hackers. The claim
fails.
Although Plaintiffs describe the arrangement between Google and the libraries in
more nefarious terms, those arrangements are essentially that each participant
library has contracted with Google that Google will create for it a digital copy of
each book the library submits to Google, so as to permit the library to use its digital
copy in a non-infringing fair use manner. The libraries propose to use their digital
copies to enable the very kinds of searches that we here hold to be fair uses in
connection with Google's offer of such searches to the Internet public, and which
we held in HathiTrust to be fair uses when offered by HathiTrust to its users. The
contract between Google and each of the participating libraries commits the library
to use its digital copy only in a manner consistent with the copyright law, and to
take precautions to prevent dissemination of their digital copies to the public at
large.
In these circumstances, Google's creation for each library of a digital copy of that
library's already owned book in order to permit that library to make fair use through
provision of digital searches is not an infringement. If the library had created its
own digital copy to enable its provision of fair use digital searches, the making of
the digital copy would not have been infringement. Nor does it become an
infringement because, instead of making its own digital copy, the library contracted
with Google that Google would use its expertise and resources to make the digital
conversion for the library's benefit.
We recognize the possibility that libraries may use the digital copies Google created
for them in an infringing manner. If they do, such libraries may be liable to
Plaintiffs for their infringement. It is also possible that, in such a suit, Plaintiffs
might adduce evidence that Google was aware of or encouraged such infringing
practices, in which case Google could be liable as a contributory infringer. But on
the present record, the possibility that libraries may misuse their digital copies is
sheer speculation. Nor is there any basis on the present record to hold Google liable
as a contributory infringer based on the mere speculative possibility that libraries,
in addition to, or instead of, using their digital copies of Plaintiffs' books in a non-
infringing manner, may use them in an infringing manner.
We recognize the additional possibility that the libraries might incur liability by
negligent mishandling of, and failure to protect, their digital copies, leaving them
unreasonably vulnerable to hacking. That also, however, is nothing more than a
speculative possibility. There is no basis in the record to impose liability on Google
for having lawfully made a digital copy for a participating library so as to enable
that library to make non-infringing use of its copy, merely because of the
speculative possibility that the library may fail to guard sufficiently against the
dangers of hacking, as it is contractually obligated to do. Plaintiffs have failed to
establish any basis for holding Google liable for its creation of a digital copy of a
book submitted to it by a participating library so as to enable that library to make
fair use of i[ … ] 7]
In sum, we conclude that: (1) Google's unauthorized digitizing of copyright-

protected works, creation of a search functionality, and display of snippets from
451
those works are non-infringing fair uses. The purpose of the copying is highly
transformative, the public display of text is limited, and the revelations do not
provide a significant market substitute for the protected aspects of the originals.
Google's commercial nature and profit motivation do not justify denial of fair use.
(2) Google's provision of digitized copies to the libraries that supplied the books,
on the understanding that the libraries will use the copies in a manner consistent
with the copyright law, also does not constitute infringement. Nor, on this record, is
Google a contributory infringer.
CONCLUSION
The judgment of the district court is AFFIRME[ … ][ … ]
B

[1] The Authors Guild, a membership organization of published authors, is also a

plaintiff and appellant, seeking injunctive and declaratory relief on behalf of its
members. However, in a separate case, this court found that, under the Copyright
Act, the Authors Guild lacks standing to sue for copyright infringement on its
members' behalf. Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 94 (2d Cir. 2014).
As the three individual author-plaintiffs clearly do have standing, their suit and
their appeal are properly adjudicated, notwithstanding the Authors Guild's lack of
standing[ … ]).
[2] Google now honors requests to remove books from snippet view. Some
Plaintiffs appear to have had books removed from snippet view.
[3] Libraries participating in the Library Project at the time the suit was filed
included the University of Michigan, the University of California, Harvard
University, Stanford University, Oxford University, Columbia University, Princeton
University, Ghent University, Keio University, the Austrian National Library, and
the New York Public Library.
[4] Appendix A exhibits, as an example, a web page that would be revealed to a

searcher who entered the phase "fair use," showing snippets from ALAN
LATMAN, ROBERT A. GORMAN, & JANE C. GINSBURG, COPYRIGHT FOR
THE EIGHTIES (1985).
[5] Appendix B exhibits the ngram for the phrase "fair use."
[6] For discussions and examples of scholarship and journalism powered by

searchable digital text repositories, see, e.g., David Bamman & David Smith,
Extracting Two Thousand Years of Latin from a Million Book Library, J.
COMPUTING & CULTURAL HERITAGE 5 (2012), 1-13; Jean-Baptiste Michel et
al., Quantitative Analysis of Culture Using Millions of Digitized Books, SCIENCE
331 (Jan. 14, 2011), 176-182; Marc Egnal, Evolution of the Novel in the United
States: The Statistical Evidence, 37 SOC. SCI. HIST. 231 (2013); Catherine
Rampell, The `New Normal' Is Actually Pretty Old, N.Y. TIMES ECONOMIX
BLOG (Jan. 11, 2011), http://economix.blogs.nytimes.com/2011/01/11/the-new-
ChapterNumber:
452
normal-is-actually-pretty-old/?_r=0; and Christopher Forstall et al., Modeling the

Scholars: Detecting Intertextuality through Enhanced Word-Level N-Gram
Matching, DIGITAL SCHOLARSHIP IN THE HUMANITIES (May 15, 2014),
http://dx.doi.org/10.1093/llc/fqu014.
[7] For unconventionally formatted books, the number of snippets per page may
vary so as to approximate the same effect. The pages of a book of unusually tall,
narrow format may be divided into more than eight horizontal snippets, while the
pages of an unusually wide, short book may be divided into fewer than eight
snippets.
[8] For example, the "Cooperative Agreement" between Google and the University
of Michigan ("U of M") provides, inter alia, that:
Both Google and U of M agree and intend to perform this Agreement pursuant to
copyright law. If at any time, either party becomes aware of copyright infringement
under this agreement, that party shall inform the other as quickly as reasonably
possible. . . . U of M shall have the right to use the U of M Digital Copy . . . as part
of services offered on U of M's website. U of M shall implement technological
measures (e.g., through use of the robots.txt protocol) to restrict automated access
to any portion of the U of M Digital Copy or the portions of the U of M website on
which any portion of the U of M Digital Copy is available. U of M shall also make
reasonable efforts (including but not limited to restrictions placed in Terms of Use
for the U of M website) to prevent third parties from (a) downloading or otherwise
obtaining any portion of the U of M Digital Copy for commercial purposes, (b)
redistributing any portions of the U of M Digital Copy, or (c) automated and
systematic downloading from its website image files from the U of M Digital Copy.
U of M shall restrict access to the U of M Digital Copy to those persons having a
need to access such materials and shall also cooperate in good faith with Google to
mutually develop methods and systems for ensuring that the substantial portions of
the U of M Digital Copy are not downloaded from the services offered on U of M's
website or otherwise disseminated to the public at large.
JA 233.
Google's agreement with Stanford appears to be less restrictive on Stanford than its
agreements with other libraries. It ostensibly permits Stanford's libraries to "provide
access to or copies from the Stanford Digital Copy" to a wide range of users,
including individuals authorized to access the Stanford University Network,
individuals affiliated with "partner research libraries," and "education, research,
government institutions and libraries not affiliated with Stanford," CA 133, and to
permit authorized individuals to download or print up to ten percent of Stanford
Digital Copy. On the other hand, the agreement requires Stanford to employ its
digital copies in conformity with the copyright law. Without evidence to the
contrary, which Plaintiffs have not provided, it seems reasonable to construe these
potentially conflicting provisions as meaning that Stanford may do the enumerated
things ostensibly permitted only to the extent that doing so would be in conformity
with the copyright law.
[9] A year earlier, authors brought suit against the HathiTrust Digital Library,
alleging facts that are closely related, although not identical, to those alleged in the
instant case. Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 91 (2d Cir. 2014).
[10] The district court had subject-matter jurisdiction over this federal copyright
action pursuant to 28 U.S.C. §§ 1331 and 1338(a). This court has jurisdiction over
453
the appeal from the final decision of the district court pursuant to 28 U.S.C. § 1291.
We review an order granting summary judgment de novo, drawing all reasonable
factual inferences in favor of the non-moving party. Ment Bros. Iron Works Co.,
Inc. v. Interstate Fire & Cas. Co., 702 F.3d 118, 120-21 (2d Cir. 2012).
[11] A similar message is reflected in England's original copyright enactment, "An

Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in
the Authors," which explains as its purpose "the Encouragement of Learned Men to
Compose and Write useful Books." Statute of Anne [1710].
[12] Id.
[13] The last sentence was added in 1992, rejecting this court's assertion in Salinger
v. Random House, Inc. that unpublished works "normally enjoy insulation from fair
use copying." 811 F.2d 90, 95 (2d Cir. 1987). See Pub. L. 102-492, Oct. 24, 1992,
106 Stat. 3145.
[14] 9 F. Cas. 342, 348 (C.C.D. Mass. 1841) ("[W]e must often, in deciding
questions of this sort, look to the nature and objects of the selections made, the
quantity and value of the materials used, and the degree in which the use may
prejudice the sale, or diminish the profits, or supersede the objects, of the original
work.").
[15] The full text of the statutory definition is as follows: "A `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, abridgement, 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 an original work of authorship, is a `derivative work.'" 17 U.S.C. § 101.
[16] See, e.g., Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1269-1271
(11th Cir. 2001) (copying from original to support parodic criticism of original's
moral code justified as transformative fair use purpose).
[17] See, e.g., HathiTrust, 755 F.3d at 97-98 (justifying as transformative fair use
purpose the digital copying of original for purpose of permitting searchers to
determine whether its text employs particular words); A.V. ex rel. Vanderhye v.
iParadigms, LLC, 562 F.3d 630, 638-640 (4th Cir. 2009) (justifying as
transformative fair use purpose the complete digital copying of a manuscript to
determine whether the original included matter plagiarized from other works);
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007)
(justifying as transformative fair use purpose the use of a digital, thumbnail copy of
the original to provide an Internet pathway to the original); Kelly v. Arriba Soft
Corp., 336 F.3d 811, 818-819 (9th Cir. 2003) (same); Bond v. Blum, 317 F.3d 385
(4th Cir. 2003) (justifying as fair use purpose the copying of author's original
unpublished autobiographical manuscript for the purpose of showing that he
murdered his father and was an unfit custodian of his children); Nuñez v. Carribean
Int'l News Corp., 235 F.3d 18, 21-23 (1st Cir. 2000) (justifying as transformative
fair use purpose a newspaper's copying of a photo of winner of beauty pageant in a
revealing pose for the purpose of informing the public of the reason the winner's
title was withdrawn).
[18] The Seventh Circuit takes the position that the kind of secondary use that
favors satisfaction of the fair use test is better described as a "complementary" use,
ChapterNumber:
454
referring to how a hammer and nail complement one another in that together they
achieve results that neither can accomplish on its own. Ty, Inc. v Publ'ns Int'l, Ltd.,
292 F.3d 512, 517-518 (7th Cir. 2002); see also Kienitz v. Sconnie Nation LLC, 766
F.3d 756, 758 (7th Cir. 2014), cert. denied, 135 S. Ct. 1555 (2015); WILLIAM M.
LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF
INTELLECTUAL PROPERTY LAW 153-154 (2003). We do not find the term
"complementary" particularly helpful in explaining fair use. The term would
encompass changes of form that are generally understood to produce derivative
works, rather than fair uses, and, at the same time, would fail to encompass copying
for purposes that are generally and properly viewed as creating fair uses. When a
novel is converted into film, for example, the original novel and the film ideally
complement one another in that each contributes to achieving results that neither
can accomplish on its own. The invention of the original author combines with the
cinematographic interpretive skills of the filmmaker to produce something that
neither could have produced independently. Nonetheless, at least when the intention
of the film is to make a "motion picture version" of the novel, 17 U.S.C. § 101,
without undertaking to parody it or to comment on it, the film is generally
understood to be a derivative work, which under § 106, falls within the exclusive
rights of the copyright owner. Although they complement one another, the film is
not a fair use. At the same time, when a secondary work quotes an original for the
purpose of parodying it, or discrediting it by exposing its inaccuracies, illogic, or
dishonesty, such an undertaking is not within the exclusive prerogatives of the
rights holder; it produces a fair use. Yet, when the purpose of the second is
essentially to destroy the first, the two are not comfortably described as
complementaries that combine to produce together something that neither could
have produced independently of the other. We recognize, as just noted above, that
the word "transformative," if interpreted too broadly, can also seem to authorize
copying that should fall within the scope of an author's derivative rights. Attempts
to find a circumspect shorthand for a complex concept are best understood as
suggestive of a general direction, rather than as definitive descriptions.
[19] Campbell, 510 U.S. at 583-84; Cariou v. Prince, 714 F.3d 694, 708 (2d Cir.
2013) cert. denied, 134 S. Ct. 618 (2013); Castle Rock Entm't, Inc. v. Carol Pub.
Grp., Inc., 150 F.3d 132, 141-42 (2d Cir. 1998); Perfect 10, Inc. v. Amazon.com,
Inc., 508 F.3d 1146, 1165 (9th Cir. 2007); Kelly v. Arriba Soft Corp., 336 F.3d 811,
819 (9th Cir. 2003); see also Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1172
(9th Cir. 2012) (noting that Campbell "debunked the notion that Sony called for a
`hard evidentiary presumption' that commercial use is presumptively unfair.")
[20] Just as there is no reason for presuming that a commercial use is not a fair use,
which would defeat the most widely accepted and logically justified areas of fair
use, there is likewise no reason to presume categorically that a nonprofit
educational purpose should qualify as a fair use. Authors who write for educational
purposes, and publishers who invest substantial funds to publish educational
materials, would lose the ability to earn revenues if users were permitted to copy
the materials freely merely because such copying was in the service of a nonprofit
educational mission. The publication of educational materials would be
substantially curtailed if such publications could be freely copied for nonprofit
educational purposes.
[21] We think it unlikely that the Supreme Court meant in its concise dictum that
secondary authors are at liberty to copy extensively from the protected expression
of the original author merely because the material is factual. What the Harper &
455
Row dictum may well have meant is that, because in the case of factual writings,
there is often occasion to test the accuracy of, to rely on, or to repeat their factual
propositions, and such testing and reliance may reasonably require quotation (lest a
change of expression unwittingly alter the facts), factual works often present well
justified fair uses, even if the mere fact that the work is factual does not necessarily
justify copying of its protected expression.
[22] See Harper & Row, 471 U.S. at 564-565 (rejecting fair use defense for copying
of only about 300 words, where the portion copied was deemed "the heart of the
book").
[23] Some copyright scholars have argued this position. See, e.g., Paul Goldstein,
Copyright's Commons, 29 COLUM. J.L. & ARTS 1, 5-6 (2005).
[24] See cases cited supra note 17; see also Bill Graham Archives v. Dorling
Kindersley Ltd., 448 F.3d 605, 613 (2d Cir. 2006) ("[C]opying the entirety of a
work is sometimes necessary to make a fair use of the [work].").
[25] The complete text is set forth at footnote 15, supra.
[26] The filing includes the following disclosure:
Our products and services involve the storage and transmission of users' and
customers' proprietary information, and security breaches could expose us to a risk
of loss of this information, litigation, and potential liability. Our security measures
may be breached due to the actions of outside parties, employee error, malfeasance,
or otherwise, and, as a result, an unauthorized party may obtain access to our data
or our users' or customers' data. Additionally, outside parties may attempt to
fraudulently induce employees, users, or customers to disclose sensitive
information in order to gain access to our data or our users' or customers' data. Any
such breach or unauthorized access could result in significant legal and financial
exposure, damage to our reputation, and a loss of confidence in the security of our
products and services that could potentially have an adverse effect on our business.
Because the techniques used to obtain unauthorized access, disable or degrade
service, or sabotage systems change frequently and often are not recognized until
launched against a target, we may be unable to anticipate these techniques or to
implement adequate preventative measures. If an actual or perceived breach of our
security occurs, the market perception of the effectiveness of our security measures
could be harmed and we could lose users and customers.
JA 562.
[27] We have considered Plaintiffs' other contentions not directly addressed in this
opinion and find them without merit.

9.2.3
Google v. Oracle (SCOTUS 2021), paragraphs 50-

106, 126-163

ChapterNumber:
456
https://ipxcourses.org/C/2021_Oracle_Full.docx

9.2.4
Warhol Foundation v. Goldsmith (2d Cir. 2021)

https://ipxcourses.org/C/2021_Warhol.docx

9.3

Hybrid model of exceptions to

copyright infringement

Exceptions to copyright infringement in India

9.3.1
(India TV) Independent News Services Pvt. Ltd v.

Yashraj Films Pvt. Ltd.


9.3.2
Civic Chandran v. Ammini Amma

http://www.the-laws.com/Encyclopedia/Browse/ShowCase.aspx?
CaseId=116991921000

457
9.3.3
Scaria, 'Delhi University Photocopy Shop

Judgement: A Landmark In The Access To
Knowledge Movement In India'

http://www.livelaw.in/delhi-university-photocopy-shop-judgement-
landmark-access-knowledge-movement-india/

9.3.4
Reddy, 'To Photocopy or Not: Delhi High Courts

Grants Universities Carte Blanche to Photocopy for
Educational Use'

http://ipkitten.blogspot.no/2016/09/to-photocopy-or-not-delhi-high-
courts.html

9.3.5
The Chancellor, Masters & Scholars of University

of Oxford & others v. Rameshwari Photocopy
Services & others - Single Bench Judgement -
September 2016

https://drive.google.com/open?
id=0B3AFErneilW0QXhGRTAwWUhwUjg

9.3.6
The Chancellor, Masters & Scholars of University

of Oxford & others v. Rameshwari Photocopy
Services & others - Division Bench Judgement -
December 2016

ChapterNumber:
458
https://drive.google.com/open?id=0B3AFErneilW0bmlnU2tiYlh0Ujg

459
10
Week 10

ChapterNumber:
460

10.1

Cultural Theory - Moral Rights

10.1.1
Sophie Grais, “The Story of 5Pointz” (2021)

https://ipxcourses.org/C/Grais_5Pointz.pdf

10.1.2
Castillo v. G&M Realty (2d Cir. 2020)

https://ipxcourses.org/C/2020_Castillo.docx

10.1.3
Mannu Bhandari v. Kala Vikas Pictures Pvt. Ltd


10.1.4
Amarnath Sehgal v. Union of India


461
10.2
Traditional Knowledge

10.2.1
William Fisher, 'The Puzzle of Traditional

Knowledge'

https://cyber.harvard.edu/people/tfisher/Fisher_TK_3.pdf

10.2.2
Munzer and Raustiala, "The Uneasy Case for

Traditional Knowledge" (2009)

http://ssrn.com/abstract=1397367

10.2.3
Gopalakrishnan, "Protection of Traditional

Knowledge - The Need for a Sui Generis Law in
India" (2002)

http://onlinelibrary.wiley.com/doi/10.1111/j.1747-
1796.2002.tb00179.x/abstract

ChapterNumber:
462

463
11
Week 11

ChapterNumber:
464

11.1

Secondary Liability

11.1.1
Metro-Goldwyn-Mayer, Inc. v. Grokster

545 U.S. 913

[…]
METRO-GOLDWYN-MAYER STUDIOS
INC. ET AL.
v.
GROKSTER, LTD., ET AL.
[…]
[…]
Decided June 27, 2005.
[…]
JUSTICE SOUTER delivered the opinion of the Court.
The question is under what circumstances the distributor of a product capable of

both lawful and unlawful use is liable [545 U.S. 919] for acts of copyright
infringement by third parties using the product. We hold that one who distributes a
device with the object of promoting its use to infringe copyright, as shown by clear
expression or other affirmative steps taken to foster infringement, is liable for the
resulting acts of infringement by third parties.
A
Respondents, Grokster, Ltd., and StreamCast Networks, Inc., defendants in the trial
court, distribute free software products that allow computer users to share
electronic files through peer-to-peer networks, so called because users' computers
communicate directly with each other, not through [545 U.S. 920] central servers.
465
The advantage of peer-to-peer networks over information networks of other types

shows up in their substantial and growing popularity. Because they need no central
computer server to mediate the exchange of information or files among users, the
high-bandwidth communications capacity for a server may be dispensed with, and
the need for costly server storage space is eliminated. Since copies of a file
(particularly a popular one) are available on many users' computers, file requests
and retrievals may be faster than on other types of networks, and since file
exchanges do not travel through a server, communications can take place between
any computers that remain connected to the network without risk that a glitch in the
server will disable the network in its entirety. Given these benefits in security, cost,
and efficiency, peer-to-peer networks are employed to store and distribute
electronic files by universities, government agencies, corporations, and libraries,
among others. [1]
Other users of peer-to-peer networks include individual recipients of Grokster's and

StreamCast's software, and although the networks that they enjoy through using the
software can be used to share any type of digital file, they have prominently
employed those networks in sharing copyrighted music and video files without
authorization. A group of copyright holders (MGM for short, but including motion
picture studios, recording companies, songwriters, and music publishers) sued
Grokster and StreamCast for their users' copyright infringements, alleging that they
[545 U.S. 921] knowingly and intentionally distributed their software to enable
users to reproduce and distribute the copyrighted works in violation of the
Copyright Act, 17 U. S. C. § 101 et seq. (2000 ed. and Supp. II). [2] MGM sought
damages and an injunction.
Discovery during the litigation revealed the way the software worked, the business
aims of each defendant company, and the predilections of the users. Grokster's
eponymous software employs what is known as FastTrack technology, a protocol
developed by others and licensed to Grokster. StreamCast distributes a very similar
product except that its software, called Morpheus, relies on what is known as
Gnutella technology. [3] A user who downloads and installs either software possesses
the protocol to send requests for files directly to the computers of others using
software compatible with FastTrack or Gnutella. On the FastTrack network opened
by the Grokster software, the user's request goes to a computer given an indexing
capacity by the software and designated a supernode, or to some other computer
with comparable power and capacity to collect temporary indexes of the files
available on the computers of users connected to it. The supernode (or indexing
computer) searches its own index and may communicate the search request to other
supernodes. If the file is found, the supernode discloses its location to the computer
requesting it, and the requesting user can download the file directly from the
computer located. The copied file is placed in a designated sharing folder on the
requesting user's computer, where it is available for other users to download in turn,
along with any other file in that folder.[545 U.S. 922] In the Gnutella network made
available by Morpheus, the process is mostly the same, except that in some versions
of the Gnutella protocol there are no supernodes. In these versions, peer computers
using the protocol communicate directly with each other. When a user enters a
search request into the Morpheus software, it sends the request to computers
connected with it, which in turn pass the request along to other connected peers.
The search results are communicated to the requesting computer, and the user can
download desired files directly from peers' computers. As this description indicates,
Grokster and StreamCast use no servers to intercept the content of the search
requests or to mediate the file transfers conducted by users of the software, there
ChapterNumber:
466
being no central point through which the substance of the communications passes in
either direction. [4]
Although Grokster and StreamCast do not therefore know when particular files are
copied, a few searches using their software would show what is available on the
networks the software reaches. MGM commissioned a statistician to conduct a
systematic search, and his study showed that nearly 90% of the files available for
download on the FastTrack system were copyrighted works. [5] Grokster and
StreamCast dispute this figure, raising methodological problems and arguing that
free copying even of copyrighted works may be authorized by the rightholders.
They also argue that potential noninfringing uses of their software are significant in
kind, even if infrequent in practice. Some musical performers, for example, have
gained new audiences by distributing [545 U.S. 923] their copyrighted works for
free across peer-to-peer networks, and some distributors of unprotected content
have used peer-to-peer networks to disseminate files, Shakespeare being an
example. Indeed, StreamCast has given Morpheus users the opportunity to
download the briefs in this very case, though their popularity has not been
quantified.
As for quantification, the parties' anecdotal and statistical evidence entered thus far
to show the content available on the FastTrack and Gnutella networks does not say
much about which files are actually downloaded by users, and no one can say how
often the software is used to obtain copies of unprotected material. But MGM's
evidence gives reason to think that the vast majority of users' downloads are acts of
infringement, and because well over 100 million copies of the software in question
are known to have been downloaded, and billions of files are shared across the
FastTrack and Gnutella networks each month, the probable scope of copyright
infringement is staggering.
Grokster and StreamCast concede the infringement in most downloads, [ … ]and it

is uncontested that they are aware that users employ their software primarily to
download copyrighted files, even if the decentralized FastTrack and Gnutella
networks fail to reveal which files are being copied, and when. From time to time,
moreover, the companies have learned about their users' infringement directly, as
from users who have sent e-mail to each company with questions about playing
copyrighted movies they had downloaded, to whom the companies have responded
with guidance. [6] [ … ] And MGM notified the companies of 8 million copyrighted
files that could be obtained using their software.
Grokster and StreamCast are not, however, merely passive recipients of information
about infringing use. The record is replete with evidence that from the moment
Grokster [545 U.S. 924] and StreamCast began to distribute their free software,
each one clearly voiced the objective that recipients use it to download copyrighted
works, and each took active steps to encourage infringement.
After the notorious file-sharing service, Napster, was sued by copyright holders for
facilitation of copyright infringement, A&M Records, Inc. v. Napster, Inc., 114 F.
Supp. 2d 896 (ND Cal. 2000), aff'd in part, rev'd in part, 239 F. 3d 1004 (CA9
2001), StreamCast gave away a software program of a kind known as OpenNap,
designed as compatible with the Napster program and open to Napster users for
downloading files from other Napster and OpenNap users' computers. Evidence
indicates that "[i]t was always [StreamCast's] intent to use [its OpenNap network]
to be able to capture email addresses of [its] initial target market so that [it] could
467
promote [its] StreamCast Morpheus interface to them," [ … ] indeed, the OpenNap

program was engineered "`to leverage Napster's 50 million user base,'" [ … ]
StreamCast monitored both the number of users downloading its OpenNap program
and the number of music files they downloaded. [ … ]It also used the resulting
OpenNap network to distribute copies of the Morpheus software and to encourage
users to adopt it. [ … ] Internal company documents indicate that StreamCast hoped
to attract large numbers of former Napster users if that company was shut down by
court order or otherwise, and that StreamCast planned to be the next Napster. [ … ].
A kit developed by StreamCast to be delivered to advertisers, for example,
contained press articles about StreamCast's potential to capture former Napster
users, [ … ] and it introduced itself to some potential advertisers as a company
"which is similar to what Napster was,"[ … ]It broadcast banner advertisements to
users of other Napster-compatible software, urging them to adopt its OpenNap.
[ … ]An internal e-mail from a company executive stated: "`We have put this
network in [545 U.S. 925] place so that when Napster pulls the plug on their free
service . . . or if the Court orders them shut down prior to that . . . we will be
positioned to capture the flood of their 32 million users that will be actively looking
for an alternative.'" [ … ]
Thus, StreamCast developed promotional materials to market its service as the best
Napster alternative. One proposed advertisement read: "Napster Inc. has announced
that it will soon begin charging you a fee. That's if the courts don't order it shut
down first. What will you do to get around it?" Id., at 897. Another proposed ad
touted StreamCast's software as the "#1 alternative to Napster" and asked "[w]hen
the lights went off at Napster . . . where did the users go?" [ … ]StreamCast even
planned to flaunt the illegal uses of its software; when it launched the OpenNap
network, the chief technology officer of the company averred that "[t]he goal is to
get in trouble with the law and get sued. It's the best way to get in the new[s]."
[…]
The evidence that Grokster sought to capture the market of former Napster users is
sparser but revealing, for Grokster launched its own OpenNap system called
Swaptor and inserted digital codes into its Web site so that computer users using
Web search engines to look for "Napster" or "[f]ree file sharing" would be directed
to the Grokster Web site, where they could download the Grokster software.
[ … ]And Grokster's name is an apparent derivative of Napster.
StreamCast's executives monitored the number of songs by certain commercial

artists available on their networks, and an internal communication indicates they
aimed to have a larger number of copyrighted songs available on their networks
[545 U.S. 926] than other file-sharing networks. [ … ] The point, of course, would
be to attract users of a mind to infringe, just as it would be with their promotional
materials developed showing copyrighted songs as examples of the kinds of files
available through Morpheus. Id., at 848. Morpheus in fact allowed users to search
specifically for "Top 40" songs, id., at 735, which were inevitably copyrighted.
Similarly, Grokster sent users a newsletter promoting its ability to provide
particular, popular copyrighted materials. Brief for Motion Picture Studio and
Recording Company Petitioners 7-8.
In addition to this evidence of express promotion, marketing, and intent to promote

further, the business models employed by Grokster and StreamCast confirm that
their principal object was use of their software to download copyrighted works.
Grokster and StreamCast receive no revenue from users, who obtain the software
ChapterNumber:
468
itself for nothing. Instead, both companies generate income by selling advertising
space, and they stream the advertising to Grokster and Morpheus users while they
are employing the programs. As the number of users of each program increases,
advertising opportunities become worth more. [ … ]While there is doubtless some
demand for free Shakespeare, the evidence shows that substantive volume is a
function of free access to copyrighted work. Users seeking Top 40 songs, for
example, or the latest release by Modest Mouse, are certain to be far more
numerous than those seeking a free Decameron, and Grokster and StreamCast
translated that demand into dollars.
Finally, there is no evidence that either company made an effort to filter

copyrighted material from users' downloads or otherwise impede the sharing of
copyrighted files. Although Grokster appears to have sent e-mails warning users
about infringing content when it received threatening notice from the copyright
holders, it never blocked anyone from continuing to use its software to share
copyrighted files. [545 U.S. 927][ … ]. StreamCast not only rejected another
company's offer of help to monitor infringement, id., at 928-929, but blocked the
Internet Protocol addresses of entities it believed were trying to engage in such
monitoring on its networks, id., at 917-922.
B
After discovery, the parties on each side of the case crossmoved for summary
judgment. The District Court limited its consideration to the asserted liability of
Grokster and StreamCast for distributing the current versions of their software,
leaving aside whether either was liable "for damages arising from past versions of
their software, or from other past activities." 259 F. Supp. 2d 1029, 1033 (CD Cal.
2003). The District Court held that those who used the Grokster and Morpheus
software to download copyrighted media files directly infringed MGM's copyrights,
a conclusion not contested on appeal, but the court nonetheless granted summary
judgment in favor of Grokster and StreamCast as to any liability arising from
distribution of the then-current versions of their software. Distributing that software
gave rise to no liability in the court's view, because its use did not provide the
distributors with actual knowledge of specific acts of infringement. Case No. CV 01
08541 SVW (PJWx) (CD Cal., June 18, 2003), App. 1213.
The Court of Appeals affirmed. 380 F. 3d 1154 (CA9 2004). In the court's analysis,
a defendant was liable as a contributory infringer when it had knowledge of direct
infringement and materially contributed to the infringement. But the court read
Sony Corp. of America v. Universal City Studios, Inc., 464 U. S. 417 (1984), as
holding that distribution of a commercial product capable of substantial
noninfringing uses could not give rise to contributory liability for infringement
unless the distributor had actual knowledge of specific instances of infringement
and failed to act on that knowledge. The fact that the software was capable of
substantial noninfringing uses in the Ninth Circuit's view meant [545 U.S. 928] that
Grokster and StreamCast were not liable, because they had no such actual
knowledge, owing to the decentralized architecture of their software. The court also
held that Grokster and StreamCast did not materially contribute to their users'
infringement because it was the users themselves who searched for, retrieved, and
stored the infringing files, with no involvement by the defendants beyond providing
the software in the first place.
469
The Ninth Circuit also considered whether Grokster and StreamCast could be liable
under a theory of vicarious infringement. The court held against liability because
the defendants did not monitor or control the use of the software, had no agreed-
upon right or current ability to supervise its use, and had no independent duty to
police infringement. We granted certiorari. [ … ]
II
A
MGM and many of the amici fault the Court of Appeals's holding for upsetting a
sound balance between the respective values of supporting creative pursuits through
copyright protection and promoting innovation in new communication technologies
by limiting the incidence of liability for copyright infringement. The more artistic
protection is favored, the more technological innovation may be discouraged; the
administration of copyright law is an exercise in managing the tradeoff. See Sony
Corp. v. Universal City Studios[ … ].
The tension between the two values is the subject of this case, with its claim that
digital distribution of copyrighted material threatens copyright holders as never
before, because every copy is identical to the original, copying is easy, [545 U.S.
929] and many people (especially the young) use file-sharing software to download
copyrighted works. This very breadth of the software's use may well draw the
public directly into the debate over copyright policy[ … ], and the indications are
that the ease of copying songs or movies using software like Grokster's and
Napster's is fostering disdain for copyright protection[ … ]. As the case has been
presented to us, these fears are said to be offset by the different concern that
imposing liability, not only on infringers but on distributors of software based on its
potential for unlawful use, could limit further development of beneficial
technologies. [ … ]
The argument for imposing indirect liability in this case is, however, a powerful
one, given the number of infringing downloads that occur every day using
StreamCast's and Grokster's software. When a widely shared service or product is
used to commit infringement, it may be impossible to [545 U.S. 930] enforce rights
in the protected work effectively against all direct infringers, the only practical
alternative being to go against the distributor of the copying device for secondary
liability on a theory of contributory or vicarious infringement. [ … ]
One infringes contributorily by intentionally inducing or encouraging direct

infringement, see Gershwin Pub. Corp. v. Columbia Artists Management, Inc., 443
F. 2d 1159, 1162 (CA2 1971), and infringes vicariously by profiting from direct
infringement while declining to exercise a right to stop or limit it, Shapiro,
Bernstein & Co. v. H. L. Green Co., 316 F. 2d 304, 307 (CA2 1963). [9] Although
"[t]he Copyright Act does not expressly render anyone liable for infringement
committed by another," Sony Corp. v. Universal City Studios, 464 U. S., at 434,
these doctrines of secondary liability emerged from common law principles and are
well established in the law[ … ].
ChapterNumber:
470
B
Despite the currency of these principles of secondary liability, this Court has dealt
with secondary copyright infringement in only one recent case, and because MGM
has tailored its principal claim to our opinion there, a look at our earlier holding is
in order. In Sony Corp. v. Universal City Studios, supra, this Court addressed a
claim that secondary liability for infringement can arise from the very distribution
of a commercial product. There, the product, novel at the time, was what we know
today as the videocassette recorder or VCR. Copyright holders sued Sony as the
manufacturer, claiming it was contributorily liable for infringement that occurred
when VCR owners taped copyrighted programs because it supplied the means used
to infringe, and it had constructive knowledge that infringement would occur. At
the trial on the merits, the evidence showed that the principal use of the VCR was
for "`time-shifting,'" or taping a program for later viewing at a more convenient
time, which the Court found to be a fair, not an infringing, use. [ … ] There was no
evidence that Sony had expressed an object of bringing about taping in violation of
copyright or had taken active steps to increase its profits from unlawful taping. Id.,
at 438. Although Sony's advertisements urged consumers to buy the VCR to
"`record favorite shows'" or "`build a library'" of recorded programs, id., at 459
(Blackmun, J., dissenting), neither of these uses was necessarily infringing, id., at
424, 454-455.
On those facts, with no evidence of stated or indicated intent to promote infringing

uses, the only conceivable basis for imposing liability was on a theory of
contributory infringement arising from its sale of VCRs to consumers with
knowledge that some would use them to infringe. [ … ]But because the VCR was
"capable of commercially significant noninfringing uses," we held the manufacturer
[545 U.S. 932] could not be faulted solely on the basis of its distribution. Id., at
442.
This analysis reflected patent law's traditional staple article of commerce doctrine,
now codified, that distribution of a component of a patented device will not violate
the patent if it is suitable for use in other ways. 35 U. S. C. § 271(c); Aro Mfg. Co.
v. Convertible Top Replacement Co., 377 U. S. 476, 485 (1964) (noting codification
of cases)[ … ]. The doctrine was devised to identify instances in which it may be
presumed from distribution of an article in commerce that the distributor intended
the article to be used to infringe another's patent, and so may justly be held liable
for that infringement. "One who makes and sells articles which are only adapted to
be used in a patented combination will be presumed to intend the natural
consequences of his acts; he will be presumed to intend that they shall be used in
the combination of the patent." [ … ]
In sum, where an article is "good for nothing else" but infringement, [ … ]there is
no legitimate public interest in its unlicensed availability, and there is no injustice
in presuming or imputing an intent to infringe[ … ]. Conversely, the doctrine
absolves the equivocal conduct of selling an item with substantial lawful as well as
unlawful uses, and limits liability to instances of more acute [545 U.S. 933] fault
than the mere understanding that some of one's products will be misused. It leaves
breathing room for innovation and a vigorous commerce. See Sony Corp. v.
Universal City Studios, 464 U. S., at 442; Dawson Chemical Co. v. Rohm & Haas
Co., 448 U. S. 176, 221 (1980); Henry v. A. B. Dick Co., supra, at 48.
471
The parties and many of the amici in this case think the key to resolving it is the
Sony rule and, in particular, what it means for a product to be "capable of
commercially significant noninfringing uses." [ … ] MGM advances the argument
that granting summary judgment to Grokster and StreamCast as to their current
activities gave too much weight to the value of innovative technology, and too little
to the copyrights infringed by users of their software, given that 90% of works
available on one of the networks was shown to be copyrighted. Assuming the
remaining 10% to be its noninfringing use, MGM says this should not qualify as
"substantial," and the Court should quantify Sony to the extent of holding that a
product used "principally" for infringement does not qualify. [ … ] As mentioned
before, Grokster and StreamCast reply by citing evidence that their software can be
used to reproduce public domain works, and they point to copyright holders who
actually encourage copying. Even if infringement is the principal practice with their
software today, they argue, the noninfringing uses are significant and will grow.
We agree with MGM that the Court of Appeals misapplied Sony, which it read as
limiting secondary liability quite beyond the circumstances to which the case
applied. Sony barred secondary liability based on presuming or imputing intent to
cause infringement solely from the design or distribution of a product capable of
substantial lawful use, which the distributor knows is in fact used for infringement.
The [545 U.S. 934] Ninth Circuit has read Sony's limitation to mean that whenever
a product is capable of substantial lawful use, the producer can never be held
contributorily liable for third parties' infringing use of it; it read the rule as being
this broad, even when an actual purpose to cause infringing use is shown by
evidence independent of design and distribution of the product, unless the
distributors had "specific knowledge of infringement at a time at which they
contributed to the infringement, and failed to act upon that information." [ … ]
Because the Circuit found the StreamCast and Grokster software capable of
substantial lawful use, it concluded on the basis of its reading of Sony that neither
company could be held liable, since there was no showing that their software, being
without any central server, afforded them knowledge of specific unlawful uses.
This view of Sony, however, was error, converting the case from one about liability
resting on imputed intent to one about liability on any theory. Because Sony did not
displace other theories of secondary liability, and because we find below that it was
error to grant summary judgment to the companies on MGM's inducement claim,
we do not revisit Sony further, as MGM requests, to add a more quantified
description of the point of balance between protection and commerce when liability
rests solely on distribution with knowledge that unlawful use will occur. It is
enough to note that the Ninth Circuit's judgment rested on an erroneous
understanding of Sony and to leave further consideration of the Sony rule for a day
when that may be required.
C
Sony's rule limits imputing culpable intent as a matter of law from the
characteristics or uses of a distributed product. But nothing in Sony requires courts
to ignore evidence of intent if there is such evidence, and the case was never meant
to foreclose rules of fault-based liability derived from [545 U.S. 935] the common
law. [10] Sony Corp. v. Universal City Studios, supra, at 439 ("If vicarious liability is
to be imposed on Sony in this case, it must rest on the fact that it has sold
ChapterNumber:
472
equipment with constructive knowledge" of the potential for infringement). Thus,

where evidence goes beyond a product's characteristics or the knowledge that it
may be put to infringing uses, and shows statements or actions directed to
promoting infringement, Sony's staple-article rule will not preclude liability.
The classic case of direct evidence of unlawful purpose occurs when one induces
commission of infringement by another, or "entic[es] or persuad[es] another" to
infringe, [ … ] as by advertising. Thus at common law a copyright or patent
defendant who "not only expected but invoked [infringing use] by advertisement"
was liable for infringement "on principles recognized in every part of the law."
[…]
[545 U.S. 936] The rule on inducement of infringement as developed in the early
cases is no different today. [11] Evidence of "active steps . . . taken to encourage
direct infringement," [ … ] such as advertising an infringing use or instructing how
to engage in an infringing use, show an affirmative intent that the product be used
to infringe, and a showing that infringement was encouraged overcomes the law's
reluctance to find liability when a defendant merely sells a commercial product
suitable for some lawful use[ … ].
For the same reasons that Sony took the staple-article doctrine of patent law as a
model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one
for copyright. We adopt it here, holding that one who distributes a device with the
object of promoting its use to infringe copyright, as [545 U.S. 937] shown by clear
expression or other affirmative steps taken to foster infringement, is liable for the
resulting acts of infringement by third parties. We are, of course, mindful of the
need to keep from trenching on regular commerce or discouraging the development
of technologies with lawful and unlawful potential. Accordingly, just as Sony did
not find intentional inducement despite the knowledge of the VCR manufacturer
that its device could be used to infringe, [ … ] mere knowledge of infringing
potential or of actual infringing uses would not be enough here to subject a
distributor to liability. Nor would ordinary acts incident to product distribution,
such as offering customers technical support or product updates, support liability in
themselves. The inducement rule, instead, premises liability on purposeful, culpable
expression and conduct, and thus does nothing to compromise legitimate commerce
or discourage innovation having a lawful promise.
III
A
The only apparent question about treating MGM's evidence as sufficient to
withstand summary judgment under the theory of inducement goes to the need on
MGM's part to adduce evidence that StreamCast and Grokster communicated an
inducing message to their software users. The classic instance of inducement is by
advertisement or solicitation that broadcasts a message designed to stimulate others
to commit violations. MGM claims that such a message is shown here. It is
undisputed that StreamCast beamed onto the computer screens of users of Napster-
compatible programs ads urging the adoption of its OpenNap program, which was
designed, as its name implied, to invite the custom of patrons of Napster, then
473
under attack in the courts for facilitating massive infringement. Those who accepted
StreamCast's OpenNap program were offered software to perform the same
services, which a factfinder could conclude [545 U.S. 938] would readily have been
understood in the Napster market as the ability to download copyrighted music
files. Grokster distributed an electronic newsletter containing links to articles
promoting its software's ability to access popular copyrighted music. And anyone
whose Napster or free file-sharing searches turned up a link to Grokster would have
understood Grokster to be offering the same file-sharing ability as Napster, and to
the same people who probably used Napster for infringing downloads; that would
also have been the understanding of anyone offered Grokster's suggestively named
Swaptor software, its version of OpenNap. And both companies communicated a
clear message by responding affirmatively to requests for help in locating and
playing copyrighted materials.
In StreamCast's case, of course, the evidence just described was supplemented by

other unequivocal indications of unlawful purpose in the internal communications
and advertising designs aimed at Napster users ("When the lights went off at
Napster . . . where did the users go?" [ … ]Whether the messages were
communicated is not to the point on this record. The function of the message in the
theory of inducement is to prove by a defendant's own statements that his unlawful
purpose disqualifies him from claiming protection (and incidentally to point to
actual violators likely to be found among those who hear or read the message).
[ … ] Proving that a message was sent out, then, is the preeminent but not exclusive
way of showing that active steps were taken with the purpose of bringing about
infringing acts, and of showing that infringing acts took place by using the device
distributed. Here, the summary judgment record is replete with other evidence that
Grokster and StreamCast, unlike the manufacturer and distributor in Sony, acted
with a purpose to cause copyright violations by use of software suitable for illegal
use. See supra, at 924-927.
[545 U.S. 939] Three features of this evidence of intent are particularly notable.
First, each company showed itself to be aiming to satisfy a known source of
demand for copyright infringement, the market comprising former Napster users.
StreamCast's internal documents made constant reference to Napster, it initially
distributed its Morpheus software through an OpenNap program compatible with
Napster, it advertised its OpenNap program to Napster users, and its Morpheus
software functions as Napster did except that it could be used to distribute more
kinds of files, including copyrighted movies and software programs. Grokster's
name is apparently derived from Napster, it too initially offered an OpenNap
program, its software's function is likewise comparable to Napster's, and it
attempted to divert queries for Napster onto its own Web site. Grokster and
StreamCast's efforts to supply services to former Napster users, deprived of a
mechanism to copy and distribute what were overwhelmingly infringing files,
indicate a principal, if not exclusive, intent on the part of each to bring about
infringement.
Second, this evidence of unlawful objective is given added significance by MGM's

showing that neither company attempted to develop filtering tools or other
mechanisms to diminish the infringing activity using their software. While the
Ninth Circuit treated the defendants' failure to develop such tools as irrelevant
because they lacked an independent duty to monitor their users' activity, we think
this evidence underscores Grokster's and StreamCast's intentional facilitation of
their users' infringement. [12]
ChapterNumber:
474
Third, there is a further complement to the direct evidence of unlawful objective. It

is useful to recall that StreamCast [545 U.S. 940] and Grokster make money by
selling advertising space, by directing ads to the screens of computers employing
their software. As the record shows, the more the software is used, the more ads are
sent out and the greater the advertising revenue becomes. Since the extent of the
software's use determines the gain to the distributors, the commercial sense of their
enterprise turns on high-volume use, which the record shows is infringing. [13] This
evidence alone would not justify an inference of unlawful intent, but viewed in the
context of the entire record its import is clear.
The unlawful objective is unmistakable.
B
In addition to intent to bring about infringement and distribution of a device
suitable for infringing use, the inducement theory of course requires evidence of
actual infringement by recipients of the device, the software in this case. As the
account of the facts indicates, there is evidence of infringement on a gigantic scale,
and there is no serious issue of the adequacy of MGM's showing on this point in
order to survive the companies' summary judgment requests. Although [545 U.S.
941] an exact calculation of infringing use, as a basis for a claim of damages, is
subject to dispute, there is no question that the summary judgment evidence is at
least adequate to entitle MGM to go forward with claims for damages and equitable
relief.
***
In sum, this case is significantly different from Sony and reliance on that case to
rule in favor of StreamCast and Grokster was error. Sony dealt with a claim of
liability based solely on distributing a product with alternative lawful and unlawful
uses, with knowledge that some users would follow the unlawful course. The case
struck a balance between the interests of protection and innovation by holding that
the product's capability of substantial lawful employment should bar the imputation
of fault and consequent secondary liability for the unlawful acts of others.
MGM's evidence in this case most obviously addresses a different basis of liability
for distributing a product open to alternative uses. Here, evidence of the
distributors' words and deeds going beyond distribution as such shows a purpose to
cause and profit from third-party acts of copyright infringement. If liability for
inducing infringement is ultimately found, it will not be on the basis of presuming
or imputing fault, but from inferring a patently illegal objective from statements
and actions showing what that objective was.
There is substantial evidence in MGM's favor on all elements of inducement, and

summary judgment in favor of Grokster and StreamCast was error. On remand,
reconsideration of MGM's motion for summary judgment will be in order.
The judgment of the Court of Appeals is vacated, and the case is remanded for
further proceedings consistent with this opinion.
It is so ordered.
[…]
475
[1] Peer-to-peer networks have disadvantages as well. Searches on peer-to-peer

networks may not reach and uncover all available files because search requests may
not be transmitted to every computer on the network. There may be redundant
copies of popular files. The creator of the software has no incentive to minimize
storage or bandwidth consumption, the costs of which are borne by every user of
the network. Most relevant here, it is more difficult to control the content of files
available for retrieval and the behavior of users.
[2] The studios and recording companies and the songwriters and music publishers
filed separate suits against the defendants that were consolidated by the District
Court.
[3] Subsequent versions of Morpheus, released after the record was made in this
case, apparently rely not on Gnutella but on a technology called Neonet. These
developments are not before us.
[4] There is some evidence that both Grokster and StreamCast previously operated
supernodes, which compiled indexes of files available on all of the nodes connected
to them. This evidence, pertaining to previous versions of the defendants' software,
is not before us and would not affect our conclusions in any event.
[5] By comparison, evidence introduced by the plaintiffs in A&M Records, Inc. v.

Napster, Inc., 239 F. 3d 1004 (CA9 2001), showed that 87% of files available on
the Napster file-sharing network were copyrighted, id., at 1013.
[6] The Grokster founder contends that in answering these e-mails he often did not
read them fully. App. 77, 769.
[7] The record makes clear that StreamCast developed these promotional materials
but not whether it released them to the public. Even if these advertisements were
not released to the public and do not show encouragement to infringe, they
illuminate StreamCast's purposes.
[8] The mutual exclusivity of these values should not be overstated, however. On
the one hand technological innovators, including those writing file-sharing
computer programs, may wish for effective copyright protections for their work.
See, e. g., Wu, When Code Isn't Law, 89 Va. L. Rev. 679, 750 (2003). (StreamCast
itself was urged by an associate to "get [its] technology written down and [its
intellectual property] protected." App. 866.) On the other hand the widespread
distribution of creative works through improved technologies may enable the
synthesis of new works or generate audiences for emerging artists. See Eldred v.
Ashcroft, 537 U. S. 186, 223-226 (2003) (Stevens, J., dissenting); Van Houweling,
Distributive Values in Copyright, 83 Texas L. Rev. 1535, 1539-1540, 1562-1564
(2005); Brief for Sovereign Artists et al. as Amici Curiae 11.
[9] We stated in Sony Corp. of America v. Universal City Studios, Inc., 464 U. S.
417 (1984), that "`the lines between direct infringement, contributory infringement
and vicarious liability are not clearly drawn' . . . . [R]easoned analysis of [the Sony
plaintiffs' contributory infringement claim] necessarily entails consideration of
arguments and case law which may also be forwarded under the other labels, and
indeed the parties . . . rely upon such arguments and authority in support of their
respective positions on the issue of contributory infringement," id., at 435, n. 17
[ … ]. In the present case MGM has argued a vicarious liability theory, which
allows imposition of liability when the defendant profits directly from the
infringement and has a right and ability to supervise the direct infringer, even if the
ChapterNumber:
476
defendant initially lacks knowledge of the infringement. [ … ]Because we resolve

the case based on an inducement theory, there is no need to analyze separately
MGM's vicarious liability theory.
[10] Nor does the Patent Act's exemption from liability for those who distribute a
staple article of commerce, 35 U. S. C. § 271(c), extend to those who induce patent
infringement, § 271(b).
[11] Inducement has been codified in patent law. Ibid.
[12] Of course, in the absence of other evidence of intent, a court would be unable
to find contributory infringement liability merely based on a failure to take
affirmative steps to prevent infringement, if the device otherwise was capable of
substantial noninfringing uses. Such a holding would tread too close to the Sony
safe harbor.
[13] Grokster and StreamCast contend that any theory of liability based on their
conduct is not properly before this Court because the rulings in the trial and
appellate courts dealt only with the present versions of their software, not "past acts
. . . that allegedly encouraged infringement or assisted . . . known acts of
infringement." Brief for Respondents 14; see also id., at 34. This contention
misapprehends the basis for their potential liability. It is not only that encouraging a
particular consumer to infringe a copyright can give rise to secondary liability for
the infringement that results. Inducement liability goes beyond that, and the
distribution of a product can itself give rise to liability where evidence shows that
the distributor intended and encouraged the product to be used to infringe. In such a
case, the culpable act is not merely the encouragement of infringement but also the
distribution of the tool intended for infringing use. See Kalem Co. v. Harper
Brothers, 222 U. S. 55, 62-63 (1911); Cable/Home Communication Corp. v.
Network Productions, Inc., 902 F. 2d 829, 846 (CA11 1990); A&M Records, Inc. v.
Abdallah, 948 F. Supp. 1449, 1456 (CD Cal. 1996).
[…]

11.1.2
Viacom Intern., Inc. v. YouTube, Inc.

Viacom v. YouTube (2012)

676 F.3d 19
Docket Nos. 10-3270-cv, 10-3342-cv
2012-04-05
[…]
676 F.3d 19
477
VIACOM INTERNATIONAL, INC., Comedy

Partners, Country Music Television, Inc.,
Paramount Pictures Corporation, Black
Entertainment Television, LLC, Plaintiffs–
Appellants,
v.
YOUTUBE, INC., YouTube, LLC, Google,
Inc., Defendants–Appellees. [ … ]
Argued: Oct. 18, 2011. Decided: April 5, 2012.
[…]
JOSÉ A. CABRANES, Circuit Judge:
This appeal requires us to clarify the contours of the “safe harbor” provision of the
Digital Millennium Copyright Act (DMCA) that limits the liability of online service
providers for copyright infringement that occurs “by reason of the storage at the
direction of a user of material that resides on a system or network controlled or
operated by or for the service provider.” 17 U.S.C. § 512(c). [1]
The plaintiffs-appellants in these related actions—Viacom International, Inc.

(“Viacom”), The Football Association Premier League Ltd. (“Premier League”),
and various film studios, television networks, music publishers, and sports leagues
(jointly, [676 F.3d 26] the “plaintiffs”) [2] —appeal from an August 10, 2010
judgment of the United States District Court for the Southern District of New York
(Louis L. Stanton, Judge), which granted summary judgment to defendants-
appellees YouTube, Inc., YouTube, LLC, and Google Inc. (jointly, “YouTube” or
the “defendants”). The plaintiffs alleged direct and secondary copyright
infringement based on the public performance, display, and reproduction of
approximately 79,000 audiovisual “clips” that appeared on the YouTube website
between 2005 and 2008. They demanded, inter alia, statutory damages pursuant to
17 U.S.C. § 504(c) or, in the alternative, actual damages from the alleged
infringement, as well as declaratory and injunctive relief. [3]
In a June 23, 2010 Opinion and Order (the “June 23 Opinion”), the District Court
held that the defendants were entitled to DMCA safe harbor protection primarily
because they had insufficient notice of the particular infringements in suit. Viacom
Int'l, Inc. v. YouTube, Inc., 718 F.Supp.2d 514, 529 (S.D.N.Y.2010). In construing
the statutory safe harbor, the District Court concluded that the “actual knowledge”
or “aware[ness] of facts or circumstances” that would disqualify an online service
provider from safe harbor protection under § 512(c)(1)(A) refer to “knowledge of
specific and identifiable infringements.” [ … ] The District Court further held that
item-specific knowledge of infringing activity is required for a service provider to
have the “right and ability to control” infringing activity under § 512(c)(1)(B).
[ … ] Finally, the District Court held that the replication, transmittal, and display of
videos on YouTube constituted activity “by reason of the storage at the direction of
a user” within the meaning of § 512(c)(1). [ … ]
These related cases present a series of significant questions of statutory

construction. We conclude that the District Court correctly held that the § 512(c)
ChapterNumber:
478
safe harbor requires knowledge or awareness of specific infringing activity, but we

vacate the order granting summary judgment because a reasonable jury could find
that YouTube had actual knowledge or awareness of specific infringing activity on
its website. We further hold that the District Court erred by interpreting the “right
and ability to control” provision to require “item-specific” knowledge. Finally, we
affirm the District Court's holding that three of the challenged YouTube software
functions fall within the safe harbor for infringement that occurs “by reason of”
user storage; we remand for further fact-finding with respect to a fourth software
function.
BACKGROUND
A. The DMCA Safe Harbors

“The DMCA was enacted in 1998 to implement the World Intellectual Property
Organization Copyright Treaty,” Universal City Studios, Inc. v. Corley, 273 F.3d
429, 440 (2d Cir.2001), and to update domestic copyright law for the digital age,
[676 F.3d 27] [ … ]. Title II of the DMCA, separately titled the “Online Copyright
Infringement Liability Limitation Act” (OCILLA), was designed to “clarif[y] the
liability faced by service providers who transmit potentially infringing material
over their networks.” [ … ] But “[r]ather than embarking upon a wholesale
clarification” of various copyright doctrines, Congress elected “to leave current law
in its evolving state and, instead, to create a series of ‘safe harbors[ ]’ for certain
common activities of service providers.” [ … ] To that end, OCILLA established a
series of four “safe harbors” that allow qualifying service providers to limit their
liability for claims of copyright infringement based on (a) “transitory digital
network communications,” (b) “system caching,” (c) “information residing on
systems or networks at [the] direction of users,” and (d) “information location
tools.” 17 U.S.C. § 512(a)-(d).
To qualify for protection under any of the safe harbors, a party must meet a set of
threshold criteria. First, the party must in fact be a “service provider,” defined, in
pertinent part, as “a provider of online services or network access, or the operator
of facilities therefor.” 17 U.S.C. § 512(k)(1)(B). A party that qualifies as a service
provider must also satisfy certain “conditions of eligibility,” including the adoption
and reasonable implementation of a “repeat infringer” policy that “provides for the
termination in appropriate circumstances of subscribers and account holders of the
service provider's system or network.” Id. § 512(i)(1)(A). In addition, a qualifying
service provider must accommodate “standard technical measures” that are “used
by copyright owners to identify or protect copyrighted works.” Id. § 512(i)(1)(B),
(i)(2).
Beyond the threshold criteria, a service provider must satisfy the requirements of a
particular safe harbor. In this case, the safe harbor at issue is § 512(c), which covers
infringement claims that arise “by reason of the storage at the direction of a user of
material that resides on a system or network controlled or operated by or for the
service provider.” Id. § 512(c)(1). The § 512(c) safe harbor will apply only if the
service provider:
479
(A) (i) does not have actual knowledge that the material or an activity
using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or

circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to

remove, or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the

infringing activity, in a case in which the service provider has the right
and ability to control such activity; and
(C) upon notification of claimed infringement as described in paragraph

(3), responds expeditiously to remove, or disable access to, the material
that is claimed to be infringing or to be the subject of infringing activity.
Id. § 512(c)(1)(A)-(C). Section 512(c) also sets forth a detailed notification scheme
that requires service providers to “designate[ ] an agent to receive notifications of
claimed infringement,” id. § 512(c)(2), and specifies the components of a proper
notification, commonly known as a “takedown notice,” to that agent, see id. §
512(c)(3). Thus, actual knowledge of infringing material, awareness of facts or
circumstances that make infringing activity apparent, or [676 F.3d 28] receipt of a
takedown notice will each trigger an obligation to expeditiously remove the
infringing material.
With the statutory context in mind, we now turn to the facts of this case.
B. Factual Background
YouTube was founded in February 2005 by Chad Hurley (“Hurley”), Steve Chen
(“Chen”), and Jawed Karim (“Karim”), three former employees of the internet
company Paypal. When YouTube announced the “official launch” of the website in
December 2005, a press release described YouTube as a “consumer media
company” that “allows people to watch, upload, and share personal video clips at
www. You Tube. com.” Under the slogan “Broadcast yourself,” YouTube achieved
rapid prominence and profitability, eclipsing competitors such as Google Video and
Yahoo Video by wide margins. In November 2006, Google acquired YouTube in a
stock-for-stock transaction valued at $1.65 billion. By March 2010, at the time of
summary judgment briefing in this litigation, site traffic on YouTube had soared to
more than 1 billion daily video views, with more than 24 hours of new video
uploaded to the site every minute.
The basic function of the YouTube website permits users to “upload” and view
video clips free of charge. Before uploading a video to YouTube, a user must
register and create an account with the website. The registration process requires
the user to accept YouTube's Terms of Use agreement, which provides, inter alia,
that the user “will not submit material that is copyrighted ... unless [he is] the
owner of such rights or ha[s] permission from their rightful owner to post the
material and to grant YouTube all of the license rights granted herein.” When the
registration process is complete, the user can sign in to his account, select a video
ChapterNumber:
480
to upload from the user's personal computer, mobile phone, or other device, and
instruct the YouTube system to upload the video by clicking on a virtual upload
“button.”
Uploading a video to the YouTube website triggers a series of automated software

functions. During the upload process, YouTube makes one or more exact copies of
the video in its original file format. YouTube also makes one or more additional
copies of the video in “Flash” format, [4] a process known as “transcoding.” The
transcoding process ensures that YouTube videos are available for viewing by most
users at their request. The YouTube system allows users to gain access to video
content by “streaming” the video to the user's computer in response to a playback
request. YouTube uses a computer algorithm to identify clips that are “related” to a
video the user watches and display links to the “related” clips.
C. Procedural History
Plaintiff Viacom, an American media conglomerate, and various Viacom affiliates
filed suit against YouTube on March 13, 2007, alleging direct and secondary
copyright infringement [5] based on the public performance, display, and
reproduction of their audiovisual works on the YouTube website. Plaintiff Premier
League, an English soccer league, and Plaintiff Bourne Co. filed a putative class
action against [676 F.3d 29] YouTube on May 4, 2007, alleging direct and
secondary copyright infringement on behalf of all copyright owners whose material
was copied, stored, displayed, or performed on YouTube without authorization.
Specifically at issue were some 63,497 video clips identified by Viacom, as well as
13,500 additional clips (jointly, the “clips-in-suit”) identified by the putative class
plaintiffs.
The plaintiffs in both actions principally demanded statutory damages pursuant to

17 U.S.C. § 504(c) or, in the alternative, actual damages plus the defendants' profits
from the alleged infringement, as well as declaratory and injunctive relief. [6] Judge
Stanton, to whom the Viacom action was assigned, accepted the Premier League
class action as related. At the close of discovery, the parties in both actions cross-
moved for partial summary judgment with respect to the applicability of the DMCA
safe harbor defense. [7]
In the dual-captioned June 23 Opinion, the District Court denied the plaintiffs'
motions and granted summary judgment to the defendants, finding that YouTube
qualified for DMCA safe harbor protection with respect to all claims of direct and
secondary copyright infringement. [ … ] The District Court prefaced its analysis of
the DMCA safe harbor by holding that, based on the plaintiffs' summary judgment
submissions, “a jury could find that the defendants not only were generally aware
of, but welcomed, copyright-infringing material being placed on their website.” [ …
] However, the District Court also noted that the defendants had properly
designated an agent pursuant to § 512(c)(2), and “when they received specific
notice that a particular item infringed a copyright, they swiftly removed it.” [ … ]
Accordingly, the District Court identified the crux of the inquiry with respect to
YouTube's copyright liability as follows:
[T]he critical question is whether the statutory phrases “actual knowledge

that the material or an activity using the material on the system or network
is infringing,” and “facts or circumstances from which infringing activity
481
is apparent” in § 512(c)(1)(A)(i) and (ii) mean a general awareness that

there are infringements (here, claimed to be widespread and common), or
rather mean actual or constructive knowledge of specific and identifiable
infringements of individual items.
[ … ] After quoting at length from the legislative history of the DMCA, the District
Court held that “the phrases ‘actual knowledge that the material or an activity’ is
infringing, and ‘facts or circumstances' indicating infringing activity, describe
knowledge of specific and identifiable infringements of particular individual
items.” [ … ] “Mere knowledge of [the] prevalence of such activity in general,” the
District Court concluded, “is not enough.” [ … ]
In a final section labeled “Other Points,” the District Court rejected two additional
claims. First, it rejected the plaintiffs' argument that the replication, transmittal and
display of YouTube videos are functions that fall outside the protection § 512(c)(1)
affords for “infringement of copyright by reason of ... storage at the direction of the
user.” [ … ] Second, it rejected the plaintiffs' argument [676 F.3d 30] that YouTube
was ineligible for safe harbor protection under the control provision, holding that
the “right and ability to control” infringing activity under § 512(c)(1)(B) requires
“item-specific” knowledge thereof, because “the provider must know of the
particular case before he can control it.” [ … ]
Following the June 23 Opinion, final judgment in favor of YouTube was entered on
August 10, 2010. These appeals followed.
DISCUSSION
We review an order granting summary judgment de novo, drawing all factual
inferences in favor of the non-moving party. [ … ] “Summary judgment is proper
only when, construing the evidence in the light most favorable to the non-movant,
‘there is no genuine dispute as to any material fact and the movant is entitled to
judgment as a matter of law.’ ” [ … ]
A. Actual and “Red Flag” Knowledge: §

512(c)(1)(A)
The first and most important question on appeal is whether the DMCA safe harbor
at issue requires “actual knowledge” or “aware[ness]” of facts or circumstances
indicating “specific and identifiable infringements,” [ … ]. We consider first the
scope of the statutory provision and then its application to the record in this case.
1. The Specificity Requirement

“As in all statutory construction cases, we begin with the language of the statute,”
[ … ] Under § 512(c)(1)(A), safe harbor protection is available only if the service
provider:
ChapterNumber:
482
(i) does not have actual knowledge that the material or an activity using
the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or

circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to

remove, or disable access to, the material....
17 U.S.C. § 512(c)(1)(A). As previously noted, the District Court held that the
statutory phrases “actual knowledge that the material ... is infringing” and “facts or
circumstances from which infringing activity is apparent” refer to “knowledge of
specific and identifiable infringements.” [ … ] For the reasons that follow, we
substantially affirm that holding.
Although the parties marshal a battery of other arguments on appeal, it is the text of
the statute that compels our conclusion. In particular, we are persuaded that the
basic operation of § 512(c) requires knowledge or awareness of specific infringing
activity. Under § 512(c)(1)(A), knowledge or awareness alone does not disqualify
the service provider; rather, the provider that gains knowledge or awareness of
infringing activity retains safe-harbor protection if it “acts expeditiously to remove,
or disable access to, the material.” 17 U.S.C. § 512(c)(1)(A)(iii). Thus, the nature of
the removal obligation itself contemplates knowledge or awareness of specific
infringing material, because expeditious removal is possible only if the service
provider knows with particularity which items to remove. Indeed, to require
expeditious removal in the absence of specific knowledge [676 F.3d 31] or
awareness would be to mandate an amorphous obligation to “take commercially
reasonable steps” in response to a generalized awareness of infringement. [ … ]
Such a view cannot be reconciled with the language of the statute, which requires
“expeditious[ ]” action to remove or disable “ the material ” at issue. 17 U.S.C. §
512(c)(1)(A)(iii) (emphasis added).
On appeal, the plaintiffs dispute this conclusion by drawing our attention to §

512(c)(1)(A)(ii), the so-called “red flag” knowledge provision. See id. § 512(c)(1)
(A)(ii) (limiting liability where, “in the absence of such actual knowledge, [the
service provider] is not aware of facts or circumstances from which infringing
activity is apparent”). In their view, the use of the phrase “facts or circumstances”
demonstrates that Congress did not intend to limit the red flag provision to a
particular type of knowledge. The plaintiffs contend that requiring awareness of
specific infringements in order to establish “aware[ness] of facts or circumstances
from which infringing activity is apparent,” 17 U.S.C. § 512(c)(1)(A)(ii), renders
the red flag provision superfluous, because that provision would be satisfied only
when the “actual knowledge” provision is also satisfied. For that reason, the
plaintiffs urge the Court to hold that the red flag provision “requires less
specificity” than the actual knowledge provision. [ … ]
This argument misconstrues the relationship between “actual” knowledge and “red
flag” knowledge. It is true that “we are required to ‘disfavor interpretations of
statutes that render language superfluous.’ ” [ … ] But contrary to the plaintiffs'
assertions, construing § 512(c)(1)(A) to require actual knowledge or awareness of
specific instances of infringement does not render the red flag provision
superfluous. The phrase “actual knowledge,” which appears in § 512(c)(1)(A)(i), is
frequently used to denote subjective belief. [ … ] By contrast, courts often invoke
483
the language of “facts or circumstances,” which appears in § 512(c)(1)(A)(ii), in

discussing an objective reasonableness standard. [ … ]
The difference between actual and red flag knowledge is thus not between specific
and generalized knowledge, but instead between a subjective and an objective
standard. In other words, the actual knowledge provision turns on whether the
provider actually or “subjectively” knew of specific infringement, while the red flag
provision turns on whether the provider was subjectively aware of facts that would
have made the specific infringement “objectively” obvious to a reasonable person.
The red flag provision, because it incorporates an objective standard, is not
swallowed up by the actual knowledge provision under our construction of the §
512(c) safe harbor. Both provisions do independent work, and both apply only to
specific instances of infringement.
The limited body of case law interpreting the knowledge provisions of the § 512(c)
safe harbor comports with our view of the specificity requirement. Most [676 F.3d
32] recently, a panel of the Ninth Circuit addressed the scope of § 512(c) in UMG
Recordings, Inc. v. Shelter Capital Partners LLC, 667 F.3d 1022 (9th Cir.2011), a
copyright infringement case against Veoh Networks, a video-hosting service similar
to YouTube. [8] As in this case, various music publishers brought suit against the
service provider, claiming direct and secondary copyright infringement based on
the presence of unauthorized content on the website, and the website operator
sought refuge in the § 512(c) safe harbor. The Court of Appeals affirmed the
district court's determination on summary judgment that the website operator was
entitled to safe harbor protection. With respect to the actual knowledge provision,
the panel declined to “adopt[ ] a broad conception of the knowledge requirement,” [
… ] holding instead that the safe harbor “[r]equir [es] specific knowledge of
particular infringing activity,”[ … ]. The Court of Appeals “reach[ed] the same
conclusion” with respect to the red flag provision, noting that “[w]e do not place
the burden of determining whether [materials] are actually illegal on a service
provider.” [ … ].
Although Shelter Capital contains the most explicit discussion of the § 512(c)
knowledge provisions, other cases are generally in accord. [ … ]
Based on the text of § 512(c)(1)(A), as well as the limited case law on point, we
affirm the District Court's holding that actual knowledge or awareness of facts or
circumstances that indicate specific and identifiable instances of infringement will
disqualify a service provider from the safe harbor.
2. The Grant of Summary Judgment

The corollary question on appeal is whether, under the foregoing construction of §
512(c)(1)(A), the District Court erred in granting summary judgment to YouTube
on the record presented. For the reasons that follow, we hold that although the
District Court correctly interpreted § 512(c)(1)(A), summary judgment for the
defendants was premature.
i. Specific Knowledge or Awareness

ChapterNumber:
484
The plaintiffs argue that, even under the District Court's construction of the safe
harbor, the record raises material issues of fact regarding YouTube's actual
knowledge or “red flag” awareness of specific instances of infringement. To that
end, the plaintiffs draw our attention to various estimates regarding the percentage
of infringing content on the YouTube website. For example, Viacom cites evidence
[676 F.3d 33] that YouTube employees conducted website surveys and estimated
that 75–80% of all YouTube streams contained copyrighted material. The class
plaintiffs similarly claim that Credit Suisse, acting as financial advisor to Google,
estimated that more than 60% of YouTube's content was “premium” copyrighted
content—and that only 10% of the premium content was authorized. These
approximations suggest that the defendants were conscious that significant
quantities of material on the YouTube website were infringing. [ … ] But such
estimates are insufficient, standing alone, to create a triable issue of fact as to
whether YouTube actually knew, or was aware of facts or circumstances that would
indicate, the existence of particular instances of infringement.
Beyond the survey results, the plaintiffs rely upon internal YouTube
communications that do refer to particular clips or groups of clips. The class
plaintiffs argue that YouTube was aware of specific infringing material because,
inter alia, YouTube attempted to search for specific Premier League videos on the
site in order to gauge their “value based on video usage.” In particular, the class
plaintiffs cite a February 7, 2007 e-mail from Patrick Walker, director of video
partnerships for Google and YouTube, requesting that his colleagues calculate the
number of daily searches for the terms “soccer,” “football,” and “Premier League”
in preparation for a bid on the global rights to Premier League content. On another
occasion, Walker requested that any “clearly infringing, official broadcast footage”
from a list of top Premier League clubs—including Liverpool Football Club,
Chelsea Football Club, Manchester United Football Club, and Arsenal Football
Club—be taken down in advance of a meeting with the heads of “several major
sports teams and leagues.” YouTube ultimately decided not to make a bid for the
Premier League rights—but the infringing content allegedly remained on the
website.
The record in the Viacom action includes additional examples. For instance,
YouTube founder Jawed Karim prepared a report in March 2006 which stated that,
“[a]s of today[,] episodes and clips of the following well-known shows can still be
found [on YouTube]: Family Guy, South Park, MTV Cribs, Daily Show, Reno 911,
[and] Dave Chapelle [sic].” Karim further opined that, “although YouTube is not
legally required to monitor content ... and complies with DMCA takedown requests,
we would benefit from preemptively removing content that is blatantly illegal and
likely to attract criticism.” He also noted that “a more thorough analysis” of the
issue would be required. At least some of the TV shows to which Karim referred
are owned by Viacom. A reasonable juror could conclude from the March 2006
report that Karim knew of the presence of Viacom-owned material on YouTube,
since he presumably located specific clips of the shows in question before he could
announce that YouTube hosted the content “[a]s of today.” A reasonable juror could
also conclude that Karim believed the clips he located to be infringing (since he
refers to them as “blatantly illegal”), and that YouTube did not remove the content
from the website until conducting “a more thorough analysis,” thus exposing the
company to liability in the interim.
Furthermore, in a July 4, 2005 e-mail exchange, YouTube founder Chad Hurley

sent an e-mail to his co-founders with the subject line “budlight commercials,” and
485
stated, “we need to reject these too.” Steve Chen responded, “can we please [676
F.3d 34] leave these in a bit longer? another week or two can't hurt.” Karim also
replied, indicating that he “added back in all 28 bud videos.” Similarly, in an
August 9, 2005 e-mail exchange, Hurley urged his colleagues “to start being
diligent about rejecting copyrighted / inappropriate content,” noting that “there is a
cnn clip of the shuttle clip on the site today, if the boys from Turner would come to
the site, they might be pissed?” Again, Chen resisted:
but we should just keep that stuff on the site. i really don't see what will
happen. what? someone from cnn sees it? he happens to be someone with
power? he happens to want to take it down right away. he gets in touch
with cnn legal. 2 weeks later, we get a cease & desist letter. we take the
video down.
And again, Karim agreed, indicating that “the CNN space shuttle clip, I
like. we can remove it once we're bigger and better known, but for now
that clip is fine.”
Upon a review of the record, we are persuaded that the plaintiffs may have raised a
material issue of fact regarding YouTube's knowledge or awareness of specific
instances of infringement. The foregoing Premier League e-mails request the
identification and removal of “clearly infringing, official broadcast footage.” The
March 2006 report indicates Karim's awareness of specific clips that he perceived
to be “blatantly illegal.” Similarly, the Bud Light and space shuttle e-mails refer to
particular clips in the context of correspondence about whether to remove
infringing material from the website. On these facts, a reasonable juror could
conclude that YouTube had actual knowledge of specific infringing activity, or was
at least aware of facts or circumstances from which specific infringing activity was
apparent. See § 512(c)(1)(A)(i)-(ii). Accordingly, we hold that summary judgment
to YouTube on all clips-in-suit, especially in the absence of any detailed
examination of the extensive record on summary judgment, was premature. [9]
We hasten to note, however, that although the foregoing e-mails were annexed as
exhibits to the summary judgment papers, it is unclear whether the clips referenced
therein are among the current clips-in-suit. By definition, only the current clips-in-
suit are at issue in this litigation. Accordingly, we vacate the order granting
summary judgment and instruct the District Court to determine on remand whether
any specific infringements of which YouTube had knowledge or awareness
correspond to the clips-in-suit in these actions.
ii. “Willful Blindness”

The plaintiffs further argue that the District Court erred in granting summary
judgment to the defendants despite evidence that YouTube was “willfully blind” to
specific infringing activity. On this issue of first impression, we consider the
application of the common law willful blindness doctrine in the DMCA context.
“The principle that willful blindness is tantamount to knowledge is hardly novel.”

Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 110 n. 16 (2d Cir.2010) (collecting
[676 F.3d 35] cases); see In re Aimster Copyright Litig., 33,4 F.3d 643 (7th
Cir.2003) (“Willful blindness is knowledge, in copyright law ... as it is in the law
ChapterNumber:
486
generally.”). A person is “willfully blind” or engages in “conscious avoidance”

amounting to knowledge where the person “ ‘was aware of a high probability of the
fact in dispute and consciously avoided confirming that fact.’ ” [ … ] Writing in the
trademark infringement context, we have held that “[a] service provider is not ...
permitted willful blindness. When it has reason to suspect that users of its service
are infringing a protected mark, it may not shield itself from learning of the
particular infringing transactions by looking the other way.” Tiffany, 600 F.3d at
109.
The DMCA does not mention willful blindness. As a general matter, we interpret a
statute to abrogate a common law principle only if the statute “speak[s] directly to
the question addressed by the common law.” [ … ] The relevant question, therefore,
is whether the DMCA “speak[s] directly” to the principle of willful blindness. [ … ]
The DMCA provision most relevant to the abrogation inquiry is § 512(m), which
provides that safe harbor protection shall not be conditioned on “a service provider
monitoring its service or affirmatively seeking facts indicating infringing activity,
except to the extent consistent with a standard technical measure complying with
the provisions of subsection (i).” 17 U.S.C. § 512(m)(1). Section 512(m) is explicit:
DMCA safe harbor protection cannot be conditioned on affirmative monitoring by a
service provider. For that reason, § 512(m) is incompatible with a broad common
law duty to monitor or otherwise seek out infringing activity based on general
awareness that infringement may be occurring. That fact does not, however, dispose
of the abrogation inquiry; as previously noted, willful blindness cannot be defined
as an affirmative duty to monitor. See Aina–Marshall, 336 F.3d at 170 (holding that
a person is “willfully blind” where he “was aware of a high probability of the fact
in dispute and consciously avoided confirming that fact”). Because the statute does
not “speak[ ] directly” to the willful blindness doctrine, § 512(m) limits—but does
not abrogate—the doctrine. Accordingly, we hold that the willful blindness doctrine
may be applied, in appropriate circumstances, to demonstrate knowledge or
awareness of specific instances of infringement under the DMCA.
The District Court cited § 512(m) for the proposition that safe harbor protection
does not require affirmative monitoring, [ … ] but did not expressly address the
principle of willful blindness or its relationship to the DMCA safe harbors. As a
result, whether the defendants made a “deliberate effort to avoid guilty knowledge,”
[ … ] remains a fact question for the District Court to consider in the first instance
on remand. [10]
[676 F.3d 36] B. Control and Benefit: § 512(c)

(1)(B)
Apart from the foregoing knowledge provisions, the § 512(c) safe harbor provides
that an eligible service provider must “not receive a financial benefit directly
attributable to the infringing activity, in a case in which the service provider has the
right and ability to control such activity.” 17 U.S.C. § 512(c)(1)(B). The District
Court addressed this issue in a single paragraph, quoting from § 512(c)(1)(B), the
so-called “control and benefit” provision, and concluding that “[t]he ‘right and
ability to control’ the activity requires knowledge of it, which must be item-
specific.” V[ … ]For the reasons that follow, we hold that the District Court erred
by importing a specific knowledge requirement into the control and benefit
provision, and we therefore remand for further fact-finding on the issue of control.
487
1. “Right and Ability to Control” Infringing

Activity
On appeal, the parties advocate two competing constructions of the “right and
ability to control” infringing activity. 17 U.S.C. § 512(c)(1)(B). Because each is
fatally flawed, we reject both proposed constructions in favor of a fact-based
inquiry to be conducted in the first instance by the District Court.
The first construction, pressed by the defendants, is the one adopted by the District
Court, which held that “the provider must know of the particular case before he can
control it.” V[ … ]The Ninth Circuit recently agreed, holding that “until [the
service provider] becomes aware of specific unauthorized material, it cannot
exercise its ‘power or authority’ over the specific infringing item. In practical
terms, it does not have the kind of ability to control infringing activity the statute
contemplates.” U[ … ]The trouble with this construction is that importing a specific
knowledge requirement into § 512(c)(1)(B) renders the control provision
duplicative of § 512(c)(1)(A). Any service provider that has item-specific
knowledge of infringing activity and thereby obtains financial benefit would
already be excluded from the safe harbor under § 512(c)(1)(A) for having specific
knowledge of infringing material and failing to effect expeditious removal. No
additional service provider would be excluded by § 512(c)(1)(B) that was not
already excluded by § 512(c)(1)(A). Because statutory interpretations that render
language superfluous are disfavored, C[ … ]we reject the District Court's
interpretation of the control provision.
The second construction, urged by the plaintiffs, is that the control provision
codifies the common law doctrine of vicarious copyright liability. The common law
imposes liability for vicarious copyright infringement “[w]hen the right and ability
to supervise coalesce with an obvious and direct financial interest in the
exploitation of copyrighted materials—even in the absence of actual knowledge that
the copyright mono [poly] is being impaired.” Shapiro, Bernstein & Co. v. H.L.
Green Co., 316 F.2d 304, 307 (2d Cir.1963);[ … ] To support their codification
argument, the plaintiffs rely [676 F.3d 37] on a House Report relating to a
preliminary version of the DMCA: “The ‘right and ability to control’ language ...
codifies the second element of vicarious liability.... Subparagraph (B) is intended to
preserve existing case law that examines all relevant aspects of the relationship
between the primary and secondary infringer.” H.R.Rep. No. 105–551(I), at 26
(1998). In response, YouTube notes that the codification reference was omitted
from the committee reports describing the final legislation, and that Congress
ultimately abandoned any attempt to “embark[ ] upon a wholesale clarification” of
vicarious liability, electing instead “to create a series of ‘safe harbors' for certain
common activities of service providers.” S.Rep. No. 105–190, at 19.
Happily, the future of digital copyright law does not turn on the confused
legislative history of the control provision. The general rule with respect to
common law codification is that when “Congress uses terms that have accumulated
settled meaning under the common law, a court must infer, unless the statute
otherwise dictates, that Congress means to incorporate the established meaning of
those terms.” N[ … ]Under the common law vicarious liability standard, “ ‘[t]he
ability to block infringers' access to a particular environment for any reason
whatsoever is evidence of the right and ability to supervise.’ ” Arista Records LLC
v. Usenet.com, Inc., 633 F.Supp.2d 124, 157 (S.D.N.Y.2009) (alteration in original)
(quoting A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1023 (9th
ChapterNumber:
488
Cir.2001)). To adopt that principle in the DMCA context, however, would render
the statute internally inconsistent. Section 512(c) actually presumes that service
providers have the ability to “block ... access” to infringing material. I [ … ]Indeed,
a service provider who has knowledge or awareness of infringing material or who
receives a takedown notice from a copyright holder is required to “remove, or
disable access to, the material” in order to claim the benefit of the safe harbor. 17
U.S.C. § 512(c)(1)(A)(iii) & (C). But in taking such action, the service provider
would—in the plaintiffs' analysis—be admitting the “right and ability to control”
the infringing material. Thus, the prerequisite to safe harbor protection under §
512(c)(1)(A)(iii) & (C) would at the same time be a disqualifier under § 512(c)(1)
(B).
Moreover, if Congress had intended § 512(c)(1)(B) to be coextensive with vicarious

liability, “the statute could have accomplished that result in a more direct manner.”
S[ … ]
t is conceivable that Congress ... intended that [service providers] which receive a
financial benefit directly attributable to the infringing activity would not, under any
circumstances, be able to qualify for the subsection (c) safe harbor. But if that was
indeed their intention, it would have been far simpler and much more
straightforward to simply say as much. I[ … ]
n any event, the foregoing tension—elsewhere described as a “predicament” [11] and

a “catch22” [12] —is sufficient to establish that the control provision “dictates” [676
F.3d 38] a departure from the common law vicarious liability standard,[ … ]
Accordingly, we conclude that the “right and ability to control” infringing activity
under § 512(c)(1)(B) “requires something more than the ability to remove or block
access to materials posted on a service provider's website.” M[ … ]The remaining—
and more difficult—question is how to define the “something more” that is
required.
To date, only one court has found that a service provider had the right and ability to
control infringing activity under § 512(c)(1)(B). [13] In Perfect 10, Inc. v. Cybernet
Ventures, Inc., 213 F.Supp.2d 1146 (C.D.Cal.2002), the court found control where
the service provider instituted a monitoring program by which user websites
received “detailed instructions regard[ing] issues of layout, appearance, and
content.” I[ … ]The service provider also forbade certain types of content and
refused access to users who failed to comply with its instructions. I [ … ]Similarly,
inducement of copyright infringement under Metro–Goldwyn–Mayer Studios Inc. v.
Grokster, Ltd., 545 U.S. 913, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005), which
“premises liability on purposeful, culpable expression and conduct,” i[ … ]might
also rise to the level of control under § 512(c)(1)(B). Both of these examples
involve a service provider exerting substantial influence on the activities of users,
without necessarily—or even frequently—acquiring knowledge of specific
infringing activity.
In light of our holding that § 512(c)(1)(B) does not include a specific knowledge
requirement, we think it prudent to remand to the District Court to consider in the
first instance whether the plaintiffs have adduced sufficient evidence to allow a
reasonable jury to conclude that YouTube had the right and ability to control the
infringing activity and received a financial benefit directly attributable to that
activity.
489
C. “By Reason of” Storage: § 512(c)(1)

The § 512(c) safe harbor is only available when the infringement occurs “by reason
of the storage at the direction of a user of material that resides on a system or
network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c)
(1). In this case, the District Court held that YouTube's software functions fell
within the safe harbor for infringements that occur “by reason of” user storage.
V[ … ]For the reasons that follow, we affirm that holding [676 F.3d 39] with
respect to three of the challenged software functions—the conversion (or
“transcoding”) of videos into a standard display format, the playback of videos on
“watch” pages, and the “related videos” function. We remand for further fact-
finding with respect to a fourth software function, involving the third-party
syndication of videos uploaded to YouTube.
As a preliminary matter, we note that “the structure and language of OCILLA

indicate that service providers seeking safe harbor under [§ ] 512(c) are not limited
to merely storing material.” I[ … ]The structure of the statute distinguishes between
so-called “conduit only” functions under § 512(a) and the functions addressed by §
512(c) and the other subsections. See 17 U.S.C. § 512(n) (“Subsections (a), (b), (c),
and (d) describe separate and distinct functions for purposes of applying this
section.”). Most notably, OCILLA contains two definitions of “service provider.”
17 U.S.C. § 512(k)(1)(A)-(B). The narrower definition, which applies only to
service providers falling under § 512(a), is limited to entities that “offer[ ] the
transmission, routing or providing of connections for digital online
communications, between or among points specified by a user, of material of the
user's choosing, without modification to the content of the material as sent or
received.” Id. § 512(k)(1)(A) (emphasis added). No such limitation appears in the
broader definition, which applies to service providers—including YouTube—falling
under § 512(c). Under the broader definition, “the term ‘service provider’ means a
provider of online services or network access, or the operator of facilities therefor,
and includes an entity described in subparagraph (A).” Id. § 512(k)(1)(B). In the
absence of a parallel limitation on the ability of a service provider to modify user-
submitted material, we conclude that § 512(c) “is clearly meant to cover more than
mere electronic storage lockers.” U[ … ]
he relevant case law makes clear that the § 512(c) safe harbor extends to software
functions performed “for the purpose of facilitating access to user-stored material.”
I[ … ]Two of the software functions challenged here—transcoding and playback—
were expressly considered by our sister Circuit in Shelter Capital, which held that
liability arising from these functions occurred “by reason of the storage at the
direction of a user.” 1[ … ]Transcoding involves “[m]aking copies of a video in a
different encoding scheme” in order to render the video “viewable over the Internet
to most users.” S[ … ]The playback process involves “deliver[ing] copies of
YouTube videos to a user's browser cache” in response to a user request. I[ … ]The
District Court correctly found that to exclude these automated functions from the
safe harbor would eviscerate the protection afforded to service providers by §
512(c). V[ … ]
similar analysis applies to the “related videos” function, by which a YouTube

computer algorithm identifies and displays “thumbnails” of clips that are “related”
to the video selected by the user. The plaintiffs claim that this practice constitutes
content promotion, not “access” to stored content, and therefore falls beyond the
scope of the safe harbor. Citing similar language in the Racketeer Influenced and
ChapterNumber:
490
Corrupt Organizations Act (“RICO”), 18 U.S.C. §§ 1961–68, and the Clayton [676
F.3d 40] Act, 15 U.S.C. §§ 12 et seq., the plaintiffs argue that the statutory phrase
“by reason of” requires a finding of proximate causation between the act of storage
and the infringing activity. S[ … ]But even if the plaintiffs are correct that § 512(c)
incorporates a principle of proximate causation—a question we need not resolve
here—the indexing and display of related videos retain a sufficient causal link to
the prior storage of those videos. The record makes clear that the related videos
algorithm “is fully automated and operates solely in response to user input without
the active involvement of YouTube employees.” S[ … ]Furthermore, the related
videos function serves to help YouTube users locate and gain access to material
stored at the direction of other users. Because the algorithm “is closely related to,
and follows from, the storage itself,” and is “narrowly directed toward providing
access to material stored at the direction of users,” U[ … ]we conclude that the
related videos function is also protected by the § 512(c) safe harbor.
The final software function at issue here—third-party syndication—is the closest

case. In or around March 2007, YouTube transcoded a select number of videos into
a format compatible with mobile devices and “syndicated” or licensed the videos to
Verizon Wireless and other companies. The plaintiffs argue—with some force—that
business transactions do not occur at the “direction of a user” within the meaning of
§ 512(c)(1) when they involve the manual selection of copyrighted material for
licensing to a third party. The parties do not dispute, however, that none of the
clips-in-suit were among the approximately 2,000 videos provided to Verizon
Wireless. In order to avoid rendering an advisory opinion on the outer boundaries
of the storage provision, we remand for fact-finding on the question of whether any
of the clips-in-suit were in fact syndicated to any other third party.
D. Other Arguments
1. Repeat Infringer Policy

The class plaintiffs briefly argue that YouTube failed to comply with the
requirements of § 512(i), which conditions safe harbor eligibility on the service
provider having “adopted and reasonably implemented ... a policy that provides for
the termination in appropriate circumstances of subscribers and account holders of
the service provider's system or network who are repeat infringers.” 17 U.S.C. §
512(i)(1)(A). Specifically, the class plaintiffs allege that YouTube “deliberately set
up its identification tools to try to avoid identifying infringements of class
plaintiffs' works.” This allegation rests primarily on the assertion that YouTube
permitted only designated “partners” to gain access to content identification tools
by which YouTube would conduct network searches and identify infringing
material. [14]
Because the class plaintiffs challenge YouTube's deployment of search technology,

[676 F.3d 41] we must consider their § 512(i) argument in conjunction with §
512(m). As previously noted, § 512(m) provides that safe harbor protection cannot
be conditioned on “a service provider monitoring its service or affirmatively
seeking facts indicating infringing activity, except to the extent consistent with a
standard technical measure complying with the provisions of subsection (i).” 17
U.S.C. § 512(m)(1) (emphasis added). In other words, the safe harbor expressly
491
disclaims any affirmative monitoring requirement—except to the extent that such

monitoring comprises a “standard technical measure” within the meaning of §
512(i). Refusing to accommodate or implement a “standard technical measure”
exposes a service provider to liability; refusing to provide access to mechanisms by
which a service provider affirmatively monitors its own network has no such result.
In this case, the class plaintiffs make no argument that the content identification
tools implemented by YouTube constitute “standard technical measures,” such that
YouTube would be exposed to liability under § 512(i). For that reason, YouTube
cannot be excluded from the safe harbor by dint of a decision to restrict access to its
proprietary search mechanisms.
2. Affirmative Claims
Finally, the plaintiffs argue that the District Court erred in denying summary
judgment to the plaintiffs on their claims of direct infringement, vicarious liability,
and contributory liability under Metro–Goldwyn–Mayer Studios Inc. v. Grokster,
Ltd., 545 U.S. 913, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005). In granting summary
judgment to the defendants, the District Court held that YouTube “qualif[ied] for
the protection of ... § 512(c),” and therefore denied the plaintiffs' cross-motion for
summary judgment without comment. V[ … ]
he District Court correctly determined that a finding of safe harbor application

necessarily protects a defendant from all affirmative claims for monetary relief. 17
U.S.C. § 512(c)(1);[ … ] For the reasons previously stated, further fact-finding is
required to determine whether YouTube is ultimately entitled to safe harbor
protection in this case. Accordingly, we vacate the order denying summary
judgment to the plaintiffs and remand the cause without expressing a view on the
merits of the plaintiffs' affirmative claims.
CONCLUSION
To summarize, we hold that:
(1) The District Court correctly held that 17 U.S.C. § 512(c)(1)(A)

requires knowledge or awareness of facts or circumstances that indicate
specific and identifiable instances of infringement;
(2) However, the June 23, 2010 order granting summary judgment to
YouTube is VACATED because a reasonable jury could conclude that
YouTube had knowledge or awareness under § 512(c)(1)(A) at least with
respect to a handful of specific clips; the cause is REMANDED for the
District Court to determine whether YouTube had knowledge or awareness
of any specific instances of infringement corresponding to the clips-in-
suit;
(3) The willful blindness doctrine may be applied, in appropriate

circumstances, to demonstrate knowledge or awareness of specific
instances of infringement under § 512(c)(1)(A); the cause is
ChapterNumber:
492
REMANDED for the [676 F.3d 42] District Court to consider the
application of the willful blindness doctrine in the first instance;
(4) The District Court erred by requiring “item-specific” knowledge of

infringement in its interpretation of the “right and ability to control”
infringing activity under 17 U.S.C. § 512(c)(1)(B), and the judgment is
REVERSED insofar as it rests on that erroneous construction of the
statute; the cause is REMANDED for further fact-finding by the District
Court on the issues of control and financial benefit;
(5) The District Court correctly held that three of the challenged YouTube
software functions—replication, playback, and the related videos feature
—occur “by reason of the storage at the direction of a user” within the
meaning of 17 U.S.C. § 512(c)(1), and the judgment is AFFIRMED
insofar as it so held; the cause is REMANDED for further fact-finding
regarding a fourth software function, involving the syndication of
YouTube videos to third parties.
On remand, the District Court shall allow the parties to brief the following
issues, with a view to permitting renewed motions for summary judgment
as soon as practicable:
(A) Whether, on the current record, YouTube had knowledge or awareness

of any specific infringements (including any clips-in-suit not expressly
noted in this opinion);
(B) Whether, on the current record, YouTube willfully blinded itself to

specific infringements;
(C) Whether YouTube had the “right and ability to control” infringing
activity within the meaning of § 512(c)(1)(B); and
(D) Whether any clips-in-suit were syndicated to a third party and, if so,
whether such syndication occurred “by reason of the storage at the
direction of the user” within the meaning of § 512(c)(1), so that YouTube
may claim the protection of the § 512(c) safe harbor.
We leave to the sound discretion of the District Court the question of

whether some additional, guided discovery is appropriate in order to
resolve “(C)” (“[w]hether YouTube had ‘the right and ability to control’
infringing activity”), and “(D)” (“[w]hether any clips-in-suit were
syndicated to a third party”). As noted above, for purposes of this case, the
record with respect to “(A)” (“[w]hether ... YouTube had knowledge or
awareness of any specific infringements”) and “(B)” (“[w]hether.
YouTube willfully blinded itself to specific infringements”) is now
complete.
Each party shall bear its own costs.
A[ … ]
493
s originally assigned to the panel, died prior to the resolution of this case. The
remaining two members of the panel, who are in agreement, have determined the
matter. See 28 U.S.C. § 46(d); 2d Cir. IOP E(b); United States v. Desimone, 140
F.3d 457, 458–59 (2d Cir.1998).
[1] The relevant provisions of 17 U.S.C. § 512(c) appear in Appendix A.
[2] The plaintiffs-appellants in Viacom Int'l, Inc. v. YouTube, Inc., No. 10–3270–
cv, are Viacom, Comedy Partners, Country Music Television, Inc., Paramount
Pictures Corporation, and Black Entertainment Television, LLC (jointly, the
“Viacom plaintiffs”). The plaintiffs-appellants in Football Ass'n Premier League
Ltd. v. YouTube, Inc., No. 10–3342–cv, are Premier League, Bourne Co., Cal IV
Entertainment, LLC, Cherry Lane Music Publishing Company, Inc., X–Ray Dog
Music, Inc., Fédération Française de Tennis, Murbo Music Publishing, Inc., and
Stage Three Music (US), Inc. (jointly, the “class plaintiffs”).
[3] The class plaintiffs also sought class certification pursuant to Rule 23 of the
Federal Rules of Civil Procedure.
[4] The “Flash” format “is a highly compressed streaming format that begins to
play instantly. Unlike other delivery methods, it does not require the viewer to
download the entire video file before viewing.” Joint App'x IV:73.
[5] Doctrines of secondary copyright infringement include contributory, vicarious,

and inducement liability. See Metro–Goldwyn–Mayer Studios Inc. v. Grokster,
Ltd., 545 U.S. 913, 930–31, 936–37, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005).
[6] National Music Publishers' Association, one of the named plaintiffs in the
putative class action, seeks only equitable relief.
[7] It is undisputed that all clips-in-suit had been removed from the YouTube
website by the time of summary judgment, mostly in response to DMCA takedown
notices. Viacom Int'l, 718 F.Supp.2d at 519.
[8] Veoh Networks operates a website that “allows people to share video content
over the Internet.” Shelter Capital, 667 F.3d at 1026.
[9] We express no opinion as to whether the evidence discussed above will prove
sufficient to withstand a renewed motion for summary judgment by YouTube on
remand. In particular, we note that there is at least some evidence that the search
requested by Walker in his February 7, 2007 e-mail was never carried out. See Joint
App'x III:256. We also note that the class plaintiffs have failed to identify evidence
indicating that any infringing content discovered as a result of Walker's request in
fact remained on the YouTube website. The class plaintiffs, drawing on the
voluminous record in this case, may be able to remedy these deficiencies in their
briefing to the District Court on remand.
[10] Our recent decision in Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d
Cir.2010), lends support to this result. In Tiffany, we rejected a willful blindness
challenge, holding that although eBay “knew as a general matter that counterfeit
Tiffany products were listed and sold through its website,” such knowledge “is
insufficient to trigger liability.” Id. at 110. In so holding, however, we rested on the
extensive findings of the district court with respect to willful blindness. Id. (citing
Tiffany (NJ) Inc. v. eBay, Inc., 576 F.Supp.2d 463, 513 (S.D.N.Y.2008)). Thus, the
Tiffany holding counsels in favor of explicit fact-finding on the issue of willful
blindness.
ChapterNumber:
494
[11] Ellison, 189 F.Supp.2d at 1061.
[12] UMG II, 665 F.Supp.2d at 1112.
[13] Other courts have suggested that control may exist where the service provider
is “actively involved in the listing, bidding, sale and delivery” of items offered for
sale, Hendrickson v. eBay, Inc., 165 F.Supp.2d 1082, 1094 (C.D.Cal.2001), or
otherwise controls vendor sales by previewing products prior to their listing, editing
product descriptions, or suggesting prices, Corbis Corp., 351 F.Supp.2d at 1110.
Because these cases held that control did not exist, however, it is not clear that the
practices cited therein are individually sufficient to support a finding of control.
[14] The class plaintiffs also assert, in a single sentence, that YouTube failed to
implement any repeat infringer policy prior to March 2006, and that the defendants
are therefore excluded from the safe harbor for any infringing activity before that
date. This one-sentence argument is insufficient to raise the issue for review before
this Court. Accordingly, we deem the issue waived on appeal. See, e.g., Norton v.
Sam's Club, 145 F.3d 114, 117 (2d Cir.1998) (“Issues not sufficiently argued in the
briefs are considered waived and normally will not be addressed on appeal.”).

11.1.3


508 F.3d 1146
Nos. 06-55405, 06-55406, 06-55425, 06-55759, 06-
55854, 06-55877
2007-12-03
508 F.3d 1146
495

v.
AMAZON.COM, INC., a corporation; A9.Com Inc., a
corporation, Defendants-Appellees.
Appellant,
v.
Appellee,
v.
Appellant,
v.
Appellee,
v.
Appellee,
v.
No. 06-55405.
No. 06-55406.
No. 06-55425.
No. 06-55759.
No. 06-55854.
No. 06-55877.

ChapterNumber:
496
Filed May 16, 2007.
[1153] Russell J. Frackman and Jeffrey D. Goldman, Mitchell, Silberberg & Knupp
LLP, Los Angeles, CA, Jeffrey N. Mausner, Berman, Mausner & Resser, Los
Angeles, CA, Daniel J. Cooper, Perfect 10, Inc., Beverly Hills, CA, for plaintiff-
appellant Perfect 10, Inc.
Andrew P. Bridges and Jennifer A. Golinveaux, Winston & Strawn LLP, San
Francisco, CA, Gene C. Schaerr, Winston & Strawn LLP, Washington, DC, for
defendant-appellee and cross-appellant Google Inc.
Mark T. Jansen & Anthony J. Malutta, Townsend and Townsend and Crew LLP,
San Francisco, CA, for defendants-appellees Amazon.com and A9.com, Inc.
Fred von Lohmann, Electronic Frontier Foundation, San Francisco, CA, for amicus
curiae Electronic Frontier Foundation, American Library Association, Medical
Library [1154] Association, American Association of Law Libraries, Association of
Research Libraries, and Special Libraries Association in support of Google Inc.
Victor S. Perlman, of counsel, American Society of Media Photographers; Nancy E.

Wolff, of counsel, Cowan, DeBaets, Abrahams & Sheppard, LLP; Robert W.
Clarida and Jason D. Sanders, Cowan, Liebowitz & Latman, P.C., New York, NY,
for amicus curiae American Society of Media Photographers, Inc., Picture Archive
Council of America, Inc., British Association of Picture Libraries and Agencies,
Inc., Stock Artists Alliance, The Graphic Artists Guild, American Society of Picture
Professionals and National Press Photographers, in support of Perfect 10 on issue of
Google's liability for the display of full-size images.
Eric J. Schwartz and Steven J. Metalitz, Smith & Metalitz LLP, Washington, DC,
for amicus curiae Motion Picture Association of America, Inc. in support of Perfect
10.
Jonathan Band, Jonathan Band PLLC, Washington, DC, for amicus curiae Net-
Coalition, Computer and Communications Industry Association, U.S. Internet
Service Provider Association, Consumer Electronics Association, Home Recording
Rights Coalition, Information Technology Association of America, and Internet
Commerce Coalition in support of Google Inc.
Kenneth L. Doroshow and Linda J. Zirkelbach, Recording Industry Association of

America, Washington, DC; Jacqueline C. Charlesworth, National Music Publishers'
Association, Washington, DC; Robert W. Clarida, Richard S. Mandel and Jonathan
Z. King, Cowan, Liebowitz & Latman, P.C., New York, NY, for amicus curiae
Recording Industry Association of America and National Music Publishers'
Association in support of neither party.
Appeal from the United States District Court for the Central District of California;
A. Howard Matz, District Judge, Presiding. D.C. Nos. CV-05-04753-AHM, CV-04-
09484-AHM.
Before: CYNTHIA HOLCOMB HALL, HAWKINS, and SANDRA S. IKUTA,

Circuit Judges.

497

Background
networks ... all sharing a common communications technology." Religious Tech.
Ctr. v. Netcom On-Line Commc'n Servs., Inc., 923 F.Supp. 1231, 1238 n. 1
(N.D.Cal.1995). Computer owners can provide information stored on their
computers to other users connected to the Internet through a medium called a
webpage. A webpage consists of text interspersed with instructions written in
Hypertext Markup Language ("HTML") that is stored in a computer. No images are
stored on a webpage; rather, the HTML instructions on the webpage provide an
address for where the images are stored, whether in the webpage publisher's
computer or some other computer. In general, webpages are publicly available and
can be accessed by computers connected to the Internet through the use of a web
browser.

ChapterNumber:
498

infringing image.

with Google.
499

back to its users.
webpage.
II
Standard of Review
ChapterNumber:
500

abuse of discretion. A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th
Cir.2001). The district court must support a preliminary injunction with findings of
fact, which we review for clear error. Earth Island Inst. v. U.S. Forest Serv., 442
F.3d 1147, 1156 (9th Cir.2006). We review the district court's conclusions of law
de novo. Napster, 239 F.3d at 1013.
affirmative defense will succeed. Gonzales v. O Centro Espirita Beneficente Uniao
do Vegetal, 546 U.S. 418, 429, 126 S.Ct. 1211, 163 L.Ed.2d 1017 (2006); see also
Abbott Labs. v. Andrx Pharms., Inc., 473 F.3d 1196, 1201 (Fed. Cir.2007) (to defeat
a motion for preliminary injunctive relief in a patent infringement case, the non-
moving party must establish a likelihood of success in proving its defenses of
invalidity or unenforceability); PHG Techs., LLC v. St. John Cos., 469 F.3d 1361,
1365 (Fed.Cir.2006). Accordingly, once Perfect 10 has shown a likelihood of
success on the merits, the burden shifts to Google to show a likelihood that its
affirmative defenses will succeed.
[4]
[1159]
III
501
Direct Infringement
A. Display Right
at 838-39.

ChapterNumber:
502

copy. 17 U.S.C. § 101.

issues, see Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913,
929-30, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005), Napster, 239 F.3d at 1019, and
does not constitute direct infringement of the copyright owner's display rights.
503
cause consumer confusion. Cf. 15 U.S.C. § 1114(1) (providing that a person who
uses a trademark in a manner likely to cause confusion shall be liable in a civil
action to the trademark registrant). [7]
right must be infringed in order for an infringement claim to arise. For example, a
"Game Genie" device that allowed a player to alter features of a Nintendo computer
game did not infringe Nintendo's right to prepare derivative works because the
Game Genie did not incorporate any portion of the game itself. See Lewis Galoob
Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 967 (9th Cir.1992). We held that
a copyright holder's right to create derivative works is not infringed unless the
alleged derivative work "incorporate[s] a protected work in some concrete or
permanent `form.'" Id. In other words, in some contexts, the claimant must be able
to claim infringement of its reproduction right in order to claim infringement of its
right to prepare derivative works.
image.
ChapterNumber:
504

C. Fair Use Defense

U.S.C. § 107.
foster.'" Id. at 577, 114 S.Ct. 1164 (quoting Stewart v. Abend, 495 U.S. 207, 236,
110 S.Ct. 1750, 109 L.Ed.2d 184 (1990)) (alteration in original).
505
include—
copyrighted work.
17 U.S.C. § 107.
"`the welfare of the public.'" Sony Corp. of Am. v. Universal City Studios, Inc., 464
U.S. 417, 429 n. 10, 104 S.Ct. 774, 78 L.Ed.2d 574 (quoting H.R.Rep. No. 2222,
60th Cong., 2d Sess. 7 (1909)).
ChapterNumber:
506

507

public. See Campbell, 510 U.S. at 579, 114 S.Ct. 1164; Harper & Row, 471 U.S. at
556-57, 105 S.Ct. 2218; Sony, 464 U.S. at 431-32, 104 S.Ct. 774.

ChapterNumber:
508
of Google.
Campbell, 510 U.S. at 586, 114 S.Ct. 1164 (internal quotation omitted); see also 17
U.S.C. § 107(3). In Kelly, we held Arriba's use of the entire photographic image
was reasonable in light of the purpose of a search engine. Kelly, 336 F.3d at 821.
Specifically, we noted, "[i]t was necessary for Arriba to copy the entire image to
allow users to recognize the image and decide whether to pursue more information
about the image or the originating [website]. If Arriba only copied part of the
image, it would be more difficult to identify it, thereby reducing the usefulness of
the visual search engine." Id. Accordingly, we concluded that this factor did not
509
weigh in favor of either [1168] party. Id. Because the same analysis applies to
Google's use of Perfect 10's image, the district court did not err in finding that this
factor favored neither party.
factors together "in light of the purposes of copyright." Campbell, 510 U.S. at 578,
114 S.Ct. 1164; see also Kelly, 336 F.3d at 818 ("We must balance[the section 107]
factors in light of the objectives of copyright law, rather than view them as
definitive or determinative tests."). In this case, Google has put Perfect 10's
thumbnail images (along with millions of other thumbnail images) to a use
fundamentally different than the use intended by Perfect 10. In doing so, Google
has provided a significant benefit to the public. Weighing this significant
transformative use against the unproven use of Google's thumbnails for cell phone
downloads, and considering the other fair use factors, all in light of the purpose of
copyright, we conclude that Google's use of Perfect 10's thumbnails is a fair use.
Because the district court here "found facts sufficient to evaluate each of the
statutory factors ... [we] need not remand for further factfinding." Harper & Row,
471 U.S. at 560, 105 S.Ct. 2218 (internal quotation omitted). We conclude that
Google is likely to succeed in proving its fair use defense and, accordingly, we
IV
ChapterNumber:
510

Infringement


511
significant' noninfringing uses." Id. at 942, 125 S.Ct. 2764 (Ginsburg, J.,
concurring) (quoting Sony, 464 U.S. at 442, 104 S.Ct. 774); see also id. at 936-37,
125 S.Ct. 2764.

ChapterNumber:
512
513
works.
take such steps.
ChapterNumber:
514
ability to do so.
515

liability." Perfect 10, 416 F.Supp.2d at 858.[15]

ChapterNumber:
516
Amazon.com
to the full-size images on third-party websites. [16] Perfect 10 v. Amazon, No. 05-
4753, consolidated with 04-9484 (C.D.Cal. February 21, 2006) (order denying
preliminary injunction). In addition, the district court concluded that Perfect 10's
secondary infringement claims against Amazon.com were likely to fail because
Amazon.com had no program analogous to AdSense, and thus did not provide any
revenues to infringing sites. Id. Finally, the district court determined that
Amazon.com's right and ability to control the infringing conduct of third-party
websites was substantially less than Google's. Id. Therefore, the district court
denied Perfect 10's motion for a preliminary injunction against Amazon.com. Id.
517
today.
VI
ChapterNumber:
518
own computer.
just as they would be in the non-online world." Id.; see also 17 U.S.C. § 512(l)
("The failure of a service provider's conduct to qualify for limitation of liability
under this section shall not bear adversely upon the consideration of a defense by
the service provider that the service provider's conduct is not infringing under this
title or any other defense."). Therefore, we must consider Google's potential
liability under the Copyright Act without reference to title II of the DMCA.
....

lending;
....

519

F.3d 544 (4th Cir.2004).
ChapterNumber:
520
models. See id.
infringe copyrights. See Grokster, 545 U.S. at 935-37, 125 S.Ct. 2764. However,
the Supreme Court in Grokster did not suggest that a court must find inducement in
order to impose contributory liability under common law principles.
907 F.Supp. 1361, 1365 n. 1 (N.D.Cal.1995).

merits of its contributory liability claim. See Napster, 239 F.3d at 1013 n. 2
("Secondary liability for copyright infringement does not exist in the absence of

containing copyrighted music violate plaintiffs' reproduction rights." Id. at 1014.
wrongful behavior cannot reasonably be expected to recur." F.T.C. v. Affordable
Media, LLC, 179 F.3d 1228, 1238 (9th Cir.1999) (internal quotation omitted).
moot.

521
11.1.4
Myspace Inc. v. Super Cassettes - Delhi High Court

- Division Bench Judgement - December 2016

https://drive.google.com/open?
id=0B3AFErneilW0blBRaHBkamFNRFU

11.2

Technological Protection
Measures

11.2.1
Universal City Studios, Inc. v. Corley


273 F.3d 429
Docket No. 00-9185
2001-11-28
273 F.3d 429 (2nd Cir. 2001)
UNIVERSAL CITY STUDIOS, INC. [ … ]

v.
ERIC CORLEY[ … ]
Jon O. Newman, Circuit Judge.
When the Framers of the First Amendment prohibited Congress from making any
law "abridging the freedom of speech," they were not thinking about computers,
computer programs, or the Internet. But neither were they thinking about radio,
television, or movies. Just as the inventions at the beginning and middle of the 20th
century presented new First Amendment issues, so does the cyber revolution at the
end of that century. This appeal raises significant First Amendment issues
concerning one aspect of computer technology—encryption to protect materials in
digital form from unauthorized access. The appeal challenges the constitutionality
ChapterNumber:
522
of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 1201 et seq.

(Supp. V 1999) and the validity of an injunction entered to enforce the DMCA.
Defendant-Appellant Eric C. Corley and his company, 2600 Enterprises, Inc.,

(collectively "Corley," "the Defendants," or "the Appellants") appeal from the
amended final judgment of the United States District Court for the Southern District
of New York (Lewis A. Kaplan, District Judge), entered August 23, 2000, enjoining
them from various actions concerning a decryption program known as "DeCSS."
Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 346 (S.D.N.Y. 2000)
("Universal II"). The injunction primarily bars the Appellants from posting DeCSS
on their web site and from knowingly linking [435] their web site to any other web
site on which DeCSS is posted. Id. at 346-47. We affirm.
Introduction
Understanding the pending appeal and the issues it raises requires some familiarity
with technical aspects of computers and computer software, especially software
called "digital versatile disks" or "DVDs," which are optical media storage devices
currently designed to contain movies. [1] Those lacking such familiarity will be
greatly aided by reading Judge Kaplan's extremely lucid opinion, Universal City
Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000) ("Universal I"),
beginning with his helpful section "The Vocabulary of this Case,"[ … ].
This appeal concerns the anti-trafficking provisions of the DMCA, which Congress
enacted in 1998 to strengthen copyright protection in the digital age. Fearful that
the ease with which pirates could copy and distribute a copyrightable work in
digital form was overwhelming the capacity of conventional copyright enforcement
to find and enjoin unlawfully copied material, Congress sought to combat copyright
piracy in its earlier stages, before the work was even copied. The DMCA therefore
backed with legal sanctions the efforts of copyright owners to protect their works
from piracy behind digital walls such as encryption codes or password protections.
In so doing, Congress targeted not only those pirates who would circumvent these
digital walls (the "anti-circumvention provisions," contained in 17 U.S.C. § 1201(a)
(1)), but also anyone who would traffic in a technology primarily designed to
circumvent a digital wall (the "anti-trafficking provisions," contained in 17 U.S.C.
§ 1201(a)(2), (b)(1)).
Corley publishes a print magazine and maintains an affiliated web site geared
towards "hackers," a digital-era term often applied to those interested in techniques
for circumventing protections of computers and computer data from unauthorized
access. The so-called hacker community includes serious computer-science scholars
conducting research on protection techniques, computer buffs intrigued by the
challenge of trying to circumvent access-limiting devices or perhaps hoping to
promote security by exposing flaws in protection techniques, mischief-makers
interested in disrupting computer operations, and thieves, including copyright
infringers who want to acquire copyrighted material (for personal use or resale)
without paying for it.
In November 1999, Corley posted a copy of the decryption computer program

"DeCSS" on his web site, http://www.2600.com ("2600.com"). [2] DeCSS is designed
to circumvent "CSS," the encryption technology [436] that motion picture studios
place on DVDs to prevent the unauthorized viewing and copying of motion
523
pictures. Corley also posted on his web site links to other web sites where DeCSS
could be found.
Plaintiffs-Appellees are eight motion picture studios that brought an action in the
Southern District of New York seeking injunctive relief against Corley under the
DMCA. Following a full non-jury trial, the District Court entered a permanent
injunction barring Corley from posting DeCSS on his web site or from knowingly
linking via a hyperlink to any other web site containing DeCSS. Universal II, 111 F.
Supp. 2d at 346-47. The District Court rejected Corley's constitutional attacks on
the statute and the injunction. Universal I, 111 F. Supp. 2d at 325-45.
Corley renews his constitutional challenges on appeal. Specifically, he argues

primarily that: (1) the DMCA oversteps limits in the Copyright Clause on the
duration of copyright protection; (2) the DMCA as applied to his dissemination of
DeCSS violates the First Amendment because computer code is "speech" entitled to
full First Amendment protection and the DMCA fails to survive the exacting
scrutiny accorded statutes that regulate "speech"; and (3) the DMCA violates the
First Amendment and the Copyright Clause by unduly obstructing the "fair use" of
copyrighted materials. Corley also argues that the statute is susceptible to, and
should therefore be given, a narrow interpretation that avoids alleged constitutional
objections.
Background
For decades, motion picture studios have made movies available for viewing at
home in what is called "analog" format. Movies in this format are placed on
videotapes, which can be played on a video cassette recorder ("VCR"). In the early
1990s, the studios began to consider the possibility of distributing movies in digital
form as well. Movies in digital form are placed on disks, known as DVDs, which
can be played on a DVD player (either a stand-alone device or a component of a
computer). DVDs offer advantages over analog tapes, such as improved visual and
audio quality, larger data capacity, and greater durability. However, the improved
quality of a movie in a digital format brings with it the risk that a virtually perfect
copy, i.e., one that will not lose perceptible quality in the copying process, can be
readily made at the click of a computer control and instantly distributed to countless
recipients throughout the world over the Internet. This case arises out of the movie
industry's efforts to respond to this risk by invoking the anti-trafficking provisions
of the DMCA.
I. CSS
The movie studios were reluctant to release movies in digital form until they were
confident they had in place adequate safeguards against piracy of their copyrighted
movies. The studios took several steps to minimize the piracy threat. First, they
settled on the DVD as the standard digital medium for home distribution of movies.
The studios then sought an encryption scheme to protect movies on DVDs. They
enlisted the help of members of the consumer electronics and computer industries,
who in mid-1996 developed the Content Scramble System ("CSS"). CSS is an
encryption scheme that employs an algorithm configured by a set of "keys" to
encrypt a DVD's contents. The algorithm is a type of mathematical formula for
ChapterNumber:
524
transforming the contents of the movie file into gibberish; the "keys" are in
actuality strings of 0's and 1's that serve as values for the mathematical formula.
Decryption in the case of CSS requires a set of "player keys" [437] contained in
compliant DVD players, as well as an understanding of the CSS encryption
algorithm. Without the player keys and the algorithm, a DVD player cannot access
the contents of a DVD. With the player keys and the algorithm, a DVD player can
display the movie on a television or a computer screen, but does not give a viewer
the ability to use the copy function of the computer to copy the movie or to
manipulate the digital content of the DVD.
The studios developed a licensing scheme for distributing the technology to

manufacturers of DVD players. Player keys and other information necessary to the
CSS scheme were given to manufacturers of DVD players for an administrative fee.
In exchange for the licenses, manufacturers were obliged to keep the player keys
confidential. Manufacturers were also required in the licensing agreement to
prevent the transmission of "CSS data" (a term undefined in the licensing
agreement) from a DVD drive to any "internal recording device," including,
presumably, a computer hard drive.
With encryption technology and licensing agreements in hand, the studios began
releasing movies on DVDs in 1997, and DVDs quickly gained in popularity,
becoming a significant source of studio revenue. [3] In 1998, the studios secured
added protection against DVD piracy when Congress passed the DMCA, which
prohibits the development or use of technology designed to circumvent a
technological protection measure, such as CSS. The pertinent provisions of the
DMCA are examined in greater detail below.
II. DeCSS
In September 1999, Jon Johansen, a Norwegian teenager, collaborating with two
unidentified individuals he met on the Internet, reverse-engineered a licensed DVD
player designed to operate on the Microsoft operating system, and culled from it the
player keys and other information necessary to decrypt CSS. The record suggests
that Johansen was trying to develop a DVD player operable on Linux, an alternative
operating system that did not support any licensed DVD players at that time. In
order to accomplish this task, Johansen wrote a decryption program executable on
Microsoft's operating system. [4] That program was called, appropriately enough,
"DeCSS."
If a user runs the DeCSS program (for example, by clicking on the DeCSS icon on a
Microsoft operating system platform) with a DVD in the computer's disk drive,
DeCSS will decrypt the DVD's CSS protection, allowing the user to copy the
DVD's files and place the copy on the user's hard drive. The result is a very large
computer file that can be played on a non-CSS-compliant player and copied,
manipulated, and transferred just like any [438] other computer file. [5] DeCSS
comes complete with a fairly user-friendly interface that helps the user select from
among the DVD's files and assign the decrypted file a location on the user's hard
drive. The quality of the resulting decrypted movie is "virtually identical" to that of
the encrypted movie on the DVD. Universal I, 111 F. Supp. 2d at 308, 313. And the
file produced by DeCSS, while large, can be compressed to a manageable size by a
compression software called "DivX," available at no cost on the Internet. This
525
compressed file can be copied onto a DVD, or transferred over the Internet (with
some patience). [6]
Johansen posted the executable object code, but not the source code, for DeCSS on
his web site. The distinction between source code and object code is relevant to this
case, so a brief explanation is warranted. A computer responds to electrical charges,
the presence or absence of which [439] is represented by strings of 1's and 0's.
Strictly speaking, "object code" consists of those 1's and 0's. Trial Tr. at 759
(Testimony of Professor Edward Felton). While some people can read and program
in object code, "it would be inconvenient, inefficient and, for most people, probably
impossible to do so." Universal I, 111 F. Supp. 2d at 306. Computer languages have
been written to facilitate program writing and reading. A program in such a
computer language—BASIC, C, and Java are examples—is said to be written in
"source code." Source code has the benefit of being much easier to read (by people)
than object code, but as a general matter, it must be translated back to object code
before it can be read by a computer. This task is usually performed by a program
called a compiler. Since computer languages range in complexity, object code can
be placed on one end of a spectrum, and different kinds of source code can be
arrayed across the spectrum according to the ease with which they are read and
understood by humans. See Trial Exhibits BBC (Declaration of David S.
Touretzky), BBE (Touretzky Article: Source v. Object Code: A False Dichotomy).
Within months of its appearance in executable form on Johansen's web site, DeCSS
was widely available on the Internet, in both object code and various forms of
source code. See Trial Exhibit CCN (Touretzky Article: Gallery of CSS
Descramblers).
In November 1999, Corley wrote and placed on his web site, 2600.com, an article
about the DeCSS phenomenon. His web site is an auxiliary to the print magazine,
2600: The Hacker Quarterly, which Corley has been publishing since 1984. [7] As the
name suggests, the magazine is designed for "hackers," as is the web site. While the
magazine and the web site cover some issues of general interest to computer users
—such as threats to online privacy—the focus of the publications is on the
vulnerability of computer security systems, and more specifically, how to exploit
that vulnerability in order to circumvent the security systems. Representative
articles explain how to steal an Internet domain name and how to break into the
computer systems at Federal Express. Universal I, 111 F. Supp. 2d at 308-09.
Corley's article about DeCSS detailed how CSS was cracked, and described the
movie industry's efforts to shut down web sites posting DeCSS. It also explained
that DeCSS could be used to copy DVDs. At the end of the article, the Defendants
posted copies of the object and source code of DeCSS. In Corley's words, he added
the code to the story because "in a journalistic world, . . . [y]ou have to show your
evidence . . . and particularly in the magazine that I work for, people want to see
specifically what it is that we are referring to," including "what evidence . . . we
have" that there is in fact technology that circumvents CSS. Trial Tr. at 823.
Writing about DeCSS without including the DeCSS code would have been, to
Corley, "analogous to printing a story about a picture and not printing the picture."
Id. at 825. Corley also added to the article links that he explained would take the
reader to other web sites where DeCSS could be found. Id. at 791, 826, 827, 848.
2600.com was only one of hundreds of web sites that began posting DeCSS near the
end of 1999. The movie industry tried to stem the tide by sending cease-and-desist
letters to many of these sites. These efforts met with only partial success; a number
ChapterNumber:
526
of sites refused to remove [440] DeCSS. In January 2000, the studios filed this
lawsuit. [8]
III. The DMCA

The DMCA was enacted in 1998 to implement the World Intellectual Property
Organization Copyright Treaty ("WIPO Treaty"), which requires contracting parties
to "provide adequate legal protection and effective legal remedies against the
circumvention of effective technological measures that are used by authors in
connection with the exercise of their rights under this Treaty or the Berne
Convention and that restrict acts, in respect of their works, which are not authorized
by the authors concerned or permitted by law." WIPO Treaty, Apr. 12, 1997, art.
11, S. Treaty Doc. No. 105-17 (1997), available at 1997 WL 447232. Even before
the treaty, Congress had been devoting attention to the problems faced by copyright
enforcement in the digital age. Hearings on the topic have spanned several years.
See, e.g., WIPO Copyright Treaties Implementation Act and Online Copyright
Liability Limitation Act: Hearing on H.R. 2281 and H.R. 2280 Before the
Subcomm. on Courts and Intellectual Property of the House Comm. on the
Judiciary, 105th Cong. (1997); NII Copyright Protection Act of 1995: Hearings on
H.R. 2441 Before the Subcomm. on Courts and Intellectual Property of the House
Comm. on the Judiciary, 104th Cong. (1996); NII Copyright Protection Act of
1995: Joint Hearing on H.R. 2441 and S. 1284 Before the Subcomm. on Courts and
Intellectual Property of the House Comm. on the Judiciary and the Senate Comm.
on the Judiciary, 104th Cong. (1995); H.R. Rep. No. 105-551 (1998); S. Rep. No.
105-190 (1998). This legislative effort resulted in the DMCA.
The Act contains three provisions targeted at the circumvention of technological

protections. The first is subsection 1201(a)(1)(A), the anti-circumvention provision.
[9]
This provision prohibits a person from "circumvent[ing] a technological measure
that effectively controls access to a work protected under [Title 17, governing
copyright]." The Librarian of Congress is required to promulgate regulations every
three years exempting from this subsection individuals who would otherwise be
"adversely affected" in "their ability to make noninfringing uses." 17 U.S.C. §
1201(a)(1)(B)-(E).
The second and third provisions are subsections 1201(a)(2) and 1201(b)(1), the
"anti-trafficking provisions." Subsection 1201(a)(2), the provision at issue in this
case, provides:
No person shall manufacture, import, offer to the public, provide, or

otherwise traffic in any technology, product, service, device, component,
or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a

technological measure that effectively controls access to a work protected
under this title;
(B) has only limited commercially significant purpose or use other than to
circumvent a technological measure that effectively controls access to a
work protected under this title; or
527
(C) is marketed by that person or another acting in concert with that

person with that person's knowledge for use in circumventing a
technological measure [441] that effectively controls access to a work
protected under this title.
Id. § 1201(a)(2). To "circumvent a technological measure" is defined, in pertinent

part, as "to descramble a scrambled work . . . or otherwise to . . . bypass . . . a
technological measure, without the authority of the copyright owner." Id. § 1201(a)
(3)(A).
Subsection 1201(b)(1) is similar to subsection 1201(a)(2), except that subsection

1201(a)(2) covers those who traffic in technology that can circumvent "a
technological measure that effectively controls access to a work protected under"
Title 17, whereas subsection 1201(b)(1) covers those who traffic in technology that
can circumvent "protection afforded by a technological measure that effectively
protects a right of a copyright owner under" Title 17. Id. § 1201(a)(2), (b)(1)
(emphases added). In other words, although both subsections prohibit trafficking in
a circumvention technology, the focus of subsection 1201(a)(2) is circumvention of
technologies designed to prevent access to a work, and the focus of subsection
1201(b)(1) is circumvention of technologies designed to permit access to a work but
prevent copying of the work or some other act that infringes a copyright. See S.
Rep. No. 105-190, at 11-12 (1998). Subsection 1201(a)(1) differs from both of
these anti-trafficking subsections in that it targets the use of a circumvention
technology, not the trafficking in such a technology.
The DMCA contains exceptions for schools and libraries that want to use
circumvention technologies to determine whether to purchase a copyrighted
product, 17 U.S.C. § 1201(d); individuals using circumvention technology "for the
sole purpose" of trying to achieve "interoperability" of computer programs through
reverse-engineering, id. § 1201(f); encryption research aimed at identifying flaws in
encryption technology, if the research is conducted to advance the state of
knowledge in the field, id. § 1201(g); and several other exceptions not relevant
here.
The DMCA creates civil remedies, id. § 1203, and criminal sanctions, id. § 1204. It
specifically authorizes a court to "grant temporary and permanent injunctions on
such terms as it deems reasonable to prevent or restrain a violation." Id. § 1203(b)
(1).
IV. Procedural History

Invoking subsection 1203(b)(1), the Plaintiffs sought an injunction against the
Defendants, alleging that the Defendants violated the anti-trafficking provisions of
the statute. On January 20, 2000, after a hearing, the District Court issued a
preliminary injunction barring the Defendants from posting DeCSS. [ … ]
The Defendants complied with the preliminary injunction, but continued to post
links to other web sites carrying DeCSS, an action they termed "electronic civil
disobedience." Universal I, 111 F. Supp. 2d at 303, 312. Under the heading "Stop
the MPAA [(Motion Picture Association of America)]," Corley urged other web
sites to post DeCSS lest "we . . . be forced into submission." Id. at 313.
ChapterNumber:
528
The Plaintiffs then sought a permanent injunction barring the Defendants from both
posting DeCSS and linking to sites containing DeCSS. After a trial on the merits,
the Court issued a comprehensive opinion, Universal I, and granted a permanent
injunction, Universal II.
The Court explained that the Defendants' posting of DeCSS on their web site
clearly falls within section 1201(a)(2)(A) of the DMCA, rejecting as spurious their
claim that CSS is not a technological measure that "effectively controls access to a
[442] work" because it was so easily penetrated by Johansen, Universal I, 111 F.
Supp. 2d at 318, and as irrelevant their contention that DeCSS was designed to
create a Linux-platform DVD player, id. at 319. The Court also held that the
Defendants cannot avail themselves of any of the DMCA's exceptions, id. at 319-
22, and that the alleged importance of DeCSS to certain fair uses of encrypted
copyrighted material was immaterial to their statutory liability, id. at 322-24. The
Court went on to hold that when the Defendants "proclaimed on their own site that
DeCSS could be had by clicking on the hyperlinks" on their site, they were
trafficking in DeCSS, and therefore liable for their linking as well as their posting.
Id. at 325.
Turning to the Defendants' numerous constitutional arguments, the Court first held
that computer code like DeCSS is "speech" that is "protected" (in the sense of
"covered") by the First Amendment, id. at 327, but that because the DMCA is
targeting the "functional" aspect of that speech, id. at 328-29, it is "content neutral,"
id. at 329, [10] and the intermediate scrutiny of United States v. O'Brien, 391 U.S.
367, 377 (1968), applies, Universal I, 111 F. Supp. 2d at 329-30. The Court
concluded that the DMCA survives this scrutiny, id. at 330-33, and also rejected
prior restraint, overbreadth, and vagueness challenges, id. at 333-39.
The Court upheld the constitutionality of the DMCA's application to linking on

similar grounds: linking, the Court concluded, is "speech," but the DMCA is
content-neutral, targeting only the functional components of that speech. Therefore,
its application to linking is also evaluated under O'Brien, and, thus evaluated,
survives intermediate scrutiny. However, the Court concluded that a blanket
proscription on linking would create a risk of chilling legitimate linking on the web.
The Court therefore crafted a restrictive test for linking liability (discussed below)
that it believed sufficiently mitigated that risk. The Court then found its test
satisfied in this case. Id. at 339-41.
Finally, the Court concluded that an injunction was highly appropriate in this case.
The Court observed that DeCSS was harming the Plaintiffs, not only because they
were now exposed to the possibility of piracy and therefore were obliged to develop
costly new safeguards for DVDs, but also because, even if there was only indirect
evidence that DeCSS availability actually facilitated DVD piracy, [11] the threat of
piracy was very real, particularly as Internet transmission speeds continue to
increase. Id. at 314-15, 342. Acknowledging that DeCSS was (and still is) widely
available on the Internet, the Court expressed confidence in
the likelihood . . . that this decision will serve notice on others that "the
strong right arm of equity" may be brought to bear against them absent a
change in their conduct and thus contribute to a climate of appropriate
respect for intellectual property rights in an age in which the excitement of
ready access to [443] untold quantities of information has blurred in some
minds the fact that taking what is not yours and not freely offered to you
is stealing.
529
Id. at 345.
The Court's injunction barred the Defendants from: "posting on any Internet web
site" DeCSS; "in any other way . . . offering to the public, providing, or otherwise
trafficking in DeCSS"; violating the anti-trafficking provisions of the DMCA in any
other manner, and finally "knowingly linking any Internet web site operated by
them to any other web site containing DeCSS, or knowingly maintaining any such
link, for the purpose of disseminating DeCSS." Universal II, 111 F. Supp. 2d at
346-47.
The Appellants have appealed from the permanent injunction. The United States has
intervened in support of the constitutionality of the DMCA. We have also had the
benefit of a number of amicus curiae briefs, supporting and opposing the District
Court's judgment. After oral argument, we invited the parties to submit responses to
a series of specific questions, and we have received helpful responses.
Discussion
I. Narrow Construction to Avoid

Constitutional Doubt
The Appellants first argue that, because their constitutional arguments are at least
substantial, we should interpret the statute narrowly so as to avoid constitutional
problems. They identify three different instances of alleged ambiguity in the statute
that they claim provide an opportunity for such a narrow interpretation.
First, they contend that subsection 1201(c)(1), which provides that "[n]othing in
this section shall affect rights, remedies, limitations or defenses to copyright
infringement, including fair use, under this title," can be read to allow the
circumvention of encryption technology protecting copyrighted material when the
material will be put to "fair uses" exempt from copyright liability. [12] We disagree
that subsection 1201(c)(1) permits such a reading. Instead, it clearly and simply
clarifies that the DMCA targets the circumvention of digital walls guarding
copyrighted material (and trafficking in circumvention tools), but does not concern
itself with the use of those materials after circumvention has occurred. Subsection
1201(c)(1) ensures that the DMCA is not read to prohibit the "fair use" of
information just because that information was obtained in a manner made illegal by
the DMCA. The Appellants' much more expansive interpretation of subsection
1201(c)(1) is not only outside the range of plausible readings of the provision, but
is also clearly refuted by the statute's legislative history. [ … ]
Second, the Appellants urge a narrow construction of the DMCA because of

subsection 1201(c)(4), which provides that "[n]othing in this section shall enlarge
or diminish any rights of free speech or the press for activities using consumer
electronics, telecommunications, or computing products." This language is clearly
precatory: Congress could not "diminish" constitutional rights of free speech even if
it wished to, and the fact that Congress also expressed a reluctance to "enlarge"
those rights cuts against the Appellants' effort to infer a narrowing construction of
the Act from this provision.
ChapterNumber:
530
Third, the Appellants argue that an individual who buys a DVD has the "authority
of the copyright owner" to view the DVD, and therefore is exempted from the
DMCA pursuant to subsection 1201(a)(3)(A) when the buyer circumvents an
encryption technology in order to view the DVD on a competing platform (such as
Linux). The basic flaw in this argument is that it misreads subsection 1201(a)(3)
(A). That provision exempts from liability those who would "decrypt" an encrypted
DVD with the authority of a copyright owner, not those who would "view" a DVD
with the authority of a copyright owner. [14] In any event, the Defendants offered no
evidence that the Plaintiffs have either explicitly or implicitly authorized DVD
buyers to circumvent encryption technology to support use on multiple platforms. [15]
We conclude that the anti-trafficking and anti-circumvention provisions of the

DMCA are not susceptible to the narrow interpretations urged by the Appellants.
We therefore proceed to consider the Appellants' constitutional claims.
II. Constitutional Challenge Based on the

Copyright Clause
In a footnote to their brief, the Appellants appear to contend that the DMCA, as
construed by the District Court, exceeds the constitutional authority [445] of
Congress to grant authors copyrights for a "limited time," U.S. Const. art. I, § 8, cl.
8, because it "empower[s] copyright owners to effectively secure perpetual
protection by mixing public domain works with copyrighted materials, then locking
both up with technological protection measures." [ … ] This argument is elaborated
in the amici curiae brief filed by Prof. Julie E. Cohen on behalf of herself and 45
other intellectual property law professors. [ … ] For two reasons, the argument
provides no basis for disturbing the judgment of the District Court.
First, we have repeatedly ruled that arguments presented to us only in a footnote are
not entitled to appellate consideration. Concourse Rehabilitation & Nursing Center
Inc. v. DeBuono, 179 F.3d 38, 47 (2d Cir. 1999); United States v. Mapp, 170 F.3d
328, 333 n.8 (2d Cir. 1999); United States v. Restrepo, 986 F.2d 1462, 1463 (2d
Cir. 1993). Although an amicus brief can be helpful in elaborating issues properly
presented by the parties, it is normally not a method for injecting new issues into an
appeal, at least in cases where the parties are competently represented by counsel.
See, e.g., Concourse Center, 179 F.3d at 47.
Second, to whatever extent the argument might have merit at some future time in a
case with a properly developed record, the argument is entirely premature and
speculative at this time on this record. There is not even a claim, much less
evidence, that any Plaintiff has sought to prevent copying of public domain works,
or that the injunction prevents the Defendants from copying such works. As Judge
Kaplan noted, the possibility that encryption would preclude access to public
domain works "does not yet appear to be a problem, although it may emerge as one
in the future." Universal I, 111 F. Supp. 2d at 338 n.245.
III. Constitutional Challenges Based on the

First Amendment
531
A. Applicable Principles
Last year, in one of our Court's first forays into First Amendment law in the digital
age, we took an "evolutionary" approach to the task of tailoring familiar
constitutional rules to novel technological circumstances, favoring "narrow"
holdings that would permit the law to mature on a "case-by-case" basis. See
Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 584 n.11 (2d Cir.
2000). In that spirit, we proceed, with appropriate caution, to consider the
Appellants' First Amendment challenges by analyzing a series of preliminary issues
the resolution of which provides a basis for adjudicating the specific objections to
the DMCA and its application to DeCSS. These issues, which we consider only to
the extent necessary to resolve the pending appeal, are whether computer code is
speech, whether computer programs are speech, the scope of First Amendment
protection for computer code, and the scope of First Amendment protection for
decryption code. Based on our analysis of these issues, we then consider the
Appellants' challenge to the injunction's provisions concerning posting and linking.
1. Code as Speech
Communication does not lose constitutional protection as "speech" simply because
it is expressed in the language of computer code. Mathematical formulae and
musical scores are written in "code," i.e., symbolic notations not comprehensible to
the uninitiated, and yet both are covered by the First Amendment. If someone [446]
chose to write a novel entirely in computer object code by using strings of 1's and
0's for each letter of each word, the resulting work would be no different for
constitutional purposes than if it had been written in English. The "object code"
version would be incomprehensible to readers outside the programming community
(and tedious to read even for most within the community), but it would be no more
incomprehensible than a work written in Sanskrit for those unversed in that
language. The undisputed evidence reveals that even pure object code can be, and
often is, read and understood by experienced programmers. And source code (in any
of its various levels of complexity) can be read by many more. See Universal I, 111
F. Supp. 2d at 326. Ultimately, however, the ease with which a work is
comprehended is irrelevant to the constitutional inquiry. If computer code is
distinguishable from conventional speech for First Amendment purposes, it is not
because it is written in an obscure language. See Junger v. Daley, 209 F.3d 481,
484 (6th Cir. 2000).
2. Computer Programs as Speech

Of course, computer code is not likely to be the language in which a work of
literature is written. Instead, it is primarily the language for programs executable by
a computer. These programs are essentially instructions to a computer. In general,
programs may give instructions either to perform a task or series of tasks when
initiated by a single (or double) click of a mouse or, once a program is operational
("launched"), to manipulate data that the user enters into the computer. [16] Whether
computer code that gives a computer instructions is "speech" within the meaning of
the First Amendment requires consideration of the scope of the Constitution's
protection of speech.
ChapterNumber:
532
The First Amendment provides that "Congress shall make no law . . . abridging the
freedom of speech. . . ." U.S. Const. amend. I. "Speech" is an elusive term, and
judges and scholars have debated its bounds for two centuries. Some would confine
First Amendment protection to political speech. E.g., Robert Bork, Neutral
Principles and Some First Amendment Problems, 47 Ind. L.J. 1 (1971). Others
would extend it further to artistic expression. E.g., Marci A. Hamilton, Art Speech,
49 Vand. L. Rev. 73 (1996).
Whatever might be the merits of these and other approaches, the law has not been
so limited. Even dry information, devoid of advocacy, political relevance, or artistic
expression, has been accorded First Amendment protection. [ … ]
Thus, for example, courts have subjected to First Amendment scrutiny restrictions
on the dissemination of technical scientific information[ … ], and scientific
research, Stanford University, 773 F. Supp. at 473, and attempts to regulate the
publication of instructions, [ … ] .[18]
Computer programs are not exempted from the category of First Amendment speech
simply because their instructions require use of a computer. A recipe is no less
"speech" because it calls for the use of an oven, and a musical score is no less
"speech" because it specifies performance on an electric guitar. Arguably
distinguishing computer programs from conventional language instructions is the
fact that programs are executable on a computer. But the fact that a program has the
capacity to direct the functioning of a computer does not mean that it lacks the
additional capacity to convey information, and it is the conveying of information
that renders instructions "speech" for purposes of the First Amendment. [19] The
information [448] conveyed by most "instructions" is how to perform a task.
Instructions such as computer code, which are intended to be executable by a

computer, will often convey information capable of comprehension and assessment
by a human being. [20] A programmer reading a program learns information about
instructing a computer, and might use this information to improve personal
programming skills and perhaps the craft of programming. Moreover, programmers
communicating ideas to one another almost inevitably communicate in code, much
as musicians use notes. [21] Limiting First Amendment protection of programmers to
descriptions of computer code (but not the code itself) would impede discourse
among computer scholars, [22] just as limiting protection for musicians to
descriptions of musical scores (but not sequences of notes) would impede their
exchange of ideas and expression. Instructions that communicate information
comprehensible to a human qualify as speech whether the instructions are designed
for execution by a computer or a human (or both).
[…]
For all of these reasons, we join the other courts that have concluded that computer
code, and computer programs constructed from code can merit First Amendment
protection[ … ].
3. The Scope of First Amendment Protection

for Computer Code
533
Having concluded that computer code conveying information is "speech" [450]

within the meaning of the First Amendment, we next consider, to a limited extent,
the scope of the protection that code enjoys. As the District Court recognized,
Universal I, 111 F. Supp. 2d at 327, the scope of protection for speech generally
depends on whether the restriction is imposed because of the content of the speech.
Content-based restrictions are permissible only if they serve compelling state
interests and do so by the least restrictive means available. See Sable
Communications of California, Inc. v. FCC, 492 U.S. 115, 126 (1989). A content-
neutral restriction is permissible if it serves a substantial governmental interest, the
interest is unrelated to the suppression of free expression, and the regulation is
narrowly tailored, which "in this context requires . . . that the means chosen do not
'burden substantially more speech than is necessary to further the government's
legitimate interests.'" Turner Broadcasting System, Inc. v. FCC, 512 U.S. 622, 662
(1994) (quoting Ward v. Rock Against Racism, 491 U.S. 781, 799 (1989)). [25]
"[G]overnment regulation of expressive activity is 'content neutral' if it is justified

without reference to the content of regulated speech." [ … ]. "The government's
purpose is the controlling consideration. A regulation that serves purposes unrelated
to the content of expression is deemed neutral, even if it has an incidental effect on
some speakers or messages but not others." Ward, 491 U.S. at 791. The Supreme
Court's approach to determining content-neutrality appears to be applicable whether
what is regulated is expression, see id. at 791-93 (regulation of volume of music),
conduct, see O'Brien, 391 U.S. at 377, or any "activity" that can be said to combine
speech and non-speech elements[ … ].
To determine whether regulation of computer code is content-neutral, the initial

inquiry must be whether the regulated activity is "sufficiently imbued with elements
of communication to fall within the scope of the First . . . Amendment[]." Id. at
409; see also Name.Space, 202 F.3d at 585. Computer code, as we have noted, often
conveys information comprehensible to human beings, even as it also directs a
computer to perform various functions. Once a speech component [451] is
identified, the inquiry then proceeds to whether the regulation is "justified without
reference to the content of regulated speech." Hill, 530 U.S. at 720.
The Appellants vigorously reject the idea that computer code can be regulated
according to any different standard than that applicable to pure speech, i.e., speech
that lacks a nonspeech component. Although recognizing that code is a series of
instructions to a computer, they argue that code is no different, for First
Amendment purposes, than blueprints that instruct an engineer or recipes that
instruct a cook. See Supplemental Brief for Appellants at 2, 3. [26] We disagree.
Unlike a blueprint or a recipe, which cannot yield any functional result without
human comprehension of its content, human decision-making, and human action,
computer code can instantly cause a computer to accomplish tasks and instantly
render the results of those tasks available throughout the world via the Internet. The
only human action required to achieve these results can be as limited and
instantaneous as a single click of a mouse. These realities of what code is and what
its normal functions are require a First Amendment analysis that treats code as
combining nonspeech and speech elements, i.e., functional and expressive elements.
[…]
We recognize, as did Judge Kaplan, that the functional capability of computer code
cannot yield a result until a human being decides to insert the disk containing the
code into a computer and causes it to perform its function (or programs a computer
to cause the code to perform its function). Nevertheless, this momentary
ChapterNumber:
534
intercession of human action does not diminish the nonspeech component of code,
nor render code entirely speech, like a blueprint or a recipe. Judge Kaplan, in a
passage that merits extensive quotation, cogently explained why this is especially
so with respect to decryption code:
[T]he focus on functionality in order to determine the level of scrutiny is

not an inevitable consequence of the speech-conduct distinction. Conduct
has immediate effects on the environment. Computer code, on the other
hand, no matter how functional, causes a computer to perform the
intended operations only if someone uses the code to do so. Hence, one
commentator, in a thoughtful article, has maintained that functionality is
really "a proxy for effects or harm" and that its adoption as a determinant
of the level of scrutiny slides over questions of causation that intervene
between the dissemination of a computer program and any harm caused by
its use.
The characterization of functionality as a proxy for the consequences of

use is accurate. But the assumption that the chain of causation is too
attenuated to justify the use of functionality to determine the level of
scrutiny, at least in this context, is not.
Society increasingly depends upon technological means of controlling

access to digital files and systems, whether they are military computers,
bank records, academic records, copyrighted works or something else
entirely. There are far too many who, given any opportunity, will bypass
security measures, [452] some for the sheer joy of doing it, some for
innocuous reasons, and others for more malevolent purposes. Given the
virtually instantaneous and worldwide dissemination widely available via
the Internet, the only rational assumption is that once a computer program
capable of bypassing such an access control system is disseminated, it will
be used. And that is not all.
There was a time when copyright infringement could be dealt with quite
adequately by focusing on the infringing act. If someone wished to make
and sell high quality but unauthorized copies of a copyrighted book, for
example, the infringer needed a printing press. The copyright holder, once
aware of the appearance of infringing copies, usually was able to trace the
copies up the chain of distribution, find and prosecute the infringer, and
shut off the infringement at the source.
In principle, the digital world is very different. Once a decryption program

like DeCSS is written, it quickly can be sent all over the world. Every
recipient is capable not only of decrypting and perfectly copying plaintiffs'
copyrighted DVDs, but also of retransmitting perfect copies of DeCSS and
thus enabling every recipient to do the same. They likewise are capable of
transmitting perfect copies of the decrypted DVD. The process potentially
is exponential rather than linear.
.....
These considerations drastically alter consideration of the causal link

between dissemination of computer programs such as this and their illicit
535
use. Causation in the law ultimately involves practical policy judgments.

Here, dissemination itself carries very substantial risk of imminent harm
because the mechanism is so unusual by which dissemination of means of
circumventing access controls to copyrighted works threatens to produce
virtually unstoppable infringement of copyright. In consequence, the
causal link between the dissemination of circumvention computer
programs and their improper use is more than sufficiently close to warrant
selection of a level of constitutional scrutiny based on the programs'
functionality.
[ … ]The functionality of computer code properly affects the scope of its First
Amendment protection.
4. The Scope of First Amendment Protection

for Decryption Code
In considering the scope of First Amendment protection for a decryption program
like DeCSS, we must recognize that the essential purpose of encryption code is to
prevent unauthorized access. Owners of all property rights are entitled to prohibit
access to their property by unauthorized persons. Homeowners can install locks on
the doors of their houses. Custodians of valuables can place them in safes. Stores
can attach to products security devices that will activate alarms if the products are
taken away without purchase. These and similar security devices can be
circumvented. Burglars can use skeleton keys to open door locks. Thieves can
obtain the combinations to safes. Product security devices can be neutralized.
Our case concerns a security device, CSS computer code, that prevents access by
unauthorized persons to DVD movies. The CSS code is embedded in the DVD
movie. Access to the movie cannot be obtained unless a person has a device, a
licensed DVD player, equipped with computer code capable of decrypting the CSS
encryption code. In its basic function, [453] CSS is like a lock on a homeowner's
door, a combination of a safe, or a security device attached to a store's products.
DeCSS is computer code that can decrypt CSS. In its basic function, it is like a
skeleton key that can open a locked door, a combination that can open a safe, or a
device that can neutralize the security device attached to a store's products. [27]
DeCSS enables anyone to gain access to a DVD movie without using a DVD player.
The initial use of DeCSS to gain access to a DVD movie creates no loss to movie
producers because the initial user must purchase the DVD. However, once the DVD
is purchased, DeCSS enables the initial user to copy the movie in digital form and
transmit it instantly in virtually limitless quantity, thereby depriving the movie
producer of sales. The advent of the Internet creates the potential for instantaneous
worldwide distribution of the copied material.
At first glance, one might think that Congress has as much authority to regulate the
distribution of computer code to decrypt DVD movies as it has to regulate
distribution of skeleton keys, combinations to safes, or devices to neutralize store
product security devices. However, despite the evident legitimacy of protection
against unauthorized access to DVD movies, just like any other property, regulation
of decryption code like DeCSS is challenged in this case because DeCSS differs
from a skeleton key in one important respect: it not only is capable of performing
ChapterNumber:
536
the function of unlocking the encrypted DVD movie, it also is a form of

communication, albeit written in a language not understood by the general public.
As a communication, the DeCSS code has a claim to being "speech," and as
"speech," it has a claim to being protected by the First Amendment. But just as the
realities of what any computer code can accomplish must inform the scope of its
constitutional protection, so the capacity of a decryption program like DeCSS to
accomplish unauthorized—indeed, unlawful—access to materials in which the
Plaintiffs have intellectual property rights must inform and limit the scope of its
First Amendment protection. [ … ]
With all of the foregoing considerations in mind, we next consider the Appellants'
First Amendment challenge to the DMCA as applied in the specific prohibitions
that have been imposed by the District Court's injunction.
B. First Amendment Challenge

The District Court's injunction applies the DMCA to the Defendants by imposing
two types of prohibition, both grounded on the anti-trafficking provisions of the
DMCA. The first prohibits posting DeCSS or any other technology for
circumventing CSS on any Internet web site. Universal II, 111 F. Supp. 2d at 346-
47, ¶ 1(a), (b). The second prohibits knowingly linking any Internet web site to any
other web site containing DeCSS. Id. at 347, ¶ 1(c). The validity of the posting and
linking prohibitions must be considered separately.
1. Posting
The initial issue is whether the posting prohibition is content-neutral, since, as we
have explained, this classification [454] determines the applicable constitutional
standard. The Appellants contend that the anti-trafficking provisions of the DMCA
and their application by means of the posting prohibition of the injunction are
content-based. They argue that the provisions "specifically target . . . scientific
expression based on the particular topic addressed by that expression—namely,
techniques for circumventing CSS." Supplemental Brief for Appellants at 1. We
disagree. The Appellants' argument fails to recognize that the target of the posting
provisions of the injunction—DeCSS—has both a nonspeech and a speech
component, and that the DMCA, as applied to the Appellants, and the posting
prohibition of the injunction target only the nonspeech component. Neither the
DMCA nor the posting prohibition is concerned with whatever capacity DeCSS
might have for conveying information to a human being, and that capacity, as
previously explained, is what arguably creates a speech component of the
decryption code. The DMCA and the posting prohibition are applied to DeCSS
solely because of its capacity to instruct a computer to decrypt CSS. That functional
capability is not speech within the meaning of the First Amendment. The
Government seeks to "justif[y]," Hill, 530 U.S. at 720, both the application of the
DMCA and the posting prohibition to the Appellants solely on the basis of the
functional capability of DeCSS to instruct a computer to decrypt CSS, i.e., "without
reference to the content of the regulated speech," id. This type of regulation is
therefore content-neutral, just as would be a restriction on trafficking in skeleton
keys identified because of their capacity to unlock jail cells, even though some of
537
the keys happened to bear a slogan or other legend that qualified as a speech
component.
As a content-neutral regulation with an incidental effect on a speech component, the

regulation must serve a substantial governmental interest, the interest must be
unrelated to the suppression of free expression, and the incidental restriction on
speech must not burden substantially more speech than is necessary to further that
interest. Turner Broadcasting, 512 U.S. at 662. The Government's interest in
preventing unauthorized access to encrypted copyrighted material is unquestionably
substantial, and the regulation of DeCSS by the posting prohibition plainly serves
that interest. Moreover, that interest is unrelated to the suppression of free
expression. The injunction regulates the posting of DeCSS, regardless of whether
DeCSS code contains any information comprehensible by human beings that would
qualify as speech. Whether the incidental regulation on speech burdens
substantially more speech than is necessary to further the interest in preventing
unauthorized access to copyrighted materials requires some elaboration.
Posting DeCSS on the Appellants' web site makes it instantly available at the click
of a mouse to any person in the world with access to the Internet, and such person
can then instantly transmit DeCSS to anyone else with Internet access. Although the
prohibition on posting prevents the Appellants from conveying to others the speech
component of DeCSS, the Appellants have not suggested, much less shown, any
technique for barring them from making this instantaneous worldwide distribution
of a decryption code that makes a lesser restriction on the code's speech component.
[28]
It is true that the [455] Government has alternative means of prohibiting
unauthorized access to copyrighted materials. For example, it can create criminal
and civil liability for those who gain unauthorized access, and thus it can be argued
that the restriction on posting DeCSS is not absolutely necessary to preventing
unauthorized access to copyrighted materials. But a content-neutral regulation need
not employ the least restrictive means of accomplishing the governmental objective.
Id. It need only avoid burdening "substantially more speech than is necessary to
further the government's legitimate interests." Id. (internal quotation marks and
citation omitted). The prohibition on the Defendants' posting of DeCSS satisfies
that standard. [29]
2. Linking
In considering linking, we need to clarify the sense in which the injunction
prohibits such activity. Although the injunction defines several terms, it does not
define "linking." Nevertheless, it is evident from the District Court's opinion that it
is concerned with "hyperlinks," Universal I, 111 F. Supp. 2d at 307; see id. at 339.
[30]
A hyperlink is a cross-reference (in a distinctive font or color) appearing on one
web page that, when activated by the point-and-click of a mouse, brings onto the
computer screen another web page. The hyperlink can appear on a screen (window)
as text, such as the Internet address ("URL") of the web page being called up or a
word or phrase that identifies the web page to be called up, for example, "DeCSS
web site." Or the hyperlink can appear as an image, for example, an icon depicting
a person sitting at a computer watching a DVD movie and text stating "click here to
access DeCSS and see DVD movies for free!" The code for the web page
containing the hyperlink contains a computer instruction that associates the link
with the URL of the web page to be accessed, such that clicking on the hyperlink
ChapterNumber:
538
instructs the computer to enter the URL of the desired web page and thereby access
that page. With a hyperlink on a web page, the linked web site is just one click
away. [31]
[456] In applying the DMCA to linking (via hyperlinks), Judge Kaplan recognized,
as he had with DeCSS code, that a hyperlink has both a speech and a nonspeech
component. It conveys information, the Internet address of the linked web page, and
has the functional capacity to bring the content of the linked web page to the user's
computer screen (or, as Judge Kaplan put it, to "take one almost instantaneously to
the desired destination." Id.). As he had ruled with respect to DeCSS code, he ruled
that application of the DMCA to the Defendants' linking to web sites containing
DeCSS is content-neutral because it is justified without regard to the speech
component of the hyperlink. Id. The linking prohibition applies whether or not the
hyperlink contains any information, comprehensible to a human being, as to the
Internet address of the web page being accessed. The linking prohibition is justified
solely by the functional capability of the hyperlink.
Applying the O'Brien/Ward/Turner Broadcasting requirements for content-neutral

regulation, Judge Kaplan then ruled that the DMCA, as applied to the Defendants'
linking, served substantial governmental interests and was unrelated to the
suppression of free expression. Id. We agree. He then carefully considered the
"closer call," id., as to whether a linking prohibition would satisfy the narrow
tailoring requirement. In an especially carefully considered portion of his opinion,
he observed that strict liability for linking to web sites containing DeCSS would
risk two impairments of free expression. Web site operators would be inhibited
from displaying links to various web pages for fear that a linked page might contain
DeCSS, and a prohibition on linking to a web site containing DeCSS would curtail
access to whatever other information was contained at the accessed site. Id. at 340.
To avoid applying the DMCA in a manner that would "burden substantially more
speech than is necessary to further the government's legitimate interests," Turner
Broadcasting, 512 U.S. at 662 (internal quotation marks and citation omitted),
Judge Kaplan adapted the standards of New York Times Co. v. Sullivan, 376 U.S.
254, 283 (1964), to fashion a limited prohibition against linking to web sites
containing DeCSS. He required clear and convincing evidence
that those responsible for the link (a) know at the relevant time that the
offending material is on the linked-to site, (b) know that it is
circumvention technology that may not lawfully be offered, and (c) create
or maintain the link for the purpose of disseminating that technology.
Universal I, 111 F. Supp. 2d at 341. He then found that the evidence satisfied his
three-part test by his required standard of proof. Id.
In response to our post-argument request for the parties' views on various issues,
including specifically Judge Kaplan's test for a linking prohibition, the Appellants
replied that his test was deficient for not requiring proof of intent to cause, or aid or
abet, harm, and that the only valid test for a linking prohibition would be one that
could validly apply to the publication in a print medium of an address for obtaining
prohibited material. Supplemental Brief for Appellants at 14. The Appellees and the
Government accepted [457] Judge Kaplan's criteria for purposes of asserting the
validity of the injunction as applied to the Appellants, with the Government
expressing reservations as to the standard of clear and convincing evidence.
539
Supplemental Brief for Appellees at 22-23; Supplemental Brief for Government at

19-21.
Mindful of the cautious approach to First Amendment claims involving computer

technology expressed in Name.Space, 202 F.3d at 584 n.11, we see no need on this
appeal to determine whether a test as rigorous as Judge Kaplan's is required to
respond to First Amendment objections to the linking provision of the injunction
that he issued. It suffices to reject the Appellants' contention that an intent to cause
harm is required and that linking can be enjoined only under circumstances
applicable to a print medium. As they have throughout their arguments, the
Appellants ignore the reality of the functional capacity of decryption computer code
and hyperlinks to facilitate instantaneous unauthorized access to copyrighted
materials by anyone anywhere in the world. Under the circumstances amply shown
by the record, the injunction's linking prohibition validly regulates the Appellants'
opportunity instantly to enable anyone anywhere to gain unauthorized access to
copyrighted movies on DVDs. [32]
At oral argument, we asked the Government whether its undoubted power to punish
the distribution of obscene materials would permit an injunction prohibiting a
newspaper from printing addresses of bookstore locations carrying such materials.
In a properly cautious response, the Government stated that the answer would
depend on the circumstances of the publication. The Appellants' supplemental
papers enthusiastically embraced the arguable analogy between printing bookstore
addresses and displaying on a web page links to web sites at which DeCSS may be
accessed. Supplemental Brief for Appellants at 14. They confidently asserted that
publication of bookstore locations carrying obscene material cannot be enjoined
consistent with the First Amendment, and that a prohibition against linking to web
sites containing DeCSS is similarly invalid.[ … ]
Like many analogies posited to illuminate legal issues, the bookstore analogy is
helpful primarily in identifying characteristics that distinguish it from the context of
the pending dispute. If a bookstore proprietor is knowingly selling obscene
materials, the evil of distributing such materials can be prevented by injunctive
relief against the unlawful distribution (and similar distribution by others can be
deterred by punishment of the distributor). And if others publish the location of the
bookstore, preventive relief against a distributor can be effective before any
significant distribution of the prohibited materials has occurred. The digital world,
however, creates a very different problem. If obscene materials are posted on one
web site and other sites post hyperlinks to the first site, the materials are available
for instantaneous worldwide distribution before any preventive measures can be
effectively taken.
This reality obliges courts considering First Amendment claims in the context of
the pending case to choose between two unattractive alternatives: either tolerate
some impairment of communication in order [458] to permit Congress to prohibit
decryption that may lawfully be prevented, or tolerate some decryption in order to
avoid some impairment of communication. Although the parties dispute the extent
of impairment of communication if the injunction is upheld and the extent of
decryption if it is vacated, and differ on the availability and effectiveness of
techniques for minimizing both consequences, the fundamental choice between
impairing some communication and tolerating decryption cannot be entirely
avoided.
ChapterNumber:
540
In facing this choice, we are mindful that it is not for us to resolve the issues of
public policy implicated by the choice we have identified. Those issues are for
Congress. Our task is to determine whether the legislative solution adopted by
Congress, as applied to the Appellants by the District Court's injunction, is
consistent with the limitations of the First Amendment, and we are satisfied that it
is.
IV. Constitutional Challenge Based on

Claimed Restriction of Fair Use
Asserting that fair use "is rooted in and required by both the Copyright Clause and
the First Amendment," [ … ] the Appellants contend that the DMCA, as applied by
the District Court, unconstitutionally "eliminates fair use" of copyrighted materials [
… ]. We reject this extravagant claim.
Preliminarily, we note that the Supreme Court has never held that fair use is
constitutionally required, although some isolated statements in its opinions might
arguably be enlisted for such a requirement. In Stewart v. Abend, 495 U.S. 207
(1990), cited by the Appellants, the Court merely noted that fair use "'permits
courts to avoid rigid application of the copyright statute when, on occasion, it
would stifle the very creativity which that law is designed to foster,'" id. [ … ]In
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), the Court observed,
purpose, '[t]o promote the Progress of Science and useful Arts. . . .'" [33] [ … ]
We need not explore the extent to which fair use might have constitutional
protection, grounded on either the First Amendment or the Copyright Clause,
because whatever validity a constitutional claim might have as to an application of
the DMCA that impairs fair use of copyrighted materials, such matters are far
beyond the [459] scope of this lawsuit for several reasons. In the first place, the
Appellants do not claim to be making fair use of any copyrighted materials, and
nothing in the injunction prohibits them from making such fair use. They are barred
from trafficking in a decryption code that enables unauthorized access to
copyrighted materials.
Second, as the District Court properly noted, to whatever extent the anti-trafficking
provisions of the DMCA might prevent others from copying portions of DVD
movies in order to make fair use of them, "the evidence as to the impact of the anti-
trafficking provision[s] of the DMCA on prospective fair users is scanty and fails
adequately to address the issues." [ … ]
Third, the Appellants have provided no support for their premise that fair use of
DVD movies is constitutionally required to be made by copying the original work
in its original format. [34] Their examples of the fair uses that they believe others will
be prevented from making all involve copying in a digital format those portions of a
DVD movie amenable to fair use, a copying that would enable the fair user to
manipulate the digitally copied portions. One example is that of a school child who
wishes to copy images from a DVD movie to insert into the student's documentary
film. We know of no authority for the proposition that fair use, as protected by the
Copyright Act, much less the Constitution, guarantees copying by the optimum
method or in the identical format of the original. Although the Appellants insisted
541
at oral argument that they should not be relegated to a "horse and buggy" technique
in making fair use of DVD movies, [35] the DMCA does not impose even an arguable
limitation on the opportunity to make a variety of traditional fair uses of DVD
movies, such as commenting on their content, quoting excerpts from their
screenplays, and even recording portions of the video images and sounds on film or
tape by pointing a camera, a camcorder, or a microphone at a monitor as it displays
the DVD movie. The fact that the resulting copy will not be as perfect or as
manipulable as a digital copy obtained by having direct access to the DVD movie in
its digital form, provides no basis for a claim of unconstitutional limitation of fair
use. A film critic making fair use of a movie by quoting selected lines of dialogue
has no constitutionally valid claim that the review (in print or on television) would
be technologically superior if the reviewer had not been prevented from using a
movie camera in the theater, nor has an art student a valid constitutional claim to
fair use of a painting by photographing it in a museum. Fair use has never been held
to be a guarantee of access to copyrighted material in order to copy it by the fair
user's preferred technique or in the format of the original.
Conclusion
We have considered all the other arguments of the Appellants and conclude that
[460] they provide no basis for disturbing the District Court's judgment.
Accordingly, the judgment is affirmed.
[*] Honorable Alvin W. Thompson, United States District Court for the District of
Connecticut, sitting by designation.
[1] DVDs are similar to compact disks (CDs), but differ, among other things, in that
they hold far more data. For detailed information concerning DVDs and CDs, see
"Fast Guide to CD/DVD" at
http://searchWindowsManageability.techtarget.com/sDefinition/0,,sid_gci514667,0
0.html (last updated Aug. 3, 2001).
[2] "2600" has special significance to the hacker community. It is the hertz
frequency ("a unit of frequency of a periodic process equal to one cycle per
second," Webster's Third New International Dictionary 1061 (1993)) of a signal
that some hackers formerly used to explore the entire telephone system from
"operator mode," which was triggered by the transmission of a 2600 hertz tone
across a telephone line, Trial Tr. at 786-87, or to place telephone calls without
incurring long-distance toll charges, United States v. Brady, 820 F. Supp. 1346,
1355 & n.18 (D. Utah 1993). One such user reportedly discovered that the sound of
a toy whistle from a box of Cap'n Crunch cereal matched the telephone company's
2600 hertz tone perfectly. Id. at 1355 n.18.
[3] By the end of 1997, most if not all DVDs that were released were encrypted
with CSS. Trial Tr. at 409; Universal I, 111 F. Supp. 2d at 310. Moreover, DVD
players were projected to be in ten percent of United States homes by the end of
2000. Trial Tr. at 442; Universal I, 111 F. Supp. 2d at 310. In fact, as of 2000,
about thirty-five percent of one studio's worldwide revenues from movie
distribution was attributable to DVD sales and rentals. Trial Tr. at 403; Universal I,
111 F. Supp. 2d at 310 n.69.
ChapterNumber:
542
[4] An operating system works with the computer to perform the application's
instructions. Generally, an executable application can be played only on the
operating system for which it is designed, although interoperability has been
improving. At the time of the trial, DeCSS could be run only on the Microsoft
Windows operating system. Trial Tr. at 245 (Testimony of Robert W. Schumann).
[5] An item of some controversy, both in this litigation and elsewhere, is the extent
to which CSS-encrypted DVDs can be copied even without DeCSS. The record
leaves largely unclear how CSS protects against the copying of a DVD, as
contrasted with the playing of a DVD on an unlicensed player. The Defendants'
experts insisted that there is nothing about the way CSS operates that prevents the
copying of a DVD. [ … ]Some of the Plaintiffs' experts countered simply that
"copying to a hard drive is something that compliant DVD players are not allowed
to do," without explaining why. [ … ]Another expert indicated that while a DVD
movie can be copied to a computer's hard drive in encrypted form, the movie cannot
be played without a DVD actually present in the DVD drive. [ … ] This expert did
not identify the mechanism that prevents someone from copying encrypted DVDs to
a hard drive in the absence of a DVD in the disk drive. However, none of this
detracts from these undisputed findings: some feature of either CSS itself, or
another (unidentified) safeguard implemented by DVD manufacturers pursuant to
their obligations under the CSS licensing scheme, makes it difficult to copy a CSS-
encrypted DVD to a hard drive and then compress that DVD to the point where
transmission over the Internet is practical.[ … ]Conversely, a DVD movie file
without CSS encryption is easily copied, manipulated, and transferred. [ … ] In
other words, it might very well be that copying is not blocked by CSS itself, but by
some other protection implemented by the DVD player manufacturers. Nonetheless,
in decrypting CSS, the DeCSS program (perhaps incidentally) sidesteps whatever it
is that blocks copying of the files. While there may be alternative means of
extracting a non-encrypted, copyable movie from a DVD—for example, by copying
the movie along with its encryption "bit-by-bit," or "ripping" a DVD by siphoning
movie file data after CSS has already been decrypted by a licensed player—DeCSS
is the superior means of acquiring easily copyable movies, see id. at 342, and in
fact, is recommended by a DVD compression web site as the preferred tool for
obtaining a decrypted DVD suitable for compression and transmission over the
Internet[ … ]. We acknowledge the complexity and the rapidly changing nature of
the technology involved in this case, but it is clear that the Defendants have
presented no evidence to refute any of these carefully considered findings by the
District Court.
[6] The District Court determined that even at high speeds, typical of university
networks, transmission times ranged from three minutes to six hours. The Court
noted, however, that "the availability of high speed network connections in many
businesses and institutions, and their growing availability in homes, make Internet
and other network traffic in pirated copies a growing threat." Universal I, 111 F.
Supp. 2d at 315.
[7] Defendant 2600 Enterprises, Inc., is the company Corley incorporated to run the
magazine, maintain the web site, and manage related endeavors like merchandising.
[8] The lawsuit was filed against Corley, Shawn C. Reimerdes, and Roman Kazan.
2600 Enterprises, Inc., was later added as a defendant. At an earlier stage of the
litigation, the action was settled as to Reimerdes and Kazan. [ … ]
543
[9] For convenience, all references to the DMCA are to the United State Code
sections.
[10] In a supplemental Order, the Court corrected a typographical error in its

opinion in Universal I by changing the first sentence of the first full paragraph at
111 F. Supp. 2d 328 to read "Restrictions on the nonspeech elements of expressive
conduct fall into the content-neutral category." Universal City Studios, Inc. v.
Reimerdes, No. 00 Civ. 0277 (LAK) (S.D.N.Y. Aug. 17, 2001).
[11] For example, advertisements for pirated DVDs rose dramatically in number
after the release of DeCSS on the web, and DVD file compression web sites
recommend the use of DeCSS. Universal I, 111 F. Supp. 2d at 342.
[12] In Part IV, infra, we consider the Appellants' claim that the DMCA is
unconstitutional because of its effect on opportunities for fair use of copyrighted
materials.
[13] The legislative history of the enacted bill makes quite clear that Congress
intended to adopt a "balanced" approach to accommodating both piracy and fair use
concerns, eschewing the quick fix of simply exempting from the statute all
circumventions for fair use. [ … ]It sought to achieve this goal principally through
the use of what it called a "fail-safe" provision in the statute, authorizing the
Librarian of Congress to exempt certain users from the anti-circumvention
provision when it becomes evident that in practice, the statute is adversely affecting
certain kinds of fair use.[ … ] Congress also sought to implement a balanced
approach through statutory provisions that leave limited areas of breathing space
for fair use. A good example is subsection 1201(d), which allows a library or
educational institution to circumvent a digital wall in order to determine whether it
wishes legitimately to obtain the material behind the wall. [ … ] It would be strange
for Congress to open small, carefully limited windows for circumvention to permit
fair use in subsection 1201(d) if it then meant to exempt in subsection 1201(c)(1)
any circumvention necessary for fair use.
[14] This is actually what subsection 1201(a)(3)(A) means when read in

conjunction with the anti-circumvention provisions. When read together with the
anti-trafficking provisions, subsection 1201(a)(3)(A) frees an individual to traffic in
encryption technology designed or marketed to circumvent an encryption measure if
the owner of the material protected by the encryption measure authorizes that
circumvention.
[15] Even if the Defendants had been able to offer such evidence, and even if they
could have demonstrated that DeCSS was "primarily designed . . . for the purpose
of" playing DVDs on multiple platforms (and therefore not for the purpose of
"circumventing a technological measure"), a proposition questioned by Judge
Kaplan, see Universal I, 111 F. Supp. 2d at 311 n.79, the Defendants would defeat
liability only under subsection 1201(a)(2)(A). They would still be vulnerable to
liability under subsection 1201(a)(2)(C), because they "marketed" DeCSS for the
copying of DVDs, not just for the playing of DVDs on multiple platforms. See, e.g.,
Trial Tr. at 820.
[16] For example, a program (or part of a program) will give a computer the
direction to "launch" a word-processing program like WordPerfect when the icon
for WordPerfect is clicked; a program like WordPerfect will give the computer
directions to display letters on a screen and manipulate them according to the
computer user's preferences whenever the appropriate keys are struck.
ChapterNumber:
544
[17] We note that instructions are of varied types. See Vartuli, 228 F.3d at 111.
"Orders" from one member of a conspiracy to another member, or from a superior
to a subordinate, might resemble instructions but nonetheless warrant less or even
no constitutional protection because their capacity to inform is meager, and because
it is unlikely that the recipient of the order will engage in the "intercession of . . .
mind or . . . will" characteristic of the sort of communication between two parties
protected by the Constitution, see id. at 111-12 (noting that statements in the form
of orders, instructions, or commands cannot claim "talismanic immunity from
constitutional limitations" but "should be subjected to careful and particularized
analysis to ensure that no speech entitled to First Amendment protection fails to
receive it"); Kent Greenawalt, Speech and Crime, Am. B. Found. Res. J. 645, 743-
44 (1980).
[18] These cases almost always concern instructions on how to commit illegal acts.
Several courts have concluded that such instructions fall outside the First
Amendment. However, these conclusions never rest on the fact that the speech took
the form of instructions, but rather on the fact that the instructions counseled the
listener how to commit illegal acts. See, e.g., Rice v. Paladin Enterprises, Inc., 128
F.3d 233, 247-49 (4th Cir. 1997); United States v. Barnett, 667 F.2d 835, 842 (9th
Cir. 1982). None of these opinions even hints that instructions are a form of speech
categorically outside the First Amendment.
[19] Of course, we do not mean to suggest that the communication of "information"

is a prerequisite of protected "speech." Protected speech may communicate, among
other things, ideas, emotions, or thoughts. We identify "information" only because
this is what computer programs most often communicate, in addition to giving
directions to a computer.
[20] However, in the rare case where a human's mental faculties do not intercede in
executing the instructions, we have withheld protection. See Vartuli, 228 F.3d at
111.
[21] Programmers use snippets of code to convey their ideas for new programs;
economists and other creators of computer models publish the code of their models
in order to demonstrate the models' vigor. Brief of Amici Curiae Dr. Harold
Abelson et al. at 17; Brief of Amici Curiae Steven Bellovin et al. at 12-13; see also
Bernstein v. United States Department of Justice, 176 F.3d 1132, 1141 (9th Cir.)
(concluding that computer source code is speech because it is "the preferred means"
of communication among computer programmers and cryptographers), reh'g in banc
granted and opinion withdrawn, 192 F.3d 1308 (9th Cir. 1999).
[22] Reinforcing the conclusion that software programs qualify as "speech" for First
Amendment purposes—even though they instruct computers—is the accelerated
blurring of the line between "source code" and conventional "speech." There
already exist programs capable of translating English descriptions of a program into
source code. Trial Tr. at 1101-02 (Testimony of Professor Andrew Appel). These
programs are functionally indistinguishable from the compilers that routinely
translate source code into object code. These new programs (still apparently
rudimentary) hold the potential for turning "prose" instructions on how to write a
computer program into the program itself. Even if there were an argument for
exempting the latter from First Amendment protection, the former are clearly
protected for the reasons set forth in the text. As technology becomes more
sophisticated, instructions to other humans will increasingly be executable by
computers as well.
545
[23] Vartuli reasoned that the interaction between "programming commands as

triggers and semiconductors as a conduit," even though communication, is not
"speech" within the meaning of the First Amendment and that the communication
between Recurrence and a customer using it as intended was similarly not "speech."
Vartuli, 228 F.2d at 111.
[24] The reasoning of Junger has recently been criticized. See Orin S. Kerr, Are We
Overprotecting Code? Thoughts on First-Generation Internet Law, 57 Wash. & Lee
L. Rev. 1287 (2000). Prof. Kerr apprehends that if encryption code is First
Amendment speech because it conveys "ideas about cryptography," Junger, 209
F.3d at 484, all code will be protected "because code will always convey
information about itself." Kerr, supra, at 1291. That should not suffice, he argues,
because handing someone an object, for example, a padlock, is a good way of
communicating how that object works, yet a padlock is not speech. Id. at 1291-92.
However, code does not cease to be speech just because some objects that convey
information are not speech. Both code and a padlock can convey information, but
only code, because it uses a notational system comprehensible by humans, is
communication that qualifies as speech. Prof. Kerr might be right that making the
communication of ideas or information the test of whether code is speech provides
First Amendment coverage to many, perhaps most, computer programs, but that is a
consequence of the information-conveying capacity of the programs, not a reason
for denying them First Amendment coverage.
[25] The Supreme Court has used slightly different formulations to express the
narrow tailoring requirement of a content-neutral regulation. In O'Brien, the
formulation was "if the incidental restriction on alleged First Amendment freedoms
is no greater than is essential to the furtherance of that interest." 391 U.S. at 377. In
Ward, the formulation was "'so long as the . . . regulation promotes a substantial
government interest that would be achieved less effectively absent the regulation.'"
491 U.S. at 799 (quoting United States v. Albertini, 472 U.S. 675, 689 (1985)).
Ward added, however, that the regulation may not "burden substantially more
speech than is necessary to further the government's legitimate interests." Id.
(emphasis added). Turner Broadcasting quoted both the "no greater than is
essential" formulation from O'Brien, see Turner Broadcasting, 512 U.S. at 662, and
the "would be achieved less effectively" formulation from Ward, see id. Turner
Broadcasting made clear that the narrow tailoring requirement is less demanding
than the least restrictive means requirement of a content-specific regulation, id., and
appears to have settled on the "substantially more" phrasing from Ward as the
formulation that best expresses the requirement, id. That is the formulation we will
apply.
[26] This argument is elaborated by some of the amici curiae. "In the absence of
human intervention, code does not function, it engages in no conduct. It is as
passive as a cake recipe." Brief of Amici Curiae Dr. Harold Abelson et al. at 26.
[27] More dramatically, the Government calls DeCSS "a digital crowbar." Brief for
Intervenor United States at 19.
[28] Briefs of some of the amici curiae discuss the possibility of adequate
protection against copying of copyrighted materials by adopting the approach of the
Audio Home Recording Act of 1992, 17 U.S.C. § 1002(a), which requires digital
audio tape recorders to include a technology that prevents serial copying, but
permits making a single copy. See, e.g., Brief of Amici Curiae Benkler and Lessig
at 15. However, the Defendants did not present evidence of the current feasibility of
ChapterNumber:
546
a similar solution to prevent serial copying of DVDs over the Internet. Even if the
Government, in defending the DMCA, must sustain a burden of proof in order to
satisfy the standards for content-neutral regulation, the Defendants must adduce
enough evidence to create fact issues concerning the current availability of less
intrusive technological solutions. They did not do so in the District Court.
Moreover, we note that when Congress opted for the solution to serial copying of
digital audio tapes, it imposed a special royalty on manufacturers of digital audio
recording devices to be distributed to appropriate copyright holders. See 17 U.S.C.
§§ 1003-1007. We doubt if the First Amendment required Congress to adopt a
similar technology/royalty scheme for regulating the copying of DVDs, but in any
event the record in this case provides no basis for invalidating the anti-trafficking
provisions of the DMCA or the injunction for lack of such an alternative approach.
[29] We have considered the opinion of a California intermediate appellate court in

DVD Copy Control Ass'n v. Bunner, 93 Cal.App.4th 648, 113 Cal.Rptr.2d 338
(2001) (Cal. Ct. App., 6th Dist. Nov. 1, 2001), declining, on First Amendment
grounds, to issue a preliminary injunction under state trade secrets law prohibiting a
web site operator from posting DeCSS. To the extent that DVD Copy Control
disagrees with our First Amendment analysis, we decline to follow it.
[30] "Hyperlinks" are also called "hypertext links" or "active links."
[31] "Linking" not accomplished by a hyperlink would simply involve the posting
of the Internet address ("URL") of another web page. A "link" of this sort is
sometimes called an "inactive link." With an inactive link, the linked web page
would be only four clicks away, one click to select the URL address for copying,
one click to copy the address, one click to "paste" the address into the text box for
URL addresses, and one click (or striking the "enter" key) to instruct the computer
to call up the linked web site.
[32] We acknowledge that the prohibition on linking restricts more than Corley's
ability to facilitate instant access to DeCSS on linked web sites; it also restricts his
ability to facilitate access to whatever protected speech is available on those sites.
However, those who maintain the linked sites can instantly make their protected
material available for linking by Corley by the simple expedient of deleting DeCSS
from their web sites.
[33] Although we have recognized that the First Amendment provides no

entitlement to use copyrighted materials beyond that accorded by the privilege of
fair use, except in "an extraordinary case," Twin Peaks Productions, Inc. v.
Publications International, Ltd., 996 F.2d 1366, 1378 (2d Cir. 1993), we have not
ruled that the Constitution guarantees any particular formulation or minimum
availability of the fair use defense.
[34] As expressed in their supplemental papers, the position of the Appellants is

that "fair use extends to works in whatever form they are offered to the public,"
Supplemental Brief for Appellants at 20, by which we understand the Appellants to
contend not merely that fair use may be made of DVD movies but that the fair user
must be permitted access to the digital version of the DVD in order to directly copy
excerpts for fair use in a digital format.
[35] In their supplemental papers, the Appellants contend, rather hyperbolically,

that a prohibition on using copying machines to assist in making fair use of texts
could not validly be upheld by the availability of "monks to scribe the relevant
passages."[ … ]
547

11.2.2
37 C.F.R 201.40 (2021)

https://ipxcourses.org/C/2021_DMCA.docx

11.2.3
Scaria, "Does India Need Digital Rights

Management Provisions or Better Digital Business
Management Strategies?" (2012)

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2103350

549
12
Week 12

ChapterNumber:
550

12.1

Damages

12.1.1
17 U.S.C. 501-506

[…]
§ 504. Remedies for infringement: Damages and

profits
(a) In General.— Except as otherwise provided by this title, an infringer of copyright is
liable for either—
(1) the copyright owner’s actual damages and any additional profits of the infringer, as
provided by subsection (b); or
(2) statutory damages, as provided by subsection (c).
(b) Actual Damages and Profits.— The copyright owner is entitled to recover the actual
damages suffered by him or her as a result of the infringement, and any profits of the
infringer that are attributable to the infringement and are not taken into account in computing
the actual damages. In establishing the infringer’s profits, the copyright owner is required to
present proof only of the infringer’s gross revenue, and the infringer is required to prove his
or her deductible expenses and the elements of profit attributable to factors other than the
copyrighted work.
(c) Statutory Damages.—
(1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any
time before final judgment is rendered, to recover, instead of actual damages and profits, an
award of statutory damages for all infringements involved in the action, with respect to any
one work, for which any one infringer is liable individually, or for which any two or more
infringers are liable jointly and severally, in a sum of not less than $750 or more than
$30,000 as the court considers just. For the purposes of this subsection, all the parts of a
compilation or derivative work constitute one work.
(2) In a case where the copyright owner sustains the burden of proving, and the court finds,
that infringement was committed willfully, the court in its discretion may increase the award
of statutory damages to a sum of not more than $150,000. In a case where the infringer
sustains the burden of proving, and the court finds, that such infringer was not aware and had
no reason to believe that his or her acts constituted an infringement of copyright, the court in
its discretion may reduce the award of statutory damages to a sum of not less than $200. The
551
court shall remit statutory damages in any case where an infringer believed and had
reasonable grounds for believing that his or her use of the copyrighted work was a fair use
under section 107, if the infringer was:
(i) an employee or agent of a nonprofit educational institution, library, or archives acting

within the scope of his or her employment who, or such institution, library, or archives itself,
which infringed by reproducing the work in copies or phonorecords; or
(ii) a public broadcasting entity which or a person who, as a regular part of the nonprofit
activities of a public broadcasting entity (as defined in section 118 (f)) infringed by
performing a published nondramatic literary work or by reproducing a transmission program
embodying a performance of such a work.
(3)
(A) In a case of infringement, it shall be a rebuttable presumption that the infringement was
committed willfully for purposes of determining relief if the violator, or a person acting in
concert with the violator, knowingly provided or knowingly caused to be provided materially
false contact information to a domain name registrar, domain name registry, or other domain
name registration authority in registering, maintaining, or renewing a domain name used in
connection with the infringement.
(B) Nothing in this paragraph limits what may be considered willful infringement under this
subsection.
(C) For purposes of this paragraph, the term “domain name” has the meaning given that term
in section 45 of the Act entitled “An Act to provide for the registration and protection of
trademarks used in commerce, to carry out the provisions of certain international
conventions, and for other purposes” approved July 5, 1946 (commonly referred to as the
“Trademark Act of 1946”; 15 U.S.C. 1127).
(d) Additional Damages in Certain Cases.— In any case in which the court finds that a
defendant proprietor of an establishment who claims as a defense that its activities were
exempt under section 110 (5) did not have reasonable grounds to believe that its use of a
copyrighted work was exempt under such section, the plaintiff shall be entitled to, in addition
to any award of damages under this section, an additional award of two times the amount of
the license fee that the proprietor of the establishment concerned should have paid the
plaintiff for such use during the preceding period of up to 3 years.
(Pub. L. 94–553, title I, § 101, Oct. 19, 1976, 90 Stat. 2585; Pub. L. 100–568, § 10(b), Oct.
31, 1988, 102 Stat. 2860; Pub. L. 105–80, § 12(a)(13), Nov. 13, 1997, 111 Stat. 1535; Pub.
L. 105–298, title II, § 204, Oct. 27, 1998, 112 Stat. 2833; Pub. L. 106–160, § 2, Dec. 9, 1999,
113 Stat. 1774; Pub. L. 108–482, title II, § 203, Dec. 23, 2004, 118 Stat. 3916; Pub. L. 111–
295, § 6(f)(2), Dec. 9, 2010, 124 Stat. 3181.)
§ 505. Remedies for infringement: Costs and

attorney’s fees
In any civil action under this title, the court in its discretion may allow the recovery of full
costs by or against any party other than the United States or an officer thereof. Except as
otherwise provided by this title, the court may also award a reasonable attorney’s fee to the
prevailing party as part of the costs.
(Pub. L. 94–553, title I, § 101, Oct. 19, 1976, 90 Stat. 2586.)

ChapterNumber:
552
[…]

12.1.2
Frank Music Corp. v. Metro-Goldwyn-Mayer Inc.


886 F.2d 1545
Nos. 87-6257, 87-6321
1989-09-27
886 F.2d 1545
[…]
FRANK MUSIC CORP.; Robert Wright; George

Forrest; Anne Lederer as Executrix of the Last Will
of Charles Lederer; Luther Davis; Edwin Lester,
Plaintiffs-Appellants-Cross-Appellees,
v.
METRO-GOLDWYN-MAYER INC., et al.,
Defendants-Appellees-Cross-Appellants.
[…]
[…]
[1547] David H. Kornblum, Los Angeles, Cal., for plaintiffs-appellants-cross-appellees.
Charles M. Stern, Wyman, Bautzer, Kuchel & Silbert, Los Angeles, Cal., for defendants-
appellees-cross-appellants.
Appeal from the United States District Court for the Central District of California.
Before FLETCHER, BOOCHEVER and REINHARDT, Circuit Judges.
FLETCHER, Circuit Judge:
In Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505 (9th Cir. 1985) (Frank
Music I), we affirmed the district court's holding that defendants infringed plaintiffs'
copyright in the dramatico-musical play Kismet, but remanded for reconsideration of the
amount of profits attributable to the infringement and for consideration of whether
defendants Donn Arden and Metro-Goldwyn-Mayer, Inc. (MGM, Inc.) should be liable in
addition to MGM Grand Hotel, Inc. (MGM Grand). On remand, the district court awarded
plaintiffs $343,724 against MGM Grand, dismissed the action against MGM, Inc. and Arden,
and awarded plaintiffs $115,000 in attorney's fees. Plaintiffs appeal and defendants cross-
appeal. We affirm in part, reverse in part, and remand.
553
I. FACTS
The facts are fully set out in Frank Music I, 772 F.2d at 509-11. We reiterate only
selectively. Plaintiffs are the copyright owners and authors of Kismet, a dramatico-musical
work. MGM, Inc. under license produced a musical motion picture version of Kismet.
Beginning April 26, 1974, MGM Grand presented a musical revue entitled Hallelujah
Hollywood in the [1548] hotel's Ziegfeld Theatre. Hallelujah Hollywood was largely created
by an employee of MGM Grand, Donn Arden, [1] who also staged, produced and directed the
show. The show comprised ten acts, four billed as "tributes" to MGM motion pictures. Act
IV was entitled "Kismet", and was a tribute to the MGM movie of that name. It was based
almost entirely on music from Kismet, and used characters and settings from that musical.
Act IV "Kismet" was performed approximately 1700 times, until July 16, 1976, when, under
pressure resulting from this litigation, MGM Grand substituted a new Act IV.
Plaintiffs filed suit, alleging copyright infringement, unfair competition, and breach of
contract. In Frank Music I, we affirmed the district court's conclusion that the use of Kismet
in Hallelujah Hollywood was beyond the scope of MGM Grand's ASCAP license and
infringed plaintiffs' copyright. In this appeal, the parties focus on the adequacy of damages
and attorney's fees.
II. DISCUSSION
A. Apportionment of Profits
1. Direct Profits
In Frank Music I, 772 F.2d at 514, we upheld the district court's conclusion that the plaintiffs
failed to prove actual damages arising from the infringement, but vacated the district court's
award of $22,000 in apportioned profits as "grossly inadequate," id. at 518, and remanded to
the district court for reconsideration.
On remand, the district court calculated MGM Grand's net profit from Hallelujah Hollywood
at $6,131,606, by deducting from its gross revenues the direct costs MGM Grand proved it
had incurred. Neither party challenges this calculation.
In apportioning the profits between Act IV and the other acts in the show, the district court
made the following finding:
Act IV of "Hallelujah Hollywood" was one of ten acts, approximately a ten minute
segment of a 100 minute revue. On this basis, the Court concludes that ten percent
of the profits of "Hallelujah Hollywood" are attributable to Act IV.
[…]
Plaintiffs assert that this finding is in error in several respects. First, they point out that on
Saturdays Hallelujah Hollywood contained only eight acts, not ten, and that on Saturdays the
show ran only 75 minutes, not 100. Frank Music I, 772 F.2d at 510. Second, Act IV was
approximately eleven and a half minutes long, not ten. Id. Because the show was performed
three times on Saturdays, and twice a night on the other evenings of the week, id., the district
ChapterNumber:
554
court substantially underestimated the running time of Act IV in relation to the rest of the
show. [2]
If the district court relied exclusively on a quantitative comparison and failed to consider the
relative quality or drawing power of the show's various component parts, it erred. See
ABKCO Music, Inc. v. Harrisongs Music, Ltd., 508 F.Supp. 798, 800 (S.D.N.Y. 1981),
modified on other grounds, 722 F.2d 988 (2d Cir. 1983); Lottie Joplin Thomas Trust v.
Crown Publishers, 456 F.Supp. 531, 538 (S.D.N.Y. 1977), aff'd, 592 F.2d 651 (2d Cir. 1978).
However, the district court's apportionment based on comparative durations would be
appropriate if the district court implicitly concluded that all the acts of the show were of
roughly equal value. Cf. Frank Music I, 772 F.2d at 518 ("Each element contributed
significantly to the show's success, but no one element was the sole or overriding reason for
that success.") While a more precise statement of the district court's reasons [1549] would
have been desirable, we find support in the record for the conclusion that all the acts in the
show were of substantially equal value.
The district court went on to apportion the parties' relative contributions to Act IV itself:
The infringing musical material was only one of several elements contributing to
the segment. A portion of the profits attributable to Act IV must be allocated to
other elements, including the creative talent of the producer and director, the talents
of performers, composers, choreographers, costume designers and others who
participated in creating Act IV, and the attraction of the unique Ziegfeld Theatre
with its elaborate stage effects. . . . While no precise mathematical formula can be
applied, the Court concludes that . . . a fair approximation of the value of the
infringing work to Act IV is twenty-five percent.
[…]
The district court was correct in probing into the parties' relative contributions to Act IV.
Where a defendant alters infringing material to suit its own unique purposes, those
alterations and the creativity behind them should be taken into account in apportioning the
profits of the infringing work. Cf. Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45,
49-51 (2d Cir. 1939), aff'd, 309 U.S. 390, 60 S.Ct. 681, 84 L.Ed. 825 (1940); see also
Comment: An Improved Framework for Music Plagiarism Litigation, 76 Calif.L.Rev. 421,
454-55 (1988). However, the district court appears to have ignored its finding in its previous
decision that defendants used not only the plaintiffs' music, but also their lyrics, characters,
settings, and costume designs, recreating to a substantial extent the look and sound of the
licensed movie version of Kismet. Memorandum of Decision and Order (Decision I) at 10-
11.
While it was not inappropriate to consider the creativity of producers, performers and others
involved in staging and adapting excerpts from Kismet for use in Hallelujah Hollywood, the
district court erred in weighing these contributions so heavily. In performing the
apportionment, the benefit of the doubt must always be given to the plaintiff, not the
defendant. Sheldon, 106 F.2d at 51. And while the apportionment may take into account the
role of uncopyrightable elements of a work in generating that work's profits, see Sheldon,
106 F.2d at 50-51 (considering role of movie's actors, scenery, producers and directors); cf.
McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 320 (9th Cir. 1987) (substantial similarity
analysis can include examination of uncopyrightable elements), the apportionment should not
place too high a value on the defendants' staging of the work, at the expense of undervaluing
the plaintiffs' more substantive creative contributions. See Comment: An Improved
Framework, supra, at 454-56. Production contributions involving expensive costumes and
lavish sets will largely be taken into account when deducting the defendants' costs. Indeed,
555
defendants concede that had they produced Kismet in toto, it would have been proper for the
district court to award 100% of their profits, despite their own creative efforts in staging such
a production.
The district court found that defendants' staging of the Kismet excerpts was highly
significant to Act IV's success. While we believe that a defendant's efforts in staging an
infringing production will generally not support more than a de minimis deduction from the
plaintiff's share of the profits, we cannot say the district court's conclusion that the
defendants' contributions were substantial in this case is clearly erroneous. We recognize that
there will be shows in which the attraction of the costumes, scenery or performers outweighs
the attraction of the music or dialogue. On the other hand, a producer's ability to stage a
lavish presentation, or a performer's ability to fill a hall from the drawing power of her name
alone, is not a license to use freely the copyrighted works of others.
We conclude that apportioning 75% of Act IV to the defendants grossly undervalues the
importance of the plaintiffs' contributions. Act IV was essentially Kismet, [1550] with
contributions by the defendants; it was not essentially a new work incidentally plagiarizing
elements of Kismet. A fairer apportionment, giving due regard to the district court's findings,
attributes 75% of Act IV to elements taken from the plaintiffs and 25% to the defendants'
contributions. [3]
2. Indirect Profits
In Frank Music I, we held that the plaintiffs were entitled to recover, in addition to direct
profits, a proportion of ascertainable indirect profits from defendants' hotel and gaming
operations attributable to the promotional value of Hallelujah Hollywood. The district court
considered the relative contributions of Hallelujah Hollywood and other factors contributing
to the hotel's profits, including the hotel's guest accommodations, restaurants, cocktail
lounges, star entertainment in the "Celebrity" room, the movie theater, Jai Alai, the casino
itself, convention and banquet facilities, tennis courts, swimming pools, gym and sauna, and
also the role of advertising and general promotional activities in bringing customers to the
hotel. The district court concluded that two percent of MGM Grand's indirect profit was
attributable to Hallelujah Hollywood. In light of the general promotion and the wide variety
of attractions available at MGM Grand, this conclusion is not clearly erroneous. [4]
B. Prejudgment Interest
The district court, without comment, declined to award prejudgment interest. The availability
of prejudgment interest under the Copyright Act of 1909 is an issue of first impression in this
circuit.
The 1909 Act does not mention prejudgment interest. Nevertheless, courts may allow
prejudgment interest even though the governing statute is silent. Rodgers v. United States,
332 U.S. 371, 373, 68 S.Ct. 5, 7, 92 L.Ed. 3 (1947). "[A] persuasive consideration . . . is the
relative equities between the beneficiaries of the obligation and those upon whom it has been
imposed." Id. The goal of compensating the injured party fairly for the loss caused by the
defendant's breach of the statutory obligation should be kept in mind. Id.; see also Loeffler v.
Frank, 486 U.S. 549, 108 S.Ct. 1965, 1970-71, 100 L.Ed.2d 549 (1988). Prejudgment interest
compensates the injured party for the loss of the use of money he would otherwise have had.
[…]
ChapterNumber:
556
Defendants argue that Congress did not intend for prejudgment interest to be available under
the 1909 Act. They ask us to infer this from the inclusion of prejudgment interest in the
Patent Act, 35 U.S.C. Sec. 284 (1982), [5] and the omission of reference to prejudgment
interest in either the 1909 Act or the Copyright Act of 1976. Because the Patent and
Copyright Acts are similar statutes with similar purposes, defendants argue that differences
between the two Acts with respect to prejudgment interest are intentional. [ … ]
Examination of the history of prejudgment interest in the patent context suggests this
argument is flawed. Before Congress enacted 35 U.S.C. Sec. 284, prejudgment interest was
generally available in patent infringement cases from the date damages were liquidated, and
in exceptional cases from the date of infringement. [ … ]Such a remedy was available despite
the fact that the patent laws then in effect made no mention of prejudgment interest. [6]
Indeed, the wording of the relevant patent statute was similar to that of Sec. 101(b) of the
1909 Copyright Act. [7]
Thus, interpreting the 1909 Act in light of patent law doctrine existing at the time of its
enactment and during much of its effective period, we cannot conclude that Congress
intended from its silence that prejudgment interest would not be available under the 1909
Act. [8] Just as courts awarded prejudgment interest in order to provide adequate compensation
to patent holders before the enactment of 35 U.S.C. Sec. 284, this same remedy should be
available to copyright owners for the same purpose. [ … ]
We therefore hold that prejudgment interest is an available remedy under the 1909 Act.
Whether the circumstances of this case warrant the remedy is a separate question. The
common-law rule during much of the effective period of the 1909 Act awarded prejudgment
interest only on [1552] damages that were liquidated or readily ascertainable by
mathematical computations and did not rely on opinion or discretion. [ … ]But even where
damages were not liquidated or readily ascertainable, courts had the power to award
prejudgment interest on unliquidated damages when necessary to compensate the plaintiff
fairly. [ … ]
Because the 1909 Act allows plaintiffs to recover only the greater of the defendant's profits
or the plaintiff's actual damages[ … ], an award of profits or damages under the 1909 Act
will not necessarily be adequate to compensate a prevailing copyright owner. [9] Accordingly,
we conclude prejudgment interest ordinarily should be awarded.
Awarding prejudgment interest on the apportioned share of defendant's profits is consistent

with the purposes underlying the profits remedy. Profits are awarded to the plaintiff not only
to compensate for the plaintiff's injury, but also and primarily to prevent the defendant from
being unjustly enriched by its infringing use of the plaintiff's property. [ … ]For the
restitutionary purpose of this remedy to be served fully, the defendant generally should be
required to turn over to the plaintiff not only the profits made from the use of his property,
but also the interest on these profits, which can well exceed the profits themselves. [ … ]
Indeed, one way to view this interest is as another form of indirect profit accruing from the
infringement, which should be turned over to the copyright owner along with other forms of
indirect profit. It would be anomalous to hold that a plaintiff can recover, for example,
profits derived from the promotional use of its copyrighted material, but not for the value of
the use of the revenue generated by the infringement. [10]
We accordingly remand to the district court to enter an award of prejudgment interest. [11] The
award should be based on the fifty-two week Treasury bill rate, unless the district court
concludes that the equities demand a different rate. [ … ]
C. Liability of MGM, Inc.

557
In Frank Music I, we remanded to the district court to determine whether MGM, Inc., MGM
Grand's parent corporation, should be liable for the infringement. We held that "[a] parent
corporation cannot be held liable for the infringing actions of its subsidiary unless there is a
substantial and continuing connection between the two with respect to the infringing acts."
[…]
The district court found that plaintiffs failed to establish such a substantial and continuing
connection. According to the district court, the only evidence of a connection between MGM,
Inc. and MGM Grand was MGM Grand's use of MGM Inc.'s studio facilities for planning the
production prior to the opening of MGM Grand. The district court also noted, as a fact it
believed favorable to MGM, Inc., that MGM Grand paid rent for the facilities and bore all
the costs associated with the production of Hallelujah Hollywood.
The district court apparently did not consider several other important pieces of evidence.
During the time of the infringing performances, MGM Grand was wholly owned by MGM,
Inc. [R.T. 456] MGM, Inc.'s legal counsel responded to inquiries about the use of Kismet in
Hallelujah Hollywood. [R.T. 488] Donn Arden's office was at MGM, Inc. [R.T. 209], and he
was selected for the job with MGM Grand by a representative of MGM, Inc. [R.T. 217]. In
addition to drawing patrons to the hotel and casino, Hallelujah Hollywood had another
purpose: to promote MGM, Inc. and its "Leo the Lion" symbol. [R.T. 228, 242] Only
material that had been used in MGM, Inc. films was used in the tribute segments of the show.
[R.T. 359-60] Arden actively consulted with personnel from MGM, Inc. in preparing the
show. [R.T. 232] MGM, Inc. made its movie version of Kismet available to Arden and
Marvin Laird, who viewed it in a production room at MGM, Inc. [R.T. 243, 380] Arden and
Laird got clearances for the material they wanted to use in Hallelujah Hollywood, including a
clearance to use Kismet, from MGM, Inc. [R.T. 269, 271, 394] Laird, who worked on the
music to Act IV, used material and was assisted by employees from MGM Inc.'s music
library. [R.T. 301, 386]
The district court clearly erred in not finding that MGM, Inc. and MGM Grand had a
substantial and continuing relationship with respect to the infringing activities.
[ … ]Therefore, we conclude that MGM, Inc. is jointly and severally liable for the judgment
against MGM Grand.
Plaintiffs also argue that MGM, Inc. should be liable additionally for an award of its own
profits or, in lieu of such an award, for statutory damages. We disagree. Our conclusion that
MGM, Inc. had a substantial and continuing relationship with MGM Grand with respect to
the infringement permits us to treat the two corporate entities as the same for purposes of
imposing an award of profits. Nevertheless, the downstream corporate benefits to MGM, Inc.
from the infringement are simply too attenuated and too speculative to support a further
award from an apportionment of its corporate profits. The question of whether specific
profits were made from an infringement is similar to that of proximate cause in the tort
context: just as there comes a point beyond which effects cannot legally be attributed to an
initial tortious action, so too there comes a point beyond which an infringer's profits, from its
enterprises as a whole, cannot legally be attributed to a particular act of infringement. The
profits of a hotel may well, as here, have a sufficient nexus with an infringing performance in
the hotel's showroom to justify attributing some percentage [1554] of the hotel's profits to the
infringement. [13] The profits of MGM, Inc. from its own interests and activities other than the
MGM Grand lack such a nexus. Although MGM, Inc. may have reaped some marginal
benefit from the infringement, for example from a slight increase in movie revenue as a
result of the advertising value of the MGM Grand, or from a rise in stock value attributable
in part to the success of the hotel, the percentage of such profits attributable to the infringing
material in Act IV of Hallelujah Hollywood is too speculative and the relationship between
such profits and the infringement too attenuated to justify the award of additional damages
based on any profits received by MGM, Inc.
ChapterNumber:
558
[…]
F. Attorney's Fees
Both parties appeal from the district court's award of attorney's fees to the plaintiffs. The
plaintiffs argue that the district court awarded them too small a fee. The defendants argue
that the plaintiffs are not entitled to a fee at all, and even if they are, the fee awarded was too
high.
The decision to award fees, and the amount of fees awarded, are both reviewed for abuse of
discretion. [20] Moore v. Jas. H. Matthews & Co., 682 F.2d 830, 838 (9th Cir. 1982)[ … ].
Plaintiffs in copyright actions may be awarded attorney's fees simply by virtue of prevailing
in the action: no other precondition need be met, although the fee awarded must be
reasonable. [ … ]The district court correctly noted that such awards to prevailing plaintiffs
serve the purpose of encouraging private enforcement and deterring infringements. The
district court did not abuse its discretion in determining that the plaintiffs are entitled to an
award of attorney's fees.
We conclude, however, that the district court erred in failing to explain the basis for the
amount awarded. Plaintiffs' counsel did not provide the district court with contemporaneous
time records. His "reconstructed records" claim 1707.5 hours spent on this case from 1975
through mid-May 1980. This reconstruction is memorialized in an itemized list. In addition,
he estimated that he expended another 3500 hours on the case from mid-May 1980 to the
summer of 1987, listing the services performed during that period but not allocating his time
among the various services. Counsel sought compensation at the rate of [1557] $250 per
hour. Counsel's only explanation for his failure to keep track of seven years of his work was
that he "got out of the habit of keeping time on the case."
The district court found that counsel expended much unwarranted time—as much as 300
hours of work where only a single hour was necessary. The court found the facts simple, but
noted that complicated legal issues relating to damages were presented. As additional reasons
for reducing the amount of the fees award, the court remarked that plaintiffs prevailed on
only one of three claims, and that "both sides engendered numerous delays and petty
discovery disputes, resulting in the inordinate length of time necessary to resolve this case."
The court, "[i]n view of all these factors," concluded that a reasonable attorney's fee was
$115,000. The district court made no specific findings either as to the number of hours
reasonably spent or what was a reasonable hourly rate.
The trial court correctly refused to accept uncritically plaintiffs' counsel's representations
concerning the time expended. [ … ]Plaintiffs bear the burden of showing the time spent and
that it was reasonably necessary to the successful prosecution of their copyright claims. The
lack of contemporaneous records does not justify an automatic reduction in the hours
claimed, but such hours should be credited only if reasonable under the circumstances and
supported by other evidence such as testimony or secondary documentation. [ … ]Time spent
by plaintiffs' counsel responding to motions or actions by the defendants should not be
excluded from the fee award. "[A]lthough [defendants] had the right to play hardball in
contesting [plaintiffs'] claims, it is also appropriate that [defendants] bear the cost of their
obstructionist strategy." Burgess v. Premier Corp., 727 F.2d 826, 841 (9th Cir. 1984). The
district court blamed both sides for delays and petty discovery disputes, without
differentiating those delays and disputes properly the fault of the plaintiffs from those
properly the fault of the defendants. [ … ]
In setting a reasonable attorney's fee, the district court should make specific findings of the
rate and hours it has determined to be reasonable. Sealy, 743 F.2d at 1385. In Moore, the
559
district court reduced counsels' fee request because, in the district court's opinion, they "were
. . . inclined to produce a large volume of less than useful material." [ … ] We reversed and
remanded that award, holding that the district court abused its discretion by reducing
counsels' claimed hours by half and allowing less than half their normal billing rate solely on
the ground that some of their work was less than useful. Id. at 839. Plaintiffs' counsel's
inadequate showing has invited substantial discounting of his fee. Still, he is entitled to a
reasonable amount. Before determining the appropriate fee, the district court should make a
more detailed analysis of the time records presented and a finding as to the reasonable hourly
rate. [ … ]We accordingly remand to the district court to reconsider its award and to
substantiate whatever fee it awards. In its discretion, it can require the parties to supplement
the record.
III. CONCLUSION
We vacate the damages award. We conclude that the proper apportionment entitles plaintiffs
to 9% of the direct profits from Hallelujah Hollywood. We affirm the district court's finding
as to the percentage of indirect profits attributable to Hallelujah Hollywood. We correct the
award however for a mathematical error. Accordingly, plaintiffs are entitled to $551,844.54
as their share of direct profits and $699,963.10 as their share of indirect profits. We conclude
that prejudgment interest should have been awarded, and remand for a calculation of the
appropriate amount. We reverse the district court's finding that MGM, Inc. lacked a
substantial and continuing [1558] connection with MGM Grand with respect to the
infringement, and hold MGM, Inc. jointly and severally liable for the award of profits and
prejudgment interest against MGM Grand. We affirm the district court's finding that Donn
Arden is not jointly liable for the infringement, and decline to hold him severally liable for a
separate award of profits or statutory damages. We affirm the district court's dismissal of
plaintiffs' pendent claims. We vacate the award of attorney's fees so that the district court
may make the necesary findings and recompute the amount to be awarded. We remand to the
district court for further proceedings consistent with this opinion.
AFFIRMED in part, REVERSED in part, and REMANDED with directions.
[1] The basis for finding Donn Arden to be an employee of MGM Grand is discussed infra.
[2] There were twelve shows weekly which ran for 100 minutes, plus three on Saturdays
which ran 75, totalling 1425 minutes per week. Act IV remained constant throughout the
week, for a total of approximately 173 minutes. Accordingly, Act IV comprised 12% of the
total weekly running time of Hallelujah Hollywood. Because the district court's findings
differ from those previously found and affirmed in Frank Music I, we substitute 12% as the
appropriate figure on which we base our subsequent calculations.
[3] Based on this allocation, plaintiffs are entitled to $551,844.54 as direct profits from the
infringement.
[4] We do, however, need to correct an error in calculation or typography noted by the
plaintiffs. In subtracting MGM Grand's direct profits of $6,131,606 from its total net profit
of approximately $395,000,000, the district court arrived at the figure of $380,868,394. The
correct figure is $388,868,394. Plaintiffs are entitled to 9% (75% of 12%) of 2% of this
figure, or $699,963.10.
[5] 35 U.S.C. Sec. 284 provides:
Upon finding for the claimant the court shall award the claimant damages adequate
to compensate for the infringement, but in no event less than a reasonable royalty
ChapterNumber:
560
for the use made of the invention by the infringer, together with interest and costs
as fixed by the court.
This section has been interpreted to require that prejudgment interest "ordinarily be awarded
where necessary to afford the plaintiff full compensation for the infringement." General
Motors, 461 U.S. at 654, 103 S.Ct. at 2062.
[6] Rev.Stat. Sec. 4921, as amended, 42 Stat. 392, 35 U.S.C. Sec. 70, provided in pertinent
part:
[T]he complainant shall be entitled to recover, in addition to the profits to be

accounted for by the defendant, the damages the complainant has sustained thereby.
40 Stat. 704-05, 28 U.S.C. Sec. 1498 (1982), provides for a remedy in cases of patent or
copyright infringement by the United States. Section 1498 allows the prevailing plaintiff
"recovery of his reasonable and entire compensation," which the Supreme Court construed in
Waite v. United States, 282 U.S. 508, 509, 51 S.Ct. 227, 75 L.Ed. 494 (1931), to include
prejudgment interest on the profits the plaintiff would have made but for the infringement.
[7] 17 U.S.C. Sec. 101(b) (1970) provides, in pertinent part:
[The copyright proprietor shall be entitled to recover] such damages as the

copyright proprietor may have suffered due to the infringement, as well as all the
profits which the infringer shall have made from such infringement. . . .
[8] Nor do we suggest that Congress's continuing silence on this issue in the 1976 Act
necessarily should be interpreted as an express disavowal of prejudgment interest.
"Ordinarily, 'Congress' silence is just that—silence.'" Community for Creative Non-Violence
v. Reid, — U.S. —, 109 S.Ct. 2166, 2177, 104 L.Ed.2d 811 (1989), quoting Alaska Airlines,
Inc. v. Brock, 480 U.S. 678, 686, 107 S.Ct. 1476, 1481, 94 L.Ed.2d 661 (1987).
Only one circuit has considered the availability of prejudgment interest in a copyright
infringement action, and that case construed the 1976 Act, not the 1909 Act. In Robert R.
Jones Assocs. v. Nino Homes, 858 F.2d 274, 282 (6th Cir. 1988), the Sixth Circuit vacated
the district court's decision to award prejudgment interest under the 1976 Act. Finding that
the district court's purpose in granting prejudgment interest was "to provide an effective
sanction against copyright infringement," id., the court held that such a remedy was
unnecessary to deter infringements in light of the availability under the 1976 Act of an award
of profits and damages, as well as costs and attorneys' fees. Id.; see 17 U.S.C. Secs. 504(b),
505 (1982).
The Sixth Circuit's decision is of limited utility in determining whether prejudgment interest
should be allowed under the 1909 Act. Deterrence of infringement is not the only purpose of
the copyright law: Congress also intended the damages provisions of the 1909 Act to provide
adequate compensation to the copyright holder. F.W. Woolworth Co. v. Contemporary Arts,
Inc., 344 U.S. 228, 232-33, 73 S.Ct. 222, 225, 97 L.Ed. 276 (1952).
The Second Circuit has affirmed an award under the 1909 Act which included prejudgment
interest without discussing the issue. Lottie Joplin Thomas Trust v. Crown Publishers, 592
F.2d 651, 656 (2d Cir. 1978). It does not appear that the propriety of that award was argued
to the appellate court.
[9] Prior to 1946, the patent law, like the 1976 Copyright Act, allowed recovery of both
profits and damages. Rev.Stat. Sec. 4921, as amended, 42 Stat. 392, 35 U.S.C. Sec. 70; Aro
Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 505, 84 S.Ct. 1526, 1542, 12
L.Ed.2d 457 (1964). In 1946 Congress eliminated recovery of the patent infringer's profits,
561
while at the same time making it easier for a patent holder to recover prejudgment interest, in
order to ensure the patent holder full compensation. See H.R.Rep. No. 1587, 79th Cong., 2d
Sess., 1-2 (1946); S.Rep. No. 1503, 79th Cong., 2d Sess., 2 (1946), U.S.Code Cong.Serv.
1946, p. 1386; 92 Cong.Rec. 9188 (1946); see also General Motors, 461 U.S. at 654-55, 103
S.Ct. at 2061-62. Although congressional intent in enacting the 1946 amendment to the
patent law cannot shed light on congressional intent in enacting the 1909 Copyright Act, the
provision of generally available prejudgment interest as a quid pro quo for the unavailability
of profits in the patent context suggests the suitability of making prejudgment interest
generally available under the 1909 Act where the copyright holder is limited to recovering
only profits or damages, but not both. We do not, however, mean to suggest that this analogy
should be dispositive in determining whether and when prejudgment interest should be
awarded under the 1976 Copyright Act, issues on which we express no opinion.
[10] Prejudgment interest will, of course, be available on both the direct and indirect profits
earned by MGM Grand, since both forms of profit are equally attributable to the
infringement. Frank Music I, 772 F.2d at 517.
[11] Plaintiffs requested prejudgment interest only from the date of the last infringing
performance. This is an acceptable date from which to start the running of interest. We need
not decide in this case whether an award of prejudgment interest from some earlier point in
time, such as the first infringement or date of notice, would be appropriate.
[12] This is the same rate on which postjudgment interest is based. See 28 U.S.C. Sec. 1961
(1982).
[13] Thus, the result would be the same in this case even if the showroom where Hallelujah
Hollywood was performed were a distinct corporate entity from the hotel as a whole,
provided there was the requisite relationship between the two with respect to the
infringement. See generally Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307
(2d Cir. 1963) ("When the right and ability to supervise coalesce with an obvious and direct
financial interest in the exploitation of copyrighted materials—even in the absence of
knowledge [of the infringement]—the purposes of copyright law may be best effectuated by
the imposition of liability upon the beneficiary of that exploitation." [Citations omitted].
Similarly, had MGM, Inc. received a more definite, ascertainable financial benefit from the
infringement, beyond the profits received by its hotel subsidiary, an award reaching those
profits would be entirely proper. Joint liability for profits among interrelated corporate
defendants serves the purpose of giving a successful copyright plaintiff its due reward
without subjecting that award to the vagaries of corporate structures which, in the context of
the particular infringement, should in fairness be ignored.
[14] If statutory damages are awarded, the amount must be in excess of the provable profits
or actual damages. Krofft, 562 F.2d at 1178. This rule is a logical corollary of this circuit's
rule that under the 1909 Act a plaintiff is limited to recovering only the greater of the
infringer's profits or actual damages, but not both.
[15] Our rationale would not preclude an award of statutory damages against a defendant
whose profits are not ascertainable and who is not jointly liable for an award of actual
damages, statutory damages awarded in lieu of actual damages, or a co-defendant's profits.
Because such a defendant has presumably received a benefit from the infringement distinct
from that of its co-defendants, an award of statutory damages in lieu of profits would not
necessarily give plaintiffs a windfall. At the same time, the absence of joint liability means
that the severally liable defendant's conduct would not generally be deterred absent an award
of damages.
[16] Because part of Arden's task was to create tributes to MGM movies, he acted well
within the expectations of his employer in creating Act IV with heavy reliance on material
ChapterNumber:
562
from Kismet. His situation is thus different from that of a hypothetical employee who eases
the demands of his job by plagiarizing the work of others, and therefore could be deemed to
have received a benefit from the infringement even if his only financial benefit was in the
form of salary.
[17] An award in the amount of profits actually earned by the employee would be appropriate
in any event. Such profits, received through the use of the plaintiff's copyrighted material,
should properly be turned over to the copyright owner.
[18] Although the district court had indicated at the outset of trial that it would not exercise
pendent jurisdiction over these claims, it subsequently reversed course and permitted
plaintiffs to make an evidentiary showing in respect to their pendent claims during the period
of post-trial briefing. Plaintiffs did not make a proffer of additional evidence at that time.
[19] Defendants argue that the law of the case should preclude us from reexamining this
question. Although issues previously decided by the same court in the same case will not
ordinarily be subject to reexamination, considerations of fundamental fairness may in an
appropriate case dictate an exception to this rule. Moore v. Jas. H. Matthews & Co., 682 F.2d
830, 833-34 (9th Cir. 1982); White v. Murtha, 377 F.2d 428, 431-32 (5th Cir. 1967).
[20] 17 U.S.C. Sec. 116 (1909 Act) provides: "the court may award to the prevailing party a
reasonable attorney's fee as part of the costs." 17 U.S.C. Sec. 505 (1976 Act) provides for
attorney's fees in virtually identical language.

12.1.3
Fantasy, Inc. v. Fogerty

94 F.3d 553
[…]
FANTASY, INC., Plaintiff-Appellant, Cross-

Appellee,
v.
John C. FOGERTY, Defendant-Appellee, Cross-
Appellant.
[…]
[…]
Decided Aug. 26, 1996.
[…]
Before: WOOD, Jr., [*] CANBY, and RYMER, Circuit Judges.
RYMER, Circuit Judge:
This appeal requires us to consider the scope of a district court's discretion to award a
reasonable attorney's fee to a prevailing defendant in a copyright infringement action, and in
563
particular, to decide whether a court must find some "culpability" on the part of the plaintiff
in pursuing the suit before it can award a fee to a prevailing defendant whose victory on the
merits furthers the purposes of the Copyright Act.
John Fogerty, former lead singer and songwriter for "Creedence Clearwater Revival,"
recognized as one of the greatest American rock and roll bands, successfully defended a
copyright infringement action in which Fantasy, Inc., alleged that Fogerty had copied the
music from one of his earlier songs which Fantasy now owned, changed the lyrics, and
released it as a new song. After concluding that Fogerty's victory on the merits vindicated his
right (and the right of others) to continue composing music in the distinctive "Swamp Rock"
style and genre and therefore furthered the purposes of the Copyright Act, the district court
awarded Fogerty $1,347,519.15 in attorney's fees. Fantasy appeals the award mainly on the
ground that the court had no discretion to award Fogerty any attorney's fees inasmuch as its
conduct in bringing and maintaining the lawsuit was "faultless."
We hold that, after Fogerty v. Fantasy, Inc., 510 U.S. 517, 114 S.Ct. 1023, 127 L.Ed.2d 455
(1994), an award of attorney's fees to a prevailing defendant that furthers the underlying
purposes of the Copyright Act is reposed in the sound discretion of the district courts, and
that such discretion is not cabined by a requirement of culpability on the part of the losing
party. As we agree with the district court that Fogerty's victory on the merits furthered the
purposes of the Copyright Act, and as we cannot say that the district court abused its
discretion by awarding fees under the circumstances of this case, we affirm the award. We
also uphold the district court's exercise of discretion not to award interest on Fogerty's fee
award.
I
This action began July 26, 1985, when Fantasy sued Fogerty for copyright infringement,
[556] alleging that Fogerty's song "The Old Man Down the Road" infringed the copyright on
another of his songs, "Run Through the Jungle," which Fantasy owned. About three years
later, on November 7, 1988, the jury disagreed, returning a verdict in favor of Fogerty.
Fogerty moved for a reasonable attorney's fee pursuant to 17 U.S.C. § 505. [1] The district
court denied the request on the ground that Fantasy's lawsuit was neither frivolous nor
prosecuted in bad faith and our then-existing precedent precluded an award of fees in the
absence of one or the other. [ … ]We affirmed for the same reason, [ … ]but the Supreme
Court reversed and remanded in Fogerty v. Fantasy, Inc., 510 U.S. 517, 114 S.Ct. 1023, 127
L.Ed.2d 455 (1994) [Fogerty II]. We then remanded to the district court for further
proceedings consistent with Fogerty II. Fantasy, Inc. v. Fogerty, 21 F.3d 354 (9th Cir. 1994)
[Fogerty III].
On remand, the district court granted Fogerty's motion and, after reviewing extensive billing
records, awarded $1,347,519.15. Its decision was based on several factors. First, Fogerty's
vindication of his copyright in "The Old Man Down the Road" secured the public's access to
an original work of authorship and paved the way for future original compositions — by
Fogerty and others — in the same distinctive "Swamp Rock" style and genre. Thus, the
district court reasoned, Fogerty's defense was the type of defense that furthers the purposes
underlying the Copyright Act and therefore should be encouraged through a fee award.
Further, the district court found that a fee award was appropriate to help restore to Fogerty
some of the lost value of the copyright he was forced to defend. In addition, Fogerty was a
defendant author and prevailed on the merits rather than on a technical defense, such as the
statute of limitations, laches, or the copyright registration requirements. Finally, the benefit
conferred by Fogerty's successful defense was not slight or insubstantial relative to the costs
ChapterNumber:
564
of litigation, nor would the fee award have too great a chilling effect or impose an
inequitable burden on Fantasy, which was not an impecunious plaintiff.
Fogerty also sought interest to account for the lost use of the money paid to his lawyers over
the years. While the district court awarded Fogerty almost all of what he asked for in fees, it
declined to award interest. Fantasy timely appeals the fee award; Fogerty timely cross-
appeals the refusal to award interest.
II
We review the district court's decision to award attorney's fees under the Copyright Act for
an abuse of discretion, Maljack Productions v. GoodTimes Home Video Corp., 81 F.3d 881,
889 (9th Cir. 1996), but "any elements of legal analysis and statutory interpretation which
figure in the district court's decision are reviewable de novo," Hall v. Bolger, 768 F.2d 1148,
1150 (9th Cir. 1985). "A district court's fee award does not constitute an abuse of discretion
unless it is based on an inaccurate view of the law or a clearly erroneous finding of fact."
Schwarz v. Secretary of Health & Human Serv., 73 F.3d 895, 900 (9th Cir. 1995) (internal
quotations and citation omitted).
III
Fantasy contends that the district court had no discretion to award fees to Fogerty because
Fantasy conducted a "good faith" and "faultless" lawsuit upon reasonable factual and legal
grounds, or to put it somewhat differently, because Fantasy was "blameless." According to
Fantasy, once the district court could find no fault in the way Fantasy conducted this case,
that should have been the end of the matter. To award fees nevertheless, Fantasy contends, is
incompatible with Fogerty II 's rule of evenhandedness, [557] as evenhandedness cannot be
achieved by rewarding each side for qualities that adhere only to that side. To do so, as
Fantasy contends the district court did here, is tantamount to the British Rule's automatic fee
award to the victor — which Fogerty II rejected. Rather, it submits, the court's discretion
may only be informed by factors having to do with culpability that are capable of being
applied equally to prevailing plaintiffs and prevailing defendants.
Fogerty, on the other hand, contends that Fogerty II focuses a district court's discretion on
whether the prevailing party has furthered the purposes of the Copyright Act in litigating the
action to a successful conclusion; under that standard, the district court was well within its
discretion in finding that his successful defense of this action served important copyright
policies. He also argues that the evenhanded approach does not mean that only "neutral"
factors may be considered in the exercise of the court's discretion since, contrary to Fantasy's
view, the Court itself recognized that somewhat different policies of the Copyright Act may
be furthered when either plaintiffs or defendants prevail. Fogerty points out that the Court
specifically observed that his successful defense of this action "increased public exposure to
a musical work that could, as a result, lead to further creative pieces," Fogerty II, 510 U.S. at
527, 114 S.Ct. at 1030, and maintains that the fact that this factor happened to tip in
Fogerty's favor as a prevailing defendant in this case should not prevent it from being
considered at all.
A
565
In Fogerty II, the Supreme Court granted certiorari to resolve a conflict among the circuits
concerning "what standards should inform a court's decision to award attorney's fees to a
prevailing defendant in a copyright infringement action. . . ." Id. at 519, 114 S.Ct. at 1026.
The Court rejected both the "dual" standard that we had followed and applied in Fogerty I —
whereby prevailing plaintiffs generally were awarded attorney's fees as a matter of course,
while prevailing defendants had to show that the original lawsuit was frivolous or brought in
bad faith — and the "British Rule" for which Fogerty argued — whereby the prevailing party
(whether plaintiff or defendant) automatically receives fees. The Court instead adopted the
"evenhanded" approach exemplified by the Third Circuit's opinion in Lieb v. Topstone
Indus., Inc., 788 F.2d 151 (3d Cir. 1986). [2] The Court held that
Prevailing plaintiffs and prevailing defendants are to be treated alike, but attorney's
fees are to be awarded to prevailing parties only as a matter of the court's
discretion. "There is no precise rule or formula for making these determinations,"
but instead equitable discretion should be exercised "in light of the considerations
we have identified."
[ … ]Considerations discussed by the Court include the Copyright Act's primary objective,
"to encourage the production of original literary, artistic, and musical expression for the
good of the public," id. at 524, 114 S.Ct. at 1028; the fact that defendants as well as plaintiffs
may hold copyrights, id. at 525-527, 114 S.Ct. at 1029, and "run the gamut from corporate
behemoths to starving artists," id. at 524, 114 S.Ct. at 1028 (internal quotations and citation
omitted); the need to encourage "defendants who seek to advance a variety of meritorious
copyright defenses . . . to litigate them to the same extent that [558] plaintiffs are encouraged
to litigate meritorious claims of infringement," id. at 527, 114 S.Ct. at 1030; and the fact that
"a successful defense of a copyright infringement action may further the policies of the
Copyright Act every bit as much as a successful prosecution of an infringement claim by the
holder of a copyright," id.
The district court's decision was informed by these considerations, but Fantasy argues that it
failed to appreciate the culpability underpinnings of the evenhanded rule and to apply the
Lieb factors, which Fantasy contends are fault-based and were embraced by the Supreme
Court in Fogerty II. However, neither Lieb nor the Court's discussion of the evenhanded rule
and the Lieb factors in Fogerty II suggests that discretion to award fees to prevailing
defendants is constrained by the plaintiff's culpability, or is limited to the specific factors
identified in Lieb. As the Court's discussion in footnote 19 indicates, courts following the
evenhanded standard have suggested several "nonexclusive factors to guide courts'
discretion." Id. at 534 n. 19, 114 S.Ct. at 1033 n. 19. By way of example, footnote 19 refers
to the factors listed by the Third Circuit in Lieb (frivolousness, motivation, objective
unreasonableness, and considerations of compensation and deterrence), [3] and says of them:
"We agree that such factors may be used to guide courts' discretion, so long as such factors
are faithful to the purposes of the Copyright Act and are applied to prevailing plaintiffs and
defendants in an evenhanded manner." Id. Thus, while courts may take the Lieb factors into
account, they are "nonexclusive." Even so, courts may not rely on the Lieb factors if they are
not "faithful to the purposes of the Copyright Act." Id. Faithfulness to the purposes of the
Copyright Act is, therefore, the pivotal criterion.
By the same token, a court's discretion may be influenced by the plaintiff's culpability in
bringing or pursuing the action, but blameworthiness is not a prerequisite to awarding fees to
a prevailing defendant. Fantasy made a similar argument in the Supreme Court, asserting that
Congress must have intended attorney's fees for prevailing defendants only when the
plaintiff's claim was frivolous or brought with a vexatious purpose because that was the
clearly established law when § 505 was enacted. Id. at 527-529, 114 S.Ct. at 1030. The Court
disagreed. In doing so, it singled out the statement in Breffort v. I Had a Ball Co., 271
F.Supp. 623 (S.D.N.Y. 1967), that "if an award is to be made at all [to a prevailing
ChapterNumber:
566
defendant], it represents a penalty imposed upon the plaintiff for institution of a baseless,
frivolous, or unreasonable suit, or one instituted in bad faith," id. at 627, as "too narrow a
view of the purposes of the Copyright Act because it fails to adequately consider the
important role played by copyright defendants," Fogerty II, 510 U.S. at 532-533 n. 18, 114
S.Ct. at 1032 n. 18. In the face of this declaration, we cannot fault the district court for
awarding fees to Fogerty as a prevailing defendant without first finding that Fantasy as the
plaintiff was blameworthy.
Although we have not squarely addressed this question before, our post-Fogerty II opinions
have recognized that a plaintiff's culpability is no longer required, that the Lieb factors may
be considered but are not exclusive and need not all be met, and that attorney's fee awards to
prevailing defendants are within the district court's discretion if they further the purposes of
the Copyright Act and are evenhandedly applied. [ … ]
We also have not previously been asked to decide whether the factors relied upon by a
district court in awarding fees to a prevailing copyright defendant must be exactly capable of
being applied to a prevailing plaintiff in order to satisfy the evenhanded rule. However,
Fogerty II has already answered this question. Fantasy argues that the point of
evenhandedness is to eliminate as the premise for any fee award any factor which cannot
occur on both sides of the litigation equation. But we believe this asks more of
"evenhandedness" than Fogerty II expects. Fantasy's argument is just another way of making
two points rejected by the Supreme Court — that for a prevailing defendant to qualify for
fees the plaintiff must be blameworthy because whenever a plaintiff prevails the defendant,
by definition, is blameworthy; and that to award fees when the plaintiff isn't blameworthy
chills enforcement of the copyright laws. Of the latter the Court states:
[T]he argument is flawed because it expresses a one-sided view of the purposes of

the Copyright Act. While it is true that one of the goals of the Copyright Act is to
discourage infringement, it is by no means the only goal of that Act. In the first
place, it is by no means always the case that the plaintiff in an infringement action
is the only holder of a copyright; often times, defendants hold copyrights too, as
exemplified in the case at hand.
More importantly, the policies served by the Copyright Act are more complex, more
measured, than simply maximizing the number of meritorious suits for copyright
infringement.
[ … ]And of the former, the Court says, speaking directly to this case:
In the case before us, the successful defense of "The Old Man Down the Road"
increased public exposure to a musical work that could, as a result, lead to further
creative pieces. Thus a successful defense of a copyright infringement action may
further the policies of the Copyright Act every bit as much as a successful
prosecution of an infringement claim by the holder of a copyright.
[ … ]We cannot, therefore, say that the district court erred by relying on factors identified by
the Supreme Court which in this case led it to conclude that Fogerty's defense sufficiently
furthered the purposes of the Copyright Act to warrant an award of attorney's fees.
Nor do we agree with Fantasy that the district court's award of fees imported the British Rule
through the back door. The British Rule requires an award of attorney's fees to every
prevailing party, regardless of the circumstances; nothing is left for the court to decide
except how much. However, [560] Fogerty II makes clear that attorney's fees are within the
courts' discretion. The district court recognized this point and, as it concluded, the reasoning
upon which it relied does not lead to compulsory fee awards to prevailing copyright
567
defendants: copyright claims do not always involve defendant authors, let alone defendant
authors accused of plagiarizing themselves, and do not always implicate the ultimate
interests of copyright; copyright defendants do not always reach the merits, prevailing
instead on technical defenses; defenses may be slight or insubstantial relative to the costs of
litigation; the chilling effect of attorney's fees may be too great or impose an inequitable
burden on an impecunious plaintiff; and each case will turn on its own particular facts and
equities.
In sum, evenhandedness means that courts should begin their consideration of attorney's fees
in a copyright action with an evenly balanced scale, without regard to whether the plaintiff or
defendant prevails, and thereafter determine entitlement without weighting the scales in
advance one way or the other. Courts may look to the nonexclusive Lieb factors as guides
and may apply them so long as they are consistent with the purposes of the Copyright Act
and are applied evenly to prevailing plaintiffs and defendants; a finding of bad faith,
frivolous or vexatious conduct is no longer required; and awarding attorney's fees to a
prevailing defendant is within the sound discretion of the district court informed by the
policies of the Copyright Act.
Since the reasons given by the district court in this case are well-founded in the record and
are in keeping with the purposes of the Copyright Act, the court acted within its discretion in
awarding a reasonable attorney's fee to Fogerty.
[…]
C
Fantasy also argues that never before has a faultless copyright litigant been [561] ordered to
pay the fees of an opponent. It says that the amount awarded is three times larger than any
other award Fantasy has seen, and that if (contrary to its view) Fogerty II changed the
standard this dramatically for awarding fees to prevailing defendants, it came years after
Fantasy filed its case against Fogerty and is thus inequitable as applied to it.
If Fantasy intends by this argument to challenge the court's decision to award any attorney's
fees that are not fault-based, we reject it for the reasons we have already explained. If, on the
other hand, Fantasy seeks to attack only the amount of fees awarded, we also reject it but for
different reasons. Because Fantasy does not identify any specific hours expended or hourly
rates that are unreasonable, we have no basis for altering the amount awarded. Regardless,
Fantasy's comparisons to fee awards in other cases are largely irrelevant, and certainly not
determinative, inasmuch as the reasonableness of a particular fee award depends on a case-
by-case analysis. Finally, that the standard for awarding fees changed after Fantasy filed its
suit is a matter left to the district court's discretion and, as evidenced by Fogerty II and our
post-Fogerty II remands, does not preclude an award of fees.
IV
On cross-appeal, Fogerty argues that the district court erred by improperly concluding that it
did not have authority to award interest on his fees. However, as we read its order, the court
recognized that it could award interest, but after surveying reported decisions, concluded that
it isn't the normal practice to do so. On that basis, the court chose not to award interest under
the circumstances of this case. This is consistent with the court's discretion and we will not
ChapterNumber:
568
disturb it. Cf. Burgess v. Premier Corp., 727 F.2d 826 (9th Cir. 1984) (no abuse of discretion
in awarding fees based on current rather than historical hourly rates).
V
Fogerty requests attorney's fees for this appeal pursuant to 17 U.S.C. § 505 and FRAP 38.
While we see no basis for awarding attorney's fees under FRAP 38, we conclude that fees are
warranted under § 505 inasmuch as it served the purposes of the Copyright Act for Fogerty
to defend an appeal so that the district court's fee award would not be taken away from him.
We therefore award Fogerty the attorney's fees he incurred in defending this appeal and we
remand to the district court for calculation of the amount.
AFFIRMED AND REMANDED.
[*] Hon. Harlington Wood, Jr., Senior Circuit Judge for the Seventh Circuit Court of
Appeals, sitting by designation.
[1] Section 505 provides in full:
In any civil action under [the Copyright Act], the court in its discretion may allow
the recovery of full costs by or against any party other than the United States or an
officer thereof. Except as otherwise provided by this title, the court may also award
a reasonable attorney's fee to the prevailing party as part of the costs.
[2] In Lieb, the defendant won on summary judgment and requested attorney's fees,
contending that the copyright infringement claim was filed in bad faith, was frivolous, and
should not have been brought after reasonable investigation. The district court denied the
request without discussion. The Third Circuit remanded for a statement of reasons, but in
doing so explained that "we do not require bad faith, nor do we mandate an allowance of fees
as a concomitant of prevailing in every case, but we do favor an evenhanded approach." Id.
at 156. The court went on to identify a number of factors which should play a part in the
district courts' discretion, including "frivolousness, motivation, objective unreasonableness
(both in the factual and in the legal components of the case) and the need in particular
circumstances to advance considerations of compensation and deterrence," but expressly
declined to limit the factors to those mentioned. Id.
[3] See note 2, supra.
[4] Rule 49(a) provides in full:
(a) Special Verdicts. The court may require a jury to return only a special verdict in
the form of a special written finding upon each issue of fact. In that event the court
may submit to the jury written questions susceptible of categorical or other brief
answer or may submit written forms of the several special findings which might
properly be made under the pleadings and evidence; or it may use such other
method of submitting the issues and requiring the written findings thereon as it
deems most appropriate. The court shall give to the jury such explanation and
instruction concerning the matter thus submitted as may be necessary to enable the
jury to make its findings upon each issue. If in so doing the court omits any issue of
fact raised by the pleadings or by the evidence, each party waives the right to a trial
by jury of the issue so omitted unless before the jury retires the party demands its
submission to the jury. As to an issue omitted without such demand the court may
make a finding; or, if it fails to do so, it shall be deemed to have made a finding in
accord with the judgment on the special verdict.
569
Fed.R.Civ.Proc. 49(a) (emphasis added).

12.2

Injunctions and Crimes

12.2.1
17 U.S.C. 501-506

§ 501. Infringement of copyright

(a) Anyone who violates any of the exclusive rights of the copyright owner as provided by
sections 106 through 122 or of the author as provided in section 106A (a), or who imports
copies or phonorecords into the United States in violation of section 602, is an infringer of
the copyright or right of the author, as the case may be. For purposes of this chapter (other
than section 506), any reference to copyright shall be deemed to include the rights conferred
by section 106A (a). As used in this subsection, the term “anyone” includes any State, any
instrumentality of a State, and any officer or employee of a State or instrumentality of a State
acting in his or her official capacity. Any State, and any such instrumentality, officer, or
employee, shall be subject to the provisions of this title in the same manner and to the same
extent as any nongovernmental entity.
(b) The legal or beneficial owner of an exclusive right under a copyright is entitled, subject
to the requirements of section 411, to institute an action for any infringement of that
particular right committed while he or she is the owner of it. The court may require such
owner to serve written notice of the action with a copy of the complaint upon any person
shown, by the records of the Copyright Office or otherwise, to have or claim an interest in
the copyright, and shall require that such notice be served upon any person whose interest is
likely to be affected by a decision in the case. The court may require the joinder, and shall
permit the intervention, of any person having or claiming an interest in the copyright.
(c) For any secondary transmission by a cable system that embodies a performance or a
display of a work which is actionable as an act of infringement under subsection (c) of
section 111, a television broadcast station holding a copyright or other license to transmit or
perform the same version of that work shall, for purposes of subsection (b) of this section, be
treated as a legal or beneficial owner if such secondary transmission occurs within the local
service area of that television station.
(d) For any secondary transmission by a cable system that is actionable as an act of
infringement pursuant to section 111 (c)(3), the following shall also have standing to sue:
(i) the primary transmitter whose transmission has been altered by the cable system; and
(ii) any broadcast station within whose local service area the secondary transmission occurs.
(f)
ChapterNumber:
570
(1) With respect to any secondary transmission that is made by a satellite carrier of a
performance or display of a work embodied in a primary transmission and is actionable as an
act of infringement under section 122, a television broadcast station holding a copyright or
other license to transmit or perform the same version of that work shall, for purposes of
subsection (b) of this section, be treated as a legal or beneficial owner if such secondary
transmission occurs within the local market of that station.
(2) A television broadcast station may file a civil action against any satellite carrier that has
refused to carry television broadcast signals, as required under section 122 (a)(2), to enforce
that television broadcast station’s rights under section 338(a) of the Communications Act of
1934.
(Pub. L. 94–553, title I, § 101, Oct. 19, 1976, 90 Stat. 2584; Pub. L. 100–568, § 10(a), Oct.
31, 1988, 102 Stat. 2860; Pub. L. 100–667, title II, § 202(3), Nov. 16, 1988, 102 Stat. 3957;
Pub. L. 101–553, § 2(a)(1), Nov. 15, 1990, 104 Stat. 2749; Pub. L. 101–650, title VI, §
606(a), Dec. 1, 1990, 104 Stat. 5131; Pub. L. 106–44, § 1(g)(5), Aug. 5, 1999, 113 Stat. 222;
Pub. L. 106–113, div. B, § 1000(a)(9) [title I, §§ 1002(b), 1011 (b)(3)], Nov. 29, 1999, 113
Stat. 1536, 1501A–527, 1501A–544; Pub. L. 107–273, div. C, title III, § 13210(4)(B), Nov.
2, 2002, 116 Stat. 1909.)
§ 502. Remedies for infringement: Injunctions

(a) Any court having jurisdiction of a civil action arising under this title may, subject to the
provisions of section 1498 of title 28, grant temporary and final injunctions on such terms as
it may deem reasonable to prevent or restrain infringement of a copyright.
(b) Any such injunction may be served anywhere in the United States on the person enjoined;
it shall be operative throughout the United States and shall be enforceable, by proceedings in
contempt or otherwise, by any United States court having jurisdiction of that person. The
clerk of the court granting the injunction shall, when requested by any other court in which
enforcement of the injunction is sought, transmit promptly to the other court a certified copy
of all the papers in the case on file in such clerk’s office.
(Pub. L. 94–553, title I, § 101, Oct. 19, 1976, 90 Stat. 2584.)
§ 503. Remedies for infringement: Impounding and

disposition of infringing articles
(a)
(1) At any time while an action under this title is pending, the court may order the
impounding, on such terms as it may deem reasonable—
(A) of all copies or phonorecords claimed to have been made or used in violation of the
exclusive right of the copyright owner;
(B) of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of
which such copies or phonorecords may be reproduced; and
(C) of records documenting the manufacture, sale, or receipt of things involved in any such
violation, provided that any records seized under this subparagraph shall be taken into the
custody of the court.
571
(2) For impoundments of records ordered under paragraph (1)(C), the court shall enter an
appropriate protective order with respect to discovery and use of any records or information
that has been impounded. The protective order shall provide for appropriate procedures to
ensure that confidential, private, proprietary, or privileged information contained in such
records is not improperly disclosed or used.
(3) The relevant provisions of paragraphs (2) through (11) of section 34(d) of the Trademark
Act (15 U.S.C. 1116 (d)(2) through (11)) shall extend to any impoundment of records
ordered under paragraph (1)(C) that is based upon an ex parte application, notwithstanding
the provisions of rule 65 of the Federal Rules of Civil Procedure. Any references in
paragraphs (2) through (11) of section 34(d) of the Trademark Act to section 32 of such Act
shall be read as references to section 501 of this title, and references to use of a counterfeit
mark in connection with the sale, offering for sale, or distribution of goods or services shall
be read as references to infringement of a copyright.
(b) As part of a final judgment or decree, the court may order the destruction or other
reasonable disposition of all copies or phonorecords found to have been made or used in
violation of the copyright owner’s exclusive rights, and of all plates, molds, matrices,
masters, tapes, film negatives, or other articles by means of which such copies or
phonorecords may be reproduced.
(Pub. L. 94–553, title I, § 101, Oct. 19, 1976, 90 Stat. 2585; Pub. L. 110–403, title I, §
102(a), Oct. 13, 2008, 122 Stat. 4258; Pub. L. 111–295, § 6(d), Dec. 9, 2010, 124 Stat.
3181.)
[…]
§ 506. Criminal offenses

(a) Criminal Infringement.—
(1) In general.— Any person who willfully infringes a copyright shall be punished as
provided under section 2319 of title 18, if the infringement was committed—
(A) for purposes of commercial advantage or private financial gain;
(B) by the reproduction or distribution, including by electronic means, during any 180–day
period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a
total retail value of more than $1,000; or
(C) by the distribution of a work being prepared for commercial distribution, by making it
available on a computer network accessible to members of the public, if such person knew
or should have known that the work was intended for commercial distribution.
(2) Evidence.— For purposes of this subsection, evidence of reproduction or distribution of

a copyrighted work, by itself, shall not be sufficient to establish willful infringement of a
copyright.
(3) Definition.— In this subsection, the term “work being prepared for commercial
distribution” means—
(A) a computer program, a musical work, a motion picture or other audiovisual work, or a
sound recording, if, at the time of unauthorized distribution—
(i)the copyright owner has a reasonable expectation of commercial distribution; and

ChapterNumber:
572
(ii) the copies or phonorecords of the work have not been commercially distributed; or
(B) a motion picture, if, at the time of unauthorized distribution, the motion picture—
(i) has been made available for viewing in a motion picture exhibition facility; and
(ii) has not been made available in copies for sale to the general public in the United States
in a format intended to permit viewing outside a motion picture exhibition facility.
(b) Forfeiture, Destruction, and Restitution.— Forfeiture, destruction, and restitution relating
to this section shall be subject to section 2323 of title 18, to the extent provided in that
section, in addition to any other similar remedies provided by law.
(c) Fraudulent Copyright Notice.— Any person who, with fraudulent intent, places on any
article a notice of copyright or words of the same purport that such person knows to be false,
or who, with fraudulent intent, publicly distributes or imports for public distribution any
article bearing such notice or words that such person knows to be false, shall be fined not
more than $2,500.
(d) Fraudulent Removal of Copyright Notice.— Any person who, with fraudulent intent,
removes or alters any notice of copyright appearing on a copy of a copyrighted work shall
be fined not more than $2,500.
(e) False Representation.— Any person who knowingly makes a false representation of a
material fact in the application for copyright registration provided for by section 409, or in
any written statement filed in connection with the application, shall be fined not more than
$2,500.
(f) Rights of Attribution and Integrity.— Nothing in this section applies to infringement of
the rights conferred by section 106A (a).
(Pub. L. 94–553, title I, § 101, Oct. 19, 1976, 90 Stat. 2586; Pub. L. 97–180, § 5, May 24,
1982, 96 Stat. 93; Pub. L. 101–650, title VI, § 606(b), Dec. 1, 1990, 104 Stat. 5131; Pub. L.
105–147, § 2(b), Dec. 16, 1997, 111 Stat. 2678; Pub. L. 109–9, title I, § 103(a), Apr. 27,
2005, 119 Stat. 220; Pub. L. 110–403, title II, § 201(a), Oct. 13, 2008, 122 Stat. 4260.)

12.2.2
Salinger v. Colting


607 F.3d 68
Docket No. 09-2878-cv
2010-04-30
607 F.3d 68
573
Colleen M. SALINGER and Matthew R. Salinger, as

Trustees of the J.D. Salinger Literary Trust, Plaintiffs-
Appellees,
v.
Fredrik COLTING, writing under the name John David
California, Windupbird Publishing Ltd., Nicotext A.B.,
and ABP, Inc., doing business as SCB Distributors, Inc,
Defendants-Appellants.
[…]
[…]
Decided: April 30, 2010.
[70] Marcia Beth Paul, Davis Wright Tremaine LLP, New York, NY, for Plaintiffs-
Appellees.
Edward H. Rosenthal (Maura J. Wogan, Jessie F. Beeber, Cameron A. Myler, Marisa Sarig,
on the brief), Frankfurt Kurnit Klein & Selz P.C., New York, NY, for Defendants-
Appellants.
David E. Kendall, Thomas G. Hentoff, Kannon K. Shanmugam, Hannah M. Stott-Bumsted,

Scott K. Dasovich, Williams & Connolly LLP, Washington, DC, for Amicus Curiae Motion
Picture Association of America, Inc. in support of Plaintiffs-Appellees.
Anthony T. Falzone, Julie A. Ahrens, Sarah H. Pearson, Stanford Law School, Center for
Internet & Society, Stanford, CA; Rebecca Tushnet, Georgetown University Law Center,
Washington, DC; Jennifer M. Urban, Samuelson Law, Technology & Public Policy Clinic,
University of California, Berkeley, School of Law, Berkeley, CA, for Amici Curiae
American Library Association, Association of Research Libraries, Association of College
and Research Libraries, The Organization for Transformative Works and the Right to Write
Fund in support of Defendants-Appellants.
George Freeman, Itai Maytal, The New York Times Company, Legal Department, New York,
NY, (Barbara W. Wall, Gannett Co., Inc., McLean, VA; Karen Flax, Tribune Company,
Chicago, IL, of counsel), for Amici Curiae The New York Times Company, Gannett Co.,
Inc., and Tribune Company in support of Defendants-Appellants.
Deepak Gupta, Gregory A. Beck, Public Citizen Litigation Group, Washington, DC; Dan
Hunter, New York Law School, New York, NY, for Amicus Curiae Public Citizen, Inc.
Before: CALABRESI, CABRANES, HALL, Circuit Judges.
CALABRESI, Circuit Judge:
Defendants-Appellants Fredrik Colting, Windupbird Publishing Ltd., Nicotext A.B., and

ABP, Inc. appeal from an order of the United States District Court for the Southern District
of New York (Deborah A. Batts, Judge) granting Plaintiff-Appellee J.D. Salinger's [1] motion
for a preliminary injunction. The District Court's judgment is VACATED and REMANDED.
ChapterNumber:
574
BACKGROUND
I.
Salinger published The Catcher in the Rye (hereinafter “Catcher”) in 1951. Catcher is a
coming-of-age story about a disaffected sixteen-year-old boy, Holden Caulfield, who after
being expelled from [71] prep school wanders around New York City for several days before
returning home. The story is told from Holden's perspective and in his “own strange,
wonderful, language.” N[ … ]Holden's adventures highlight the contrast between his cynical
portrait of a world full of “phonies” and “crooks” and his love of family, particularly his
younger sister Phoebe and his deceased younger brother Allie, along with his developing
romantic interest in a childhood friend, Jane Gallagher. While his affection for these
individuals pushes him throughout the novel toward human contact, his disillusionment with
humanity inclines him toward removing himself from society and living out his days as a
recluse. He ultimately abandons his decision to live as recluse when Phoebe insists on
accompanying him on his self-imposed exile.
Catcher was an instant success. It was on the New York Times best-seller list for over seven
months and sold more than one million copies in its first ten years. [ … ] To date it has sold
over 35 million copies, [ … ] influenced dozens of literary works, and been the subject of
“literally reams of criticism and comment,”[ … ]Literary critic Louis Menand has identified
Catcher “rewrites” as a “literary genre all its own.” [ … ] The Holden character in particular
has become a cultural icon of “adolescent alienation and rebellion,” [ … ] a “moral genius”
“who refuses to be socialized.” [ … ]
Inseparable from the Catcher mystique is the lifestyle of its author, Salinger. [3] Shortly after
publishing Catcher, Salinger did what Holden did not do: he removed himself from society.
Salinger has not published since 1965 and has never authorized any new narrative involving
Holden or any work derivative of Catcher. Westberg Aff. ¶¶ 15, 16. Other than a 1949 film
adaptation of one of his early short stories, Salinger has never permitted, and has explicitly
instructed his lawyers not to allow, adaptations of his works.[ … ] He has, however,
remained in the public spotlight through a series of legal actions to protect his intellectual
property. [ … ] Salinger has registered and duly renewed his copyright in Catcher with the
U.S. Copyright Office.
II.
Defendant-Appellant Fredrik Colting wrote 60 Years Later: Coming Through the Rye
(hereinafter “ 60 Years Later”) under the pen name “John David California.” Colting
published 60 Years Later with his own publishing company, Defendant-Appellant
Windupbird Publishing, Ltd., in England on May 9, 2009. Copies were originally scheduled
to be available in the United States on September 15, 2009. [ … ]Colting did not seek
Salinger's permission to publish 60 Years Later. [ … ]
60 Years Later tells the story of a 76-year-old Holden Caulfield, referred to as “Mr. C,” in a
world that includes Mr. C's 90-year-old author, a “fictionalized Salinger.”[72] [4] The novel's
premise is that Salinger has been haunted by his creation and now wishes to bring him back
to life in order to kill him. Unsurprisingly, this task is easier said than done. As the story
progresses, Mr. C becomes increasingly self-aware and able to act in ways contrary to the
will of Salinger. After a series of misadventures, Mr. C travels to Cornish, New Hampshire,
where he meets Salinger in his home. Salinger finds he is unable to kill Mr. C and instead
decides to set him free. The novel concludes with Mr. C reuniting with his younger sister,
Phoebe, and an estranged son, Daniel.
In bringing this suit, Salinger underscores the extensive similarities between 60 Years Later
and Catcher. First, Mr. C is Holden Caulfield. Mr. C narrates like Holden, references events
575
that happened to Holden, and shares many of Holden's notable eccentricities. [ … ]. Also,
Mr. C's adventures parallel those of Holden. Both characters leave an institution, wander
around New York City for several days, reconnect with old friends, find happiness with
Phoebe, and ultimately return to a different institution. Finally, within these broader
structural similarities, the novels contain similar scenes, such as a climactic carousel scene.
[…]
Salinger also cites Defendants' efforts to market 60 Years Later as a sequel to Catcher. The
back cover of the United Kingdom edition describes the novel as “a marvelous sequel to one
of our most beloved classics.” [ … ]In a 2009 interview in the Guardian, Colting describes
60 Years Later as “[j]ust like the first novel.... He's still Holden Caulfield, and has a
particular view on things.” [ … ]
Colting responds that 60 Years Later is not, and was never intended to be, a sequel to
Catcher. Rather, Colting claims that it is a “critical examination of the character Holden and
the way he is portrayed in [ Catcher], the relationship between Salinger and his iconic
creation, and the life of a particular author as he grows old but remains imprisoned by the
literary character he created.” Appellants' Br. 9-10. In support of this claim, Colting first
emphasizes that a main character in 60 Years Later-Salinger himself, who narrates portions
of the novel-does not appear in Catcher. Next, he explains how the Mr. C character evolves
from a two-dimensional and absurd version of a sixteen-year-old Holden into a real person
with a rich life completely apart from Catcher. Finally, he relies upon the declarations of two
literary experts. Martha Woodmansee, a professor of English and law at Case Western
Reserve University, described 60 Years Later as a “work of meta-commentary” that “pursues
critical reflection on J.D. Salinger and his masterpiece [ Catcher] just as do the articles that
literary scholars conventionally write and publish in scholarly journals, but it casts its
commentary in an innovative ‘post modern’ form, specifically, that of a novel.” [ … ] Robert
Spoo, a professor at the University of Tulsa College of Law, found 60 Years Later to be a
“sustained commentary on and critique of Catcher, revisiting and analyzing the attitudes and
assumptions of the teenaged Holden Caulfield. In this respect, [ 60 Years Later] is similar to
a work of literary criticism.” [ … ]
[73] III.
On July 1, 2009, the District Court granted Salinger's motion for a preliminary injunction,
barring Defendants from “manufacturing, publishing, distributing, shipping, advertising,
promoting, selling, or otherwise disseminating any copy of [60 Years Later], or any portion
thereof, in or to the United States.” [ … ] In doing so, it found that (1) Salinger has a valid
copyright in Catcher and the Holden Caulfield character, (2) absent a successful fair use
defense, Defendants have infringed Salinger's copyright in both Catcher and the Holden
Caulfield character, (3) Defendants' fair use defense is likely to fail, and (4) a preliminary
injunction should issue.
[…]
DISCUSSION
We hold that, although the District Court applied our Circuit's longstanding standard for
preliminary injunctions in copyright cases, our Circuit's standard is inconsistent with the
“test historically employed [75] by courts of equity” and has, therefore, been abrogated by
eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 390, 126 S.Ct. 1837, 164 L.Ed.2d 641
(2006).
I.
The Copyright Act of 1976 authorizes courts to “grant temporary and final injunctions on
such terms as [they] may deem reasonable to prevent or restrain infringement of a
ChapterNumber:
576
copyright.” 17 U.S.C. § 502(a). And, as the District Court stated, this Court has long issued
preliminary injunctions in copyright cases upon a finding of (a) irreparable harm and (b)
either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the
merits to make them a fair ground for litigation and a balance of hardships tipping decidedly
toward the party requesting the preliminary relief. See, e.g., NXIVM Corp. v. Ross Inst., 364
F.3d 471, 476 (2d Cir.2004); ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 64 (2d
Cir.1996); Video Trip Corp. v. Lightning Video, Inc., 866 F.2d 50, 52 (2d Cir.1989);
Wainwright Sec., Inc. v. Wall St. Transcript Corp., 558 F.2d 91, 94 (2d Cir.1977). [5]
Thus, once a plaintiff establishes a likelihood of success on the merits, the only additional
requirement is a showing that the plaintiff will be irreparably harmed if the preliminary
injunction does not issue. And traditionally, this Court has presumed that a plaintiff likely to
prevail on the merits of a copyright claim is also likely to suffer irreparable harm if an
injunction does not issue. [ … ]
This Court has applied this presumption in several ways. Some decisions have interpreted the
presumption to mean that a plaintiff likely to prevail on the merits does not need to make a
detailed showing of irreparable harm. [ … ]Other cases have discussed the presumption as
though it applies automatically and is irrebuttable. [ … ] A few decisions, by contrast, have
found the presumption rebuttable where the plaintiff delayed in bringing the action seeking
an injunction. [ … ]
Under any of these articulations, however, this Court has nearly always issued injunctions in
copyright cases as a matter of course upon a finding of likelihood of success on the merits.
[…]
II.
Defendants do not claim that the District Court failed to apply this Circuit's longstanding
preliminary injunction standard. Rather, they argue both that this standard is an
unconstitutional prior restraint on speech and that it is in conflict with the Supreme Court's
decision in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d
641 (2006). We agree that eBay abrogated parts of this Court's preliminary injunction
standard in copyright cases, and accordingly, this case must be remanded to the District
Court to reevaluate Salinger's preliminary injunction motion. In light of that holding, we
need not decide whether the preliminary injunction issued by the District Court constituted
an unconstitutional prior restraint on speech.
eBay involved the propriety of a permanent injunction after a finding of patent infringement.
The United States District Court for the Eastern District of Virginia had ostensibly applied
the traditional four-factor test for determining whether a permanent injunction should issue:
Issuance of injunctive relief against [the defendants] is governed by traditional

equitable principles, which require consideration of (i) whether the plaintiff would
face irreparable injury if the injunction did not issue, (ii) whether the plaintiff has
an adequate remedy at law, (iii) whether granting the injunction is in the public
interest, and (iv) whether the balance of the hardships tips in the plaintiff's favor.
MercExchange, L.L.C. v. eBay, Inc., 275 F.Supp.2d 695, 711 (E.D.Va.2003) (quotation
marks omitted). In its application of this test, however, the district court “appeared to adopt
certain expansive principles suggesting that injunctive relief could not issue in a broad swath
of cases.” eBay, 547 U.S. at 393, 126 S.Ct. 1837. Specifically, the district court found that
“the evidence of the plaintiff's willingness to license its patents, its lack of commercial
activity in practicing the patents, and its comments to the media as to its intent with respect
to enforcement of its patent rights, are sufficient to rebut the presumption that it will suffer
irreparable harm if an injunction does not issue.” eBay, 275 F.Supp.2d at 712. The Federal
577
Circuit reversed on appeal, applying a “general rule ... that a permanent injunction will issue
once infringement and validity have been adjudged.” [ … ]
Writing for a unanimous Court, Justice Thomas held that neither the district court nor the
Federal Circuit correctly applied the equitable factors:
According to well-established principles of equity, a plaintiff seeking a permanent

injunction must satisfy a four-factor test before a court may grant such relief. A
plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that
remedies available at law, such as monetary damages, are inadequate to compensate
for that injury; (3) that, considering the balance of hardships between the plaintiff
and defendant, a remedy in equity is warranted; and (4) that the public interest
would not be disserved by a permanent injunction.
eBay, 547 U.S. at 391, 126 S.Ct. 1837. Although the courts below had articulated the correct
standard, they had both, albeit in different ways, applied “broad classifications” that were
inconsistent with traditional equitable principles. Id.at 393, 126 S.Ct. 1837.
This Court has not directly addressed the scope of eBay. [6] And district courts in our Circuit
have split on eBay's reach. [ … ]
We hold today that eBay applies with equal force (a) to preliminary injunctions (b) that are
issued for alleged copyright infringement. First, nothing in the text or the logic of eBay
suggests that its rule is [78] limited to patent cases. On the contrary, eBay strongly indicates
that the traditional principles of equity it employed are the presumptive standard for
injunctions in any context. [7] Significantly, after laying out the four-factor test quoted above,
eBay cites two cases: Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-13, 102 S.Ct. 1798,
72 L.Ed.2d 91 (1982), which involved a permanent injunction after a finding that the
defendant violated the Federal Water Pollution Control Act, and Amoco Production Co. v.
Village of Gambell, 480 U.S. 531, 542, 107 S.Ct. 1396, 94 L.Ed.2d 542 (1987), which
involved a preliminary injunction in which the plaintiff alleged that the defendant was
violating § 810 of the Alaska National Interest Lands Conservation Act, eBay, 547 U.S. at
391, 126 S.Ct. 1837. The Court then looked to whether the logic of these cases should apply
in the patent context. Reasoning that “‘a major departure from the long tradition of equity
practice should not be lightly implied,’” [ … ]the Court concluded that “[t]hese familiar
principles apply with equal force to disputes arising under the Patent Act,” id.
Moreover, the Court expressly relied upon copyright cases in reaching its conclusion. In
response to the Federal Circuit's reasoning that the Patent Act's right to exclude justifies the
preference for injunctive relief, the Court stated that “the creation of a right is distinct from
the provision of remedies for violations of that right.” Id. at 392. In support of this
distinction, it noted that “[l]ike a patent owner, a copyright holder possesses the right to
exclude others from using his property.” Id. (quotation marks omitted). It further noted that
“[l]ike the Patent Act, the Copyright Act provides that courts ‘may’ grant injunctive relief
‘on such terms as it may deem reasonable to prevent or restrain infringement of copyright.’”
Id. (quoting 17 U.S.C. § 502(a)). Because of these similarities, the Court emphasized that it
“has consistently rejected invitations to replace traditional equitable considerations with a
rule that an injunction automatically follows a determination that a copyright has been
infringed.” [ … ]Whatever the underlying issues and particular circumstances of the cases
cited by the Court in eBay, it seems clear that the Supreme Court did not view patent and
copyright injunctions as different in kind, or as requiring different standards.
Nor does eBay, as reinforced by the Supreme Court's very recent decision in Winter v.
Natural Resources Defense Council, --- U.S. ----, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008),
permit an easier grant of a preliminary than of a permanent injunction. First, as mentioned
above, one of the two cases eBay relied upon in stating the traditional equitable test involved
ChapterNumber:
578
a preliminary injunction. [ … ]Second, in Winter, the Supreme Court in fact applied eBay in
a case involving a preliminary injunction. Reversing the Ninth Circuit, which had
preliminarily enjoined the Navy's use of sonar in training exercises based on a “strong”
likelihood of success on the merits and a “possibility” of irreparable harm, the Court stated:
“Issuing a preliminary injunction based only on a possibility of irreparable harm is
inconsistent with our characterization of injunctive relief as an extraordinary remedy that
may only be awarded upon a clear showing that the plaintiff is entitled to such relief.” [ … ]
And using broad, unqualified language, the Court discussed the preliminary injunction
standard as follows:
A preliminary injunction is an extraordinary remedy never awarded as of right. In

each case, courts must balance the competing claims of injury and must consider
the effect on each party of the granting or withholding of the requested relief. In
exercising their sound discretion, courts of equity should pay particular regard for
the public consequences in employing the extraordinary remedy of injunction.
[…]
III.
This Court's pre- eBay standard for when preliminary injunctions may issue in copyright
cases is inconsistent with the principles of equity set forth in eBay. The Supreme Court's
decision in Winter tells us that, at minimum, we must consider whether “irreparable injury is
likely in the absence of an injunction,” we must “‘balance the competing claims of injury,’”
and we must “‘pay particular regard for the public consequences in employing the
extraordinary remedy of injunction.’” [8] [ … ]Therefore, in light of Winter and eBay, we hold
that a district court must undertake the following inquiry in determining whether to grant a
plaintiff's motion for a preliminary injunction in a copyright case. First, as in most other
kinds of cases in our Circuit, a court may issue a preliminary injunction in a copyright case
only if the plaintiff has demonstrated “either (a) a likelihood of success on the merits or (b)
sufficiently serious questions going to the merits to make them a fair ground for litigation
and a balance of hardships tipping decidedly in the [plaintiff]' s favor.” [ … ] Second, the
[80] court may issue the injunction only if the plaintiff has demonstrated “that he is likely to
suffer irreparable injury in the absence of an injunction.” Winter, 129 S.Ct. at 374. The court
must not adopt a “categorical” or “general” rule or presume that the plaintiff will suffer
irreparable harm (unless such a “departure from the long tradition of equity practice” was
intended by Congress). eBay, 547 U.S. at 391, 393-94, 126 S.Ct. 1837. Instead, the court
must actually consider the injury the plaintiff will suffer if he or she loses on the preliminary
injunction but ultimately prevails on the merits, paying particular attention to whether the
“remedies available at law, such as monetary damages, are inadequate to compensate for that
injury.” [ … ] Third, a court must consider the balance of hardships between the plaintiff and
defendant and issue the injunction only if the balance of hardships tips in the plaintiff's
favor. [ … ]
Finally, the court must ensure that the “public interest would not be disserved” by the
issuance of a preliminary injunction. [ … ]
A.
The first consideration in the preliminary injunction analysis is the probability of success on
the merits. In gauging this, we emphasize that courts should be particularly cognizant of the
difficulty of predicting the merits of a copyright claim at a preliminary injunction hearing.
See Lemley & Volokh, supra, at 201-02 (“[When deciding whether to grant a TRO or a
preliminary injunction,] the judge has limited time for contemplation. The parties have
limited time for briefing. Preparation[81] for a typical copyright trial, even a bench trial,
generally takes many months; the arguments about why one work isn't substantially similar
579
in its expression to another, or about why it's a fair use of another, are often sophisticated
and fact-intensive, and must be crafted with a good deal of thought and effort.”). This
difficulty is compounded significantly when a defendant raises a colorable fair use defense.
“Whether [a] taking[ ] will pass the fair use test is difficult to predict. It depends on widely
varying perceptions held by different judges.” Pierre N. Leval, Toward a Fair Use Standard,
103 Harv. L.Rev. 1105, 1132 (1990); see also Campbell, 510 U.S. at 578 n. 10, 114 S.Ct.
1164 (noting that “the fair use enquiry often requires close questions of judgment”).
B.
Next, the court must consider whether the plaintiff will suffer irreparable harm in the
absence of a preliminary injunction, and the court must assess the balance of hardships
between the plaintiff and defendant. Those two items, both of which consider the harm to the
parties, are related. The relevant harm is the harm that (a) occurs to the parties' legal [9]
interests and (b) cannot be remedied after a final adjudication, whether by damages or a
permanent injunction. The plaintiff's interest is, principally, a property interest in the
copyrighted material. [ … ]But as the Supreme Court has suggested, a copyright holder might
also have a First Amendment interest in not speaking. See Harper & Row Publishers, Inc. v.
Nation Enters., 471 U.S. 539, 559, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). The defendant to
a copyright suit likewise has a property interest in his or her work to the extent that work
does not infringe the plaintiff's copyright. And a defendant also has a core First Amendment
interest in the freedom to express him or herself, so long as that expression does not infringe
the plaintiff's copyright.
But the above-identified interests are relevant only to the extent that they are not remediable
after a final adjudication. Harm might be irremediable, or irreparable, for many reasons,
including that a loss is difficult to replace or difficult to measure, or that it is a loss that one
should not be expected to suffer. In the context of copyright infringement cases, the harm to
the plaintiff's property interest has often been characterized as irreparable in light of possible
market confusion. See Merkos L'Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc., 312
F.3d 94, 96-97 (2d Cir.2002). And courts have tended to issue injunctions in this context
because “to prove the loss of sales due to infringement is ... notoriously difficult.” Omega
Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190, 1195 (2d Cir.1971) (Friendly,
C.J.). Additionally, “[t]he loss of First Amendment freedoms,” and hence infringement of the
right not to speak, “for even minimal periods of time, unquestionably constitutes irreparable
injury.” Elrod v. Burns, 427 U.S. 347, 373, 96 S.Ct. 2673, 49 L.Ed.2d 547 (1976). [10]
[82] After eBay, however, courts must not simply presume irreparable harm. See eBay, 547
U.S. at 393, 126 S.Ct. 1837. Rather, plaintiffs must show that, on the facts of their case, the
failure to issue an injunction would actually cause irreparable harm. This is not to say that
most copyright plaintiffs who have shown a likelihood of success on the merits would not be
irreparably harmed absent preliminary injunctive relief. As an empirical matter, that may
well be the case, and the historical tendency to issue preliminary injunctions readily in
copyright cases may reflect just that. [ … ] As Chief Justice Roberts noted, concurring in
eBay:
From at least the early 19th century, courts have granted injunctive relief upon a
finding of infringement in the vast majority of patent cases. This “long tradition of
equity practice” is not surprising, given the difficulty of protecting a right to
exclude through monetary remedies.... This historical practice, as the Court holds,
does not entitle a patentee to [an] ... injunction or justify a general rule that such
injunctions should issue.... At the same time, there is a difference between
exercising equitable discretion pursuant to the established four-factor test and
writing on an entirely clean slate.... When it comes to discerning and applying those
standards, in this area as others, a page of history is worth a volume of logic.
ChapterNumber:
580
[…]
But by anchoring the injunction standard to equitable principles, albeit with one eye on
historical tendencies, courts are able to keep pace with innovation in this rapidly changing
technological area. Justice Kennedy, responding to Justice Roberts, made this very point as
to patent injunctions in his eBay concurrence. Although the “lesson of the historical
practice ... is most helpful and instructive when the circumstances of a case bear substantial
parallels to litigation the courts have confronted before[,] ... in many instances the nature of
the patent being enforced and the economic function of the patent holder present
considerations quite unlike earlier cases.” Id. at 396, 126 S.Ct. 1837. Justice Kennedy
concluded that changes in the way parties use patents may now mean that “legal damages
[are] sufficient to compensate for the infringement.”[ … ]
C.
Finally, courts must consider the public's interest. The object of copyright law is to promote
the store of knowledge available to the public. But to the extent it accomplishes this end by
providing individuals a financial incentive to contribute to the store of knowledge, the
public's interest may well be already accounted for by the plaintiff's interest.
The public's interest in free expression, however, is significant and is distinct from the
parties' speech interests. [ … ]“By protecting those who wish to enter the marketplace of
ideas from government attack, the First Amendment protects the public's interest in receiving
information.”[ … ] Every injunction issued before a final adjudication on the merits risks
enjoining speech protected by the First Amendment. Some [83] uses, however, will so
patently infringe another's copyright, without giving rise to an even colorable fair use
defense, that the likely First Amendment value in the use is virtually nonexistent.
IV.
Because the District Court considered only the first of the four factors that, under eBay and
our holding today, must be considered before issuing a preliminary injunction, we vacate and
remand the case. But in the interest of judicial economy, we note that there is no reason to
disturb the District Court's conclusion as to the factor it did consider-namely, that Salinger is
likely to succeed on the merits of his copyright infringement claim.
Most of the matters relevant to Salinger's likelihood of success on the merits are either
undisputed or readily established in his favor. Thus, Defendants do not contest either that
Salinger owns a valid copyright in Catcher or that they had actual access to Catcher. And
while they argue only that 60 Years Later and Catcher are not substantially similar, that
contention is manifestly meritless. [11] “In considering substantial similarity between two
items, we review the district court's findings de novo-not on the clearly erroneous standard-
because what is required is only a visual comparison of the works, rather than credibility,
which we are in as good a position to decide as was the district court.” [ … ] And for largely
the same reasons as the District Court, we affirm the District Court's finding that Catcher and
60 Years Later are substantially similar.
More serious is Defendants' assertion of a fair use defense. And at this preliminary stage, we
agree with the District Court that Defendants will not likely be able to make out such a
defense. The District Court in its discussion of fair use focused on the first statutory factor:
the “purpose and character of the use.” 17 U.S.C. § 107(1). In doing this, the Court found
that “[i]t is simply not credible for Defendant Colting to assert now that his primary purpose
was to critique Salinger and his persona, while he and his agents' previous statements
regarding the book discuss no such critique, and in fact reference various other purposes
behind the book.” [ … ]Such a finding is not clear error. See Anderson v. Bessemer City, 470
U.S. 564, 575, 105 S.Ct. 1504, 84 L.Ed.2d 518 (1985) (a district court's findings regarding
witness credibility are to be reviewed for clear error). It may be that a court can find that the
581
fair use factor favors a defendant even when the defendant and his work lack a
transformative purpose. We need not decide that issue here, however, for when we consider
the District Court's credibility finding together with all the other facts in this case, we
conclude, with the District Court, that Defendants are not likely to prevail in their fair use
defense. [12]
[84] CONCLUSION
In this preliminary injunction case, the District Court erred by not applying the equitable
standard outlined by the Supreme Court in eBay, Inc. v. MercExchange, L.L. C. and Winter v.
Natural Resources Defense Council. Accordingly, we vacate and remand for further
proceedings consistent with this opinion. The preliminary injunction will stay in place for ten
days following the issuance of the mandate so that Appellees will have an opportunity to
apply for a temporary restraining order pending the rehearing of the motion for a preliminary
injunction.
[1] We note that Plaintiff-Appellee J.D. Salinger died during the pendency of this appeal. In
a February 18, 2010 order, we granted the motion of Colleen M. Salinger and Matthew R.
Salinger, trustees of the J.D. Salinger Literary Trust, to be substituted for Salinger as
Appellees. For reasons of convenience, however, we will continue to refer to Salinger as
“Plaintiff” or “Appellee” in this opinion.
[2] Menand includes among Catcher “rewrites” Sylvia Plath's The Bell Jar (1963), Hunter S.
Thompson's Fear and Loathing in Las Vegas (1971), Jay McInerney's Bright Lights, Big City
(1984), and Dave Eggers's A Heartbreaking Work of Staggering Genius (2000).
[3] Salinger has conceded that Catcher is “sort of” autobiographical. Paul Alexander,
Salinger: A Biography 177-78 (1999).
[4] Appellants concede that Mr. C is Holden Caulfield and that the unnamed author living in
Cornish, New Hampshire is a “fictionalized Salinger.” Special App. 6-7 (Hr'g Tr. 16-17, June
17, 2009); Appellants' Br. 10.
[5] The overwhelming majority of decisions addressing injunction motions have focused
solely on whether the plaintiff has shown a likelihood of success on the merits and
irreparable harm, rather than on balancing the hardships. But see Random House, Inc. v.
Rosetta Books L.L. C., 283 F.3d 490, 492 (2d Cir.2002) (considering the balance of hardships
but finding the standard unsatisfied); Consumers Union of U.S., Inc. v. Gen. Signal Corp.,
724 F.2d 1044, 1054 (2d Cir.1983) (same).
[6] In Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 162 (2d Cir.2007), this
Court applied the pre- eBay standard where the plaintiff sought a preliminary injunction
claiming false advertising under the Lanham Act. But whether eBay affected that standard
was neither raised by the parties nor discussed by either the district court or this Court on
appeal. Accordingly, Time Warner Cable is not binding precedent on this issue. See Webster
v. Fall, 266 U.S. 507, 511, 45 S.Ct. 148, 69 L.Ed. 411 (1924). Similarly, the Federal Circuit
has, without discussion, applied a pre- eBay standard in one post- eBay copyright case
involving a preliminary injunction. Jacobsen v. Katzer, 535 F.3d 1373, 1378 (Fed.Cir.2008)
(applying the Ninth Circuit's pre- eBay standard); see also Abercrombie & Fitch Co. v.
Moose Creek, Inc., 486 F.3d 629, 633 (9th Cir.2007) (applying the pre- eBay standard,
without discussion, in a preliminary injunction trademark case). By contrast, the First,
Eleventh, and Fourth Circuits have applied eBay in copyright cases. See CoxCom, Inc. v.
Chaffee, 536 F.3d 101, 112 (1st Cir.2008); Peter Letterese & Assocs. v. World Inst. of
Scientology Enters. Int'l, 533 F.3d 1287, 1323 (11th Cir.2008); Christopher Phelps &
Assocs. v. Galloway, 492 F.3d 532, 543 (4th Cir.2007) (“The Supreme Court [in eBay]
reaffirmed the traditional showing that a plaintiff must make to obtain a permanent
injunction in any type of case, including a patent or copyright case[.]”); see also Metro-
ChapterNumber:
582
Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F.Supp.2d 1197, 1208-10 (C.D.Cal.2007)
(extensively discussing the issue and concluding that eBay applies in the permanent
injunction copyright context). See generally Voile Mfg. Corp. v. Dandurand, 551 F.Supp.2d
1301, 1306 (D.Utah 2008) (collecting cases and summarizing that “[d]espite the lack of clear
direction from the Federal Circuit, the majority of district courts to directly analyze the issue
have held that eBay did away with the presumption of irreparable harm in preliminary
injunction cases involving patents”).
[7] Indeed, although our holding here is limited to preliminary injunctions in the context of
copyright cases, eBay's central lesson is that, unless Congress intended a “major departure
from the long tradition of equity practice,” a court deciding whether to issue an injunction
must not adopt “categorical” or “general” rules or presume that a party has met an element of
the injunction standard. 547 U.S. at 391-94, 126 S.Ct. 1837 (quotation marks omitted).
Therefore, although today we are not called upon to extend eBay beyond the context of
copyright cases, we see no reason that eBay would not apply with equal force to an
injunction in any type of case.
[8] This Court has rarely considered the public's interest before deciding whether an
injunction should issue. Although decisions have referenced the public's interest in passing,
see Silverstein v. Penguin Putnam, Inc., 368 F.3d 77, 84 (2d Cir.2004) (quoting 4 Nimmer on
Copyright § 14.06 for the proposition that “where great public injury would be worked by an
injunction ... the courts could ... award damages or a continuing royalty instead of an
injunction”); New Era Publ'ns Int'l., ApS v. Henry Holt, Co., 884 F.2d 659, 664 (2d
Cir.1989) (Newman, J., dissenting from denial of rehearing in banc) (“[T]he public interest is
always a relevant consideration for a court deciding whether to issue an injunction.”), the
public's interest has not in the past been a formal factor in this Court's standard for when to
issue copyright injunctions.
[9] As Judge Leval noted in New Era Publications International, ApS v. Henry Holt & Co.,
“the justification of the copyright law is the protection of the commercial interest of the
artist/author. It is not to coddle artistic vanity or to protect secrecy, but to stimulate creation
by protecting its rewards.” 695 F.Supp. 1493, 1526 (S.D.N.Y.1988).
[10] But cf. Freedman v. Maryland, 380 U.S. 51, 59, 85 S.Ct. 734, 13 L.Ed.2d 649 (1965)
(finding permissible pre-adjudication restraint where, among other things, the time between
the restraint and the final adjudication is brief).
[11] We find it unnecessary to decide whether Salinger owns a valid copyright in the
character Holden Caulfield.
[12] As noted above, since the commencement of these proceedings, Plaintiff-Appellee J.D.
Salinger has died. On remand, nothing precludes the District Court from considering that or
any other additional evidence that may bear on the legal issues to be determined with respect
to the preliminary injunction and the final merits. Moreover, while we are remanding for
further consideration of a preliminary injunction, we wish to make clear that nothing we have
said is intended to preclude the District Court on remand from consolidating its further
consideration of the preliminary injunction application with the trial on the merits. See
Fed.R.Civ.P. 65(a)(2).

583
12.2.3
United States v. Moran

United States District Court for the District of Nebraska

757 F. Supp. 1046
No. CR 90-0-106
1991-02-15
757 F. Supp. 1046
UNITED STATES of America, Plaintiff,
v.
Dennis MORAN, Defendant.
[…]
United States District Court, D. Nebraska.
February 15, 1991.
[…]
RICHARD G. KOPF, United States Magistrate Judge.
The parties have consented to try this misdemeanor case before me. Trial was held on
January 15, 1991, and briefs were received on January 23, 1991. I now find that the
defendant is not guilty of the alleged willful infringement of a copyrighted video cassette in
violation of 17 U.S.C. § 506(a).
I. FACTS
Dennis Moran (Moran), the defendant, is a full-time Omaha, Nebraska, police officer and the
owner of a "mom-and-pop" movie rental business which rents video cassettes of copyrighted
motion pictures to the public. On April 14, 1989, agents of the Federal Bureau of
Investigation (FBI) executed a court-ordered search warrant on the premises of Moran's
business. The FBI seized various video cassettes appearing to be unauthorized copies of
copyrighted motion pictures, including "Bat 21," "Big," "Crocodile Dundee II," "The Fourth
Protocol," "Hell-Bound: Hellraiser II," and "Mystic Pizza." The parties have stipulated that
these six motion pictures are validly copyrighted motion pictures. The parties have further
stipulated that each of the six motion pictures was distributed to Moran, with the permission
of the copyright holder, between February 1, 1989, and April 14, 1989. The parties have
further stipulated that at least one of the movies identified was reproduced by Moran onto a
video cassette, without the authorization of the copyright holder, placed into inventory for
rental, and subsequently rented.
At the time the FBI executed the search warrant, Moran was fully cooperative. He told the
FBI agents he put the "duped" copies out for rental and held the "originals" back because he
feared the "original" motion pictures would be stolen or damaged. Moran told the FBI agents
at the time they executed the warrant that he believed this practice was legal as long as he
had purchased and was in possession of the "original" motion picture. Moran further advised
the FBI agents that he would affix to the "duped" copies title labels for the copyrighted
ChapterNumber:
584
motion pictures and a copy of the FBI copyright warning label commonly found on video
cassette tapes. Moran [1048] advised the FBI agents that he put the title labels and FBI
warning on the tapes to stop customers from stealing or duplicating the tapes.
Moran testified at trial. He indicated that he had been employed as an Omaha, Nebraska,
police officer for approximately twenty-two-and-a-half years, including service as a narcotics
investigator and as a bodyguard to the mayor of the City of Omaha. Moran has a reputation
for honesty among his associates.
Moran testified that he began to "insure" copyrighted video cassettes, meaning that he
duplicated copyrighted video cassettes which he had validly purchased from distributors,
when he realized copyrighted tapes were being vandalized. Moran testified he was under the
impression that "insuring" tapes was legal whereas "pirating" tapes was not. For practical
purposes, Moran defined "insuring" versus "pirating" as meaning that he could duplicate a
copyrighted tape provided he had purchased the copyrighted tape and did not endeavor to
rent both the copyrighted tape and the duplicate he had made. Moran testified that he
formulated his belief about "insuring" versus "pirating" when talking with various colleagues
in the business and from reading trade publications. However, Moran was not able to
specifically identify the source of his information.
There was no persuasive evidence that Moran made multiple copies of each authorized
version of the copyrighted material. The evidence indicates that Moran purchased more than
one copyrighted tape of the same movie, but the persuasive evidence also reveals that Moran
made only one copy of each copyrighted tape he purchased. There was no persuasive
evidence that Moran endeavored to rent both the copyrighted tape and the duplicate. When
Moran made the unauthorized copy, he put the unauthorized copy in a package made to
resemble as closely as possible the package containing the original copyrighted motion
picture Moran had purchased from an authorized distributor.
II. LAW
Moran makes two arguments. First, Moran argues that the government must prove that he
had the specific intent to violate the law, that is, he knew that what he was doing was illegal
and he committed the act nevertheless. Secondly, Moran argues that he did not have the
specific intent to violate the law and, as a consequence, should be found not guilty.
In pertinent part 17 U.S.C. § 506(a) punishes as a criminal any "person who infringes a
copyright willfully and for purposes of commercial advantage or private financial gain."
Pursuant to 17 U.S.C. § 106(3), the owner of a copyright has the exclusive right to
"distribute copies . . . of the copyrighted work to the public by sale or other transfer of
ownership, or by rental, lease, or lending." The "exclusive right" of the owner of a copyright
is subject to a variety of exceptions. See 17 U.S.C. §§ 107-118.
A.
It must first be determined whether the word "willfully," as used in 17 U.S.C. § 506(a),
requires a showing of "bad purpose" or "evil motive" in the sense that there was an
"intentional violation of a known legal duty." Adopting the research of the Motion Picture
Association of America, the government argues that the term "willful" means only "an intent
to copy and not to infringe." Letter Brief of Government at 4 (citing United States v. Backer,
134 F.2d 533, 535 (2nd Cir. 1943); United States v. Taxe, 380 F.Supp. 1010 (C.D.Cal. 1974),
aff'd, 540 F.2d 961 (9th Cir. 1976)). On the other hand, Moran argues that the use of the
585
word "willful" implies the kind of specific intent required to be proven in federal tax cases,
which is to say, a voluntary, intentional violation of a known legal duty. Defendant's
Memorandum Brief at 1 (citing United States v. Cross, 816 F.2d 297, 300-01 (7th Cir. 1987);
United States v. Heilman, 614 F.2d 1133, 1137-38 (7th Cir.), cert. denied, 447 U.S. 922, 100
S.Ct. 3014, 65 L.Ed.2d 1114 (1980); United States v. Wise, 550 F.2d 1180, 1194 (9th [1049]
Cir.), cert. denied, 434 U.S. 929, 98 S.Ct. 416, 54 L.Ed.2d 290 (1977)).
The general rule is, of course, that ignorance of the law or mistake of the law is no defense to
a criminal prosecution. However, when the term "willfully" is used in complex statutory
schemes, such as federal criminal tax statutes, the term "willfull" means a "voluntary,
intentional violation of a known legal duty." Cheek v. United States, ___ U.S. ___, 111 S.Ct.
604, 610, 112 L.Ed.2d 617 (1991) (holding in a criminal tax prosecution that a good faith
misunderstanding of the law or a good faith belief that one is not violating the law negates
willfulness, whether or not the claimed belief or misunderstanding is objectively reasonable).
[1]
As the Court recognized in Cheek, id. at ___, 111 S.Ct. at 609-611, in United States v.
Murdock, 290 U.S. 389, 396, 54 S.Ct. 223, 226, 78 L.Ed. 381 (1933), the Supreme Court said
that:
Congress did not intend that a person, by reason of a bona fide misunderstanding as
to his liability for the tax, as to his duty to make a return, or as to the adequacy of
the records he maintained, should become a criminal by his mere failure to measure
up to the prescribed standard of conduct.
This was evidently so because "the proliferation of statutes and regulations has sometimes
made it difficult for the average citizen to know and comprehend the extent of the duties and
obligations imposed by the tax law." [ … ]
Apparently no case has compared and analyzed the competing arguments, i.e., whether the
word "willfully" requires either a showing of specific intent, as suggested by Moran, or the
more generalized intent suggested by the government. Indeed, a leading text writer
acknowledges that there are two divergent lines of cases, one of which requires specific
intent and another which does not. 3 M. Nimmer & D. Nimmer, Nimmer on Copyright, §
15.01 at 15-5 n. 13 (1990) (hereinafter Nimmer). As pointed out by the government, some
courts have suggested that "willful" only means an intent to copy, not to infringe. Backer,
134 F.2d at 535; Taxe, 380 F.Supp. at 1017. On the other hand, as suggested by Moran, other
courts have seemingly required evidence of specific intent. Heilman, 614 F.2d at 1137-38;
Wise, 550 F.2d at 1194. At least two courts have specifically approved jury instructions
essentially stating that an act of infringement done "willfully" means an act voluntarily and
purposely done with specific intent to do that which the law forbids, that is to say, with bad
purpose either to disobey or disregard the law. [ … ] None of the cases recognize that there
are divergent lines of cases on this point, and none of the cases endeavor to explain why one
line of cases is more compelling than the other.
I am persuaded that under 17 U.S.C. § 506(a) "willfully" means that in order to be criminal
the infringement must have been a "voluntary, intentional violation of a known legal duty."
Cheek, ___ U.S. at ___, 111 S.Ct. at 610. I am so persuaded because I believe that in using
the word "willful" Congress intended to soften the impact of the common-law presumption
that ignorance of the law or mistake of the law is no defense to a criminal prosecution by
making specific intent to violate the law an element of federal criminal copyright offenses. I
came to this conclusion after examining the use of the word "willful" in the civil copyright
infringement context and applying that use to the criminal statute. [2] Wise, 550 F.2d at 1188
n. 14 (There is [1050] a general principle in copyright law of looking to civil authority for
guidance in criminal cases).
ChapterNumber:
586
In the civil context there is "strict liability" for infringement, even where the infringement
was "innocent." [ … ]In this connection, a plaintiff in a civil case need not prove actual
damages, but rather may seek what are called statutory damages. The term "willful" is used
in the context of statutory damages, and it is instructive to compare the definition of the term
"willful," as used in the civil context regarding statutory damages, with the definition of the
term "willful" used in the criminal context.
In the statutory damage context, a civil plaintiff is generally entitled to recover no less than
$250.00 nor more than $10,000.00 per act of infringement. 17 U.S.C. § 504(c)(1). But where
the infringement is committed "willfully," the court in its discretion may increase the award
of statutory damages up to a maximum of $50,000.00 per act of infringement. 17 U.S.C. §
504(c)(2). On the other hand, in the case of "innocent infringement," if the defendant sustains
the burden of proving he/she was not aware, and had no reason to believe, that his/her acts
constituted an infringement of the copyright, and the court so finds, the court may in its
discretion reduce the applicable minimum to $100.00 per act of infringement. 17 U.S.C. §
504(c)(2). [ … ]
As noted text writers have concluded, the meaning of the term "willful," used in 17 U.S.C. §
504, must mean that the infringement was with knowledge that the defendant's conduct
constituted copyright infringement. [ … ] Otherwise, there would be no point in providing
specially for the reduction of awards to the $100.00 level in the case of "innocent"
infringement since any infringement which was nonwillful would necessarily be innocent.
The circuit courts of appeal which have considered the issue have all adopted Nimmer's
formulation with regard to the meaning of the word "willful" for purposes of 17 U.S.C. §
504(c)(2) and statutory civil damages. [ … ] In other words, the term "willful," when used in
the civil statutory damage statute, has consistently been interpreted to mean that the
infringement must be "with knowledge that the defendant's conduct constitutes copyright
infringement." [ … ]
There is nothing in the text of the criminal copyright statute, the overall scheme of the
copyright laws, or the legislative history to suggest that Congress intended the word
"willful," when used in the criminal statute, to mean simply, as the government suggests, an
intent to copy. Rather, since Congress used "willful" in the civil damage copyright context to
mean that the infringement must take place with the defendant being knowledgeable that
his/her conduct constituted copyright infringement, there is no compelling reason to adopt a
less stringent requirement in the criminal copyright context. Accordingly, I find that
"willfully," when used in 17 U.S.C. § 506(a), means a "voluntary, intentional [1051]
violation of a known legal duty." [3] [ … ]
B.
Having determined that the standard enunciated by the Supreme Court in Cheek, ___ U.S.
___, 111 S.Ct. 604, applies, it is important to recognize that the rule does not require that a
defendant's belief that his conduct is lawful be judged by an objective standard. Rather, the
test is whether Moran truly believed that the copyright laws did not prohibit him from
making one copy of a video cassette he had purchased in order to "insure" against vandalism.
In other words, the test is not whether Moran's view was objectively reasonable, but rather,
whether Moran truly believed that the law did not proscribe his conduct[ … ]. Of course, the
more unreasonable the asserted belief or misunderstanding, the more likely it is that the
finder of fact will consider the asserted belief or misunderstanding to be nothing more than
simple disagreement with known legal duties imposed by the law, and will find that the
government has carried its burden of proving knowledge.[ … ]
587
Most of the government's argument that it proved beyond a reasonable doubt that Moran
violated the criminal copyright statute, even if the word "willfully" is defined as Moran
suggests, is based upon the assumption that Moran's beliefs must be "objectively" reasonable.
As indicated above, Moran's beliefs need not have been objectively reasonable; rather, if
Moran truly believed that he was not subject to the copyright laws, then his subjective belief
would defeat a finding that he "willfully" violated the statute.
First, I note that I had an opportunity to observe Moran when he testified. Moran struck me
as an honest, albeit naive, person. I was left with the definite impression that Moran was
befuddled and bewildered by the criminal prosecution.
Second, although Moran is a local police officer of long standing, there is nothing in his
background to suggest any particular sophistication about business matters, and there is no
evidence to suggest that he has any particular knowledge about the intricacies of the
copyright laws. When confronted by FBI agents upon the execution of the search warrant,
Moran was entirely cooperative. On the day the search warrant was executed, he told his
story in the same way he now tells his story.
Third, Moran said he had heard from others and read in various publications that it was
legally appropriate to engage in the practice he called "insuring." Moran could not cite the
specific source of his information. In this regard, I note that the copyright laws permit
libraries and archives to replace a copyrighted article that is damaged, deteriorated, lost, or
stolen, if the library or archives have, after reasonable effort, determined that an unused
replacement cannot be obtained at a fair price. 17 U.S.C. § 108(c). While Moran obviously
did not operate his business as a library or archives, the government's assertion that the
practice of "insuring" is patently unreasonable is belied by the recognition that under certain
circumstances certain users of copyrighted materials may lawfully engage in copying activity
which is similar to Moran's conduct.
Fourth, Moran testified that he made only one copy of the original motion picture purchased
from the authorized distributor. The government doubts his testimony, but offers no
persuasive evidence to contradict [1052] it. Moreover, Moran testified that he never rented
both the original copyrighted version of the video cassette purchased from the authorized
distributor and the copy he made. Instead, he testified that he always held back the original
motion picture. Once again, the government doubts this testimony in its brief, but offers no
persuasive evidence to the contrary. Furthermore, the evidence indicates that Moran
purchased more than one authorized cassette of a particular motion picture, but made only
one duplicate for each authorized cassette purchased.
This evidence suggests that Moran was not acting with a willful intention to violate the
copyright laws because if he had such an intention it would make absolutely no sense to
purchase multiple authorized video cassettes and then make only one duplicate of each
authorized cassette. It would have been far simpler, and certainly more lucrative, for Moran
to purchase one authorized cassette of a particular motion picture and make multiple copies
from the authorized version. In this way Moran would have had to pay only one fee. The fact
that Moran seems to have consistently followed the practice of buying an authorized version,
but making only one copy of it, suggests that he was acting in accordance with his belief that
to duplicate an authorized version in order to "insure it" was lawful so long as only one copy
was made and the authorized version and copy were not both rented.
Fifth, the government argues that Moran must have known that what he was doing
constituted a copyright infringement because he had before him the FBI warning label and in
fact affixed such labels to the unauthorized copies he made. In pertinent part, the FBI
warning states, "Federal law provides severe civil and criminal penalties for the unauthorized
reproduction, distribution or exhibition of copyrighted motion pictures and video tapes"
(emphasis added). Moran explained that he thought these warning labels applied to the
ChapterNumber:
588
renting public, not to him. The use of the word "unauthorized" on the warning label
suggested to Moran that vendors who had purchased an authorized version were not subject
to the legal restrictions expressed in the warning to the extent that the practice of "insuring"
was legal. As Moran suggests, the FBI warning label does not specifically address the claim
of legality professed by Moran. Accordingly, Moran's failure to heed the warning label is not
determinative.
Sixth, the government further argues that Moran's effort to place the unauthorized copy into a
video cassette package displaying a label on its spine and an FBI warning label suggests a
sinister motivation. I disagree. Moran's testimony, as I understood it, indicated that when he
made a copy he endeavored to make the duplicate look like the original in all respects. After
all, the whole purpose of the practice of "insuring" was to use the unauthorized copy in lieu
of the original when renting to the public. It was perfectly consistent with Moran's view of
the law to make the unauthorized copy look as nearly as possible like the authorized version.
In summary, when Moran's actions were viewed from the totality of the circumstances, the
government failed to convince me beyond a reasonable doubt that Moran acted willfully.
Moran is a long-time street cop who was fully cooperative with law enforcement authorities.
He is obviously not sophisticated and, at least from the record, his business operation of
renting movies to the public was not large or sophisticated. Rather, Moran's business appears
to have been of the "mom-and-pop" variety. Moran's practice of "insuring," while obviously
shifting the risk of loss from Moran to the copyright holder, was conducted in such a way as
not to maximize profits, which one assumes would have been his purpose if he had acted
willfully. For example, Moran purchased multiple authorized copies of the same movie, but
he made only one unauthorized copy for each authorized version purchased. This suggests
that Moran truly believed that what he was doing was in fact legal. I therefore find Moran
not guilty. [4]
[…]
[1] In other circumstances, the Supreme Court has also derived from the word "willfully" a
requirement of specific intent. Screws v. United States, 325 U.S. 91, 101, 65 S.Ct. 1031,
1035, 89 L.Ed. 1495 (1945) (construing 18 U.S.C. § 242, dealing with violations of civil
rights, as requiring specific intent in a federal criminal prosecution of local law enforcement
officers who arrested a black for a state offense and then wrongfully beat him to death).
[2] The legislative history regarding the use of the word "willful" in the statutes
criminalizing copyright infringement is not helpful. It has been a criminal offense to
willfully infringe a copyright for profit since at least 1909. Copyright Act of 1909, ch. 320,
35 Stat. 1082 at § 28. With the exception of inserting the phrase "for purposes of commercial
advantage or private financial gain" for the word "profit," a change thought not to be
material, Nimmer, supra p. 6, § 15.01 at 15-1 n. 1, the present statute is nearly identical to
the 1909 statute. 17 U.S.C. § 506(a) (1976). The legislative history of the 1976 revision of
the criminal statute does not explain what Congress meant by the use of the word "willful."
H.R.Rep. No. 1476, 94th Cong., 2d Sess. at 163-164, reprinted in 1976 U.S.Code Cong. &
Admin.News 5659, 5779-80.
[3] The Manual of Model Criminal Jury Instructions for the District Courts of the Eighth
Circuit, Instruction 7.02 at 291 (1989 Revised Edition) (West 1990) (hereinafter Manual),
suggests that no instructions are recommended regarding the term "willfully" except in
criminal tax cases and odometer fraud cases. The reason for this suggestion is that in most
cases, as the Manual suggests, the words "voluntarily and intentionally" replace the word
"willfully." Id. The Manual recognizes that in tax cases and odometer fraud cases "willfully"
should be defined as, "An act is done 'willfully' if done voluntarily and intentionally with the
purpose of violating a known legal duty." Id. (citations omitted). However, as the committee
589
comments to the Manual suggest, there may be other statutes in which "willfully" requires
specific intent. Id. This is one of those cases.
[4] At the close of the government's case, Moran moved for judgment of acquittal. I took his
motion under advisement. Moran then offered evidence. Based upon the evidence submitted
by the government and the evidence submitted by Moran, I find Moran not guilty in my
capacity as a finder of fact. Therefore, I need not rule, and do not decide, whether the motion
for acquittal should have been granted.

12.3

Indian materials

12.3.1
Knit Pro International vs The State of NCT of Delhi

(Supreme Court, 2022)


12.3.2
Pillalamarri Lakshmikantham v. Ramakrishna Pictures


12.3.3
Sheo Ratan Upadhya v. Gopal Chandra Nepali


ChapterNumber:
590
12.3.4
Indian Performing Right Society v. Badal Dhar

Chowdhry

http://lobis.nic.in/dhc/RSE/judgement/06-04-2010/
RSE05042010S10142004.pdf

12.3.5
Gramophone Company of India Ltd. v. Birendra

Bahadur Pande


12.3.6
UTV v 1337x.to (Delhi HC, 2019)


591
Acknowledgments
Some materials included in this export came from the
following casebooks.

CopyrightX - NLSIU (2023) - Annotated

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

CopyrightX - NLSIU (2023) - Annotated

Uploaded by

Copyright:

Available Formats

CopyrightX - NLSIU (2023)

Syllabus of the CopyrightX:NLSIU course

Export Customization Tips

1.2 The Idea/Expression Distinction..........................................................[ ]

3.2 Indian materials..................................................................................[ ]

5.2 Works for Hire...................................................................................[ ]

5.2.3 V.T. Thomas v. Malayala Manorama Co. Ltd..................................................[ ]

6.2 The Boundary between Copyright and the Public Domain.....................[ ]

6.3 Indian materials..................................................................................[ ]

7.2 Derivative Works...............................................................................[ ]

7.3 Indian materials..................................................................................[ ]

8.1.1 Hotaling v. Church of Jesus Christ of Latter-Day Saints..................................[ ]

8.2 Performances and Displays.................................................................[ ]

9.2 Fair Use (Part 2).................................................................................[ ]

9.3 Hybrid model of exceptions to copyright infringement..........................[ ]

10.2 Traditional Knowledge.......................................................................[ ]

11.2 Technological Protection Measures......................................................[ ]

12.2 Injunctions and Crimes.......................................................................[ ]

12.3 Indian materials..................................................................................[ ]

History of US Copyright Law

Lesson Specific Section - (a)

§ 102. Subject matter of copyright: In general

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

Bleistein v. Donaldson Lithographing Co.,

188 U.S. 239

GEORGE BLEISTE [ … ].,

[248] Mr. Justice Holmes delivered the opinion of the court:

If there is a restriction it is not to be found in the limited pretensions of these

[251] These chromolithographs are 'pictorial illustrations.' The word 'illustrations'

It would be a dangerous undertaking for persons trained only to the law to

Mr. Justice Harlan, dissenting:

discover anything useful or meritorious in the design copyrighted by the plaintiffs

Mr. Justice McKenna authorizes me to say that he also dissents.

Feist Publications, Inc. v. Rural Telephone Service

Supreme Court of the United States

Feist Publications, Inc.

Supreme Court of the United States

JUSTICE O'CONNOR delivered the opinion of the Court.

This case requires us to clarify the extent of copyright protection available to

Feist Publications, Inc., is a publishing company that specializes in area-wide

employees were obliged to travel door-to-door or conduct a telephone survey to

There is an undeniable tension between these two propositions. Many compilations

Originality is a constitutional requirement. The source of Congress' power to enact

In The Trade-Mark Cases, the Court addressed the constitutional scope of

The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles

This inevitably means that the copyright in a factual compilation is thin.

authorship. As applied to a factual compilation, assuming the absence of original

"[N]o author may copyright facts or ideas. The copyright is limited to

The definition of "compilation" is found in § 101 of the 1976 Act. It defines a

The third requirement is also illuminating. It emphasizes that a compilation, like

As discussed earlier, however, the originality requirement is not particularly

Even if a work qualifies as a copyrightable compilation, it receives only limited

"The copyright in a compilation . . . extends only to the material

The judgment of the Court of Appeals is

JUSTICE BLACKMUN concurs in the judgment.

Mannion v. Coors Brewing Co.