Copyright Law

Table of Contents
COPYRIGHT IN CONTEXT ...................................................................................................... 3
THE THEORETICAL UNDERPINNINGS OF COPYRIGHT LAW......................................................... 7
Incentive theory ...................................................................................................................... 7
Author's rights ........................................................................................................................ 8
Expression and Democracy .................................................................................................... 9
Public domain ......................................................................................................................... 9
Users' rights .......................................................................................................................... 10
Limitations on copying (Hardy)............................................................................................ 10
THE HISTORY OF U.S. COPYRIGHT LAW ................................................................................... 11
THE SUBJECT MATTER OF COPYRIGHT ......................................................................... 13
REQUIREMENTS FOR COPYRIGHT PROTECTION (ELEMENTS) ................................................... 13
Fixation ................................................................................................................................. 13
Originality............................................................................................................................. 15
The Idea/Expression Dichotomy ........................................................................................... 22
Form vs. Function: Useful Articles, Architectural Works, and Software ............................. 25
Useful Article with Pictorial, Graphic, and Sculptural Dimensions .................................... 26
TWO SPECIAL CASES: DERIVATIVE WORKS & COMPILATIONS ................................................ 30
Derivative Works .................................................................................................................. 30
Compilations ......................................................................................................................... 32
AUTHORSHIP: WHO IS AN AUTHOR? ........................................................................................ 35
Sole Authorship..................................................................................................................... 35
Joint Authorship.................................................................................................................... 36
Works Made for Hire ............................................................................................................ 38
Government Works ............................................................................................................... 41
THE STATUTORY RIGHTS OF COPYRIGHT OWNERS ................................................. 42
THE REPRODUCTION RIGHT ...................................................................................................... 42
The Exact Copy ..................................................................................................................... 42
The De Minimis Copy ........................................................................................................... 43
The Substantially Similar Copy ............................................................................................ 44
THE RIGHT TO PREPARE DERIVATIVE WORKS ......................................................................... 52
Reproduction or Derivative Work?....................................................................................... 53
Copyright, Markets, and Derivative Works .......................................................................... 53
Derivative Works that Do Not Involve Copying ................................................................... 54
Fictional Characters and The Reproduction and Derivative Work Rights .......................... 56
THE RIGHTS OF DISTRIBUTION, PUBLIC PERFORMANCE, AND PUBLIC DISPLAY ...................... 58
Distribution of Copies........................................................................................................... 58
Public Performance and Display Rights .............................................................................. 62
COPYRIGHT IN MUSICAL WORKS AND SOUND RECORDINGS ................................................... 66
Reproduction, Public Distribution, and Derivative Works ................................................... 67
Sampling ............................................................................................................................... 70
Public Performance of Music ............................................................................................... 71
COPYRIGHT AND COMPUTER SOFTWARE .................................................................................. 73
 Source Code vs. Object Code ............................................................................................... 74
Program Structure (Non-Literal Copying) ........................................................................... 75
User Interfaces...................................................................................................................... 76
Application Programming Interfaces (APIs)....................................................................... 77
INDIRECT INFRINGEMENT AND LAWFUL USE ............................................................. 79
THE DIFFERENT FACES OF INFRINGEMENT ............................................................................... 79
Direct Infringement .............................................................................................................. 79
Vicarious Liability and Contributory Infringement .............................................................. 81
Device Manufacturers and Liability for Inducing Infringement........................................... 85
OSP Liability & Qualified Statutory Immunity..................................................................... 88
FAIR USE ................................................................................................................................... 91
Cultural Interchange ............................................................................................................ 91
Fair Use in Technology and in Institutional Settings ........................................................... 97
PRACTICAL CONSIDERATIONS IN LICENSING & ENFORCING COPYRIGHTS.. 105
COPYRIGHT DUE DILIGENCE ................................................................................................... 105
Formalities.......................................................................................................................... 105
Duration.............................................................................................................................. 109
Renewals and Terminations of Transfers ........................................................................... 114
LICENSES AND TRANSFERS ..................................................................................................... 120
Modes of Transfer ............................................................................................................... 120
New Uses and Old Language ............................................................................................. 124
COPYRIGHT LITIGATION.......................................................................................................... 126
Proper Court....................................................................................................................... 126

2
Copyright in Context
Federal law that's constitutionally grounded
Current federal legislation: Copyright Act of 1976 (with amendments)
o 17 USC 101 et. Seq. definition section
Federal statute codified in Title 17 of the US Code
Authority derives from the "Intellectual Property Clause" (Art. I, 8, cl. 8)
o Congress shall have power . . . To promote the Progress of Science and
useful Arts, by securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Discoveries.
Broad coverage:
o Copyright protection subsists . . . 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 communicated,
either directly or with the aid of a machine or device.
Authors have several exclusive rights including the right to prevent other
people from
o Copying or distributing their works;
o Adapting them into derivative works (translations and adaptations); and
o In some cases from publicly performing or publicly displaying their
works.
When a work is not subject to copyright protection, it is in the public domain
o Because of lack of eligibility for protection and/or lapse of protection
o Can be used/copied without IP sanction
o Note: lots of copyrighted works contain public domain elements
The Copyright Act imposes certain threshold requirements a work must meet
before it is entitled to protection
o Generally grants a limited statutory monopoly in original works of
authorship that are fixed in a tangible medium of expression
Doesn't require registration If it fits into this category then it's
protected

3
 The Copyright Pie lots of ways to protect against copying

Entitlement-type
protections:
Contract
Copyright
Norms
Sui generis
statutory
protections

State of the copying art

limitations
Technological
protections

o Think about what slices of the pie might be more attractive to producers of
different products
o Depending on the product, might some creators rely more on contract-like
protections than entitlement-type protections?
o Microsoft computer programs vs. authors of novels?
Idea/expression distinction: Excludes from protection ideas, facts, method of
operation, etc.
o Part of the public domain
Dual regimes for protecting creativity
o Legal regime
Statutory, contract-based, norm-based
o Private solutions
Copyright industries' self-help solutions

Salient changes:
Marketplace
o Now a global information-based market place with a ton of money
o Consolidated entertainment industries
o Intermediaries as new market entrants
o Technology enables theft and collaborative production
Technology
o Norm generation in the shadow of technological change
Growth of "sharing" norms and "remix culture"
Copy-left:

4
 Rich public domain, promoting democratic culture,
stopping the expansion of property culture, networked
creativity
Object to:
o Expansive claims to property by copyright
industries
o Use of technological protection measures to prevent
access
o Increasingly stringent enforcement
o Increased criminalization
Copy-right:
Concerned with rampant piracy and industry destabilization
with new forms of communication
Public rhetoric/cultural practices/culture
Legal theory/legislation
o Past decade of changes have been copyright maximalist
But recent developments in judicial interpretation of fair use
suggest a limit
o Doctrinal shift from texts to performance
Shift from ownership to licensing
Shift from texts to performance
Move to claims of indirect liability
Enforcement issues
Contrasts in legal theory
Use of copyright to advance non-copyright goals
Doctrinal shifts
o "Propertization" of copyright
Shift from classical incentive theory to Chicago school economic
analysis
You own everything that flows from the work, everything that
comes from the use of it
Bigger scope of property rather than thinking what would it
take you to make this artwork instead of doing what you
were doing before
Not what it takes to persuade the author, but rather this
notion of property as every possible economic use that
flows from the work itself
o From "persuasion cost of creation" to entitlement to property protection
for all subsequent uses of a work

5
 Source of law
o Shift from courts to legislature
SC's deference to Congress with regard to duration of copyright
o And back to courts again?
Apparent shifts in judicial approach to fair use
Congress was only appealing to copyright owners and ignoring
copyright users
Effects of international developments
o US has become a leader in arguing for strong copyright protections
internationally
o Developing nations generally favor weaker IP rights
o As they develop, evidence shows that this attitude shifts
In order to safeguard growing domestic industries
o Increasing trans-border transactions means that domestic law and policy
develop in the shadow in international affairs

Levi's thoughts on the future:

The "pay per view" world: there will be no digital downloads in the future and
nothing will reside on our hard drives we'll read from the cloud and pay for the
view
o Will give a lot of control and information about what consumers do with
creative works
Minimized "ownership": we'll all be licensees all the time
Re-formalizing copyright: Will formalities return?
o Will a worldwide registry of work that will make formalities effectively
costless?
Should we make changes to the Berne framework to make regime more consistent
with cyberspace?
Copyright will be increasingly limited to works of "high authorship"
The author's brand is becoming more important than the actual book
o Almost doesn't matter what the plot of the book or movie is

6
The Theoretical Underpinnings of Copyright Law
The fundamental reason is to promote progress (IP clause)

Incentive theory
Principle US rationale
o Utilitarian/instrumentalist
Not about rewarding artists and writers, but about promoting instrumental goal of
promoting the progress of science and the useful arts
The constitutional requirement is explicit in articulating a public purpose for
copyright
Public goods problem in intangibles: the cost of creating new works is high, but
the cost of reproducing them is low
o Once the good is created, reproducing it in no way depletes the original
nonrivalrous consumption one party's use of the good doesn't interfere
with another party's use
o Nonexcludability: once the good is produced, there's no way to exclude
others from enjoying its benefits
Incentives are thought to be necessary because:
o Information = public good:
Non-rivalrous consumption
Non-excludable
o Because its a public good, it is likely to be under-produced by the market,
without protection
Assumptions:
o (a) the public benefits from the creative activities of authors, and
o (b) a copyright monopoly is a necessary condition for obtaining these
public benefits by inducing authors to create desirable public goods.
Copyright law necessary to solve the public goods problem
o Provides a legal entitlement to the copyright owner to exclude others from
enjoying certain benefits of the work author can recoup her investment
in the creation of the work
o Prevents underproduction of creative works
o Utilitarian rationale exists to provide a marketable right for the creators
and distributors of copyrighted works, which in turn creates an incentive
for production and dissemination of new works
But depends on the rights being strong enough and the technology
that's available in order for this to work properly

7
 Copyright paradox:
o We permit monopoly in order to benefit the public by ensuring access to
all sorts of author's works
o But we simultaneously limit monopoly because of the worry that the
monopoly will itself harm the public
In instrumentalist accounts, the scope of the public domain is unstable
o Overly dependent on whether cr expansion can be shown to promote the
public interest
Possible harms of monopoly:
o How might monopoly harm the public interest?
o The monopolist can:
Limit public access undermines creativity (builds on prior work)
Make it more expensive
Limited times:
o Constitutions limited times means that the public domain is a central
part of American copyright, along with protection.
o Key point: Protected works ultimately become a source of creativity for
future generations.
Challenges of incentive theory: If were looking to define the level of protection
that will induce the optimal level of creative production:
o How do we define the socially optimal level of creativity? (Do we need
to?)
o How do we assess what is the minimum level of protection necessary to
induce such output so we dont over-protect?
Can we do so with empirical certainty?
o Instability -- new uses and new technologies continuously force us to
reconsider the balance.
o Copying can involve more than just bald piracy.
Where do we draw the line between inspiration and impropriety?

Author's rights
Granting exclusive rights to authors of creative works is morally required
o Popular belief in Europe
o Protects certain non-economic interests of authors
Rights to prevent distortion, destruction, or misattribution
Creative works seen as the external embodiment of authorial personality or will
Not instrumentalist approach: Authors are entitled to the exclusive use of their
creative work as a moral matter
o Key focus: individual author (rather than the public)

8
 Justifies stronger property rights in the objects that are more closely bound up
with one's sense of personhood
Locke, Kant, Hegel
Strands
o Author's natural rights
Hegelian
"To every cow her calf"
Protection of cr is protecting the dignity of the author himself the
creative work protected as a manifestation of the authors being
o Author's labor
Locke
Author's labor gives rise to ownership of tangible property
Alternative strand
Authorship as act of communication
o Abraham Drassinower
o A third way between instrumentalism and classical author's rights
o CR only protects authorship as the communicative act of speaking in one's
own voice
o Infringement is compelling another's speech
o Technical and personal uses are completely permitted because they are not
communicative acts
Difficulties posed by authors rights theories
o What is individual authorship? Is the author dead?
o Whats so yourself about your stuff? ber-commodity fetishism?
o Why should creators get value for their labor in this context rather than
any others?
Potentially undue authorial control
o Gone with the Wind and The Wind Done Gone

Expression and Democracy

Netanel: copyright as supporting democratic civil society
Ladd: copyright supporting uncensored marketplace of ideas with diversity of
voices and copyright industries independent of government

Public domain
Foundational principles of the US copyright system
Includes works for which copyright protection has expired
When a work is not subject to copyright protection:
o Lack of eligibility for protection, lapse of protection

9
 Means that everyone can copy it whenever they want without IP sanction
But a lot of copyrighted works contain public domain elements
The relationship between copyright and the public domain is relational

Users' rights
Copyright law can't encourage authors to create new works if it imposes undue
burdens on readers
Scholars and policymakers should ask how much latitude the user needs to
perform her functions most effectively, and how the current entitlement structure
of copyright law might change to accommodate that need

Limitations on copying (Hardy)

Entitlement-like protection
o Informational products have an owner who has some rights that would be
violated by unauthorized copying of the product
o Copyright
o Sui generis statutory protections
Legislation that is outside of the scope of copyright itself
Contract-like protection
o Access agreements
o Norms
State-of-the-art limitations
o Copying costs
o The difficulty involved with actually copying the work
o When the technology changes and makes it easy to copy it, then there is
pressure
Special-purpose technical limitations
o Self-help measures by the owner
o There has been a fundamental shift from ownership to licensing
Hardy believes that these provide some assurance to information providers that
there will be just limited copying of their works
Balance in the copyright pie: are there any slices of the "pie" that might be more
attractive to producers of different products?

10
The History of U.S. Copyright Law
US copyright law started with England
o When the printing press was invented, the booksellers obtained a
mechanism for preventing non-members from publishing works owned by
members by assisting in the censorship desired by the Crown
Government was looking for censorship
Printers made sure that no books were printed that criticized the
Crown
o Later, Statute of Anne (first English copyright statute) granted authors the
right to control the publication of their writings wanted to encourage
"learning"
Framers learned from England and expressly incorporated the requirement that
copyright must serve a public purpose in the wording of the IP clause
o "to promote the progress of science and useful arts"
o But also makes explicit the guarantee of a public domain: exclusive right
is only granted for a limited time
Wheaton v. Peters SC rejected any kind of common law copyright in published
works copyright in such works is governed exclusively by the federal statute
adopted by Congress
Early U.S. developments
o Public purpose drafted into Constitution
o Copyright acts enacted starting in 1790
Maps, charts and books,
Engravings, etchings and prints,
Musical compositions,
Dramatic compositions,
Photographs,
Paintings, drawings, chromolithographs, statuary, fine arts models
Motion pictures
Sound recordings
o Increasingly expanding in response to technological developments
1909 Copyright Act
o Copyright hinged on publication
o Maximum possible duration of 56 years from publication
o Very easy to lose copyright protection
o Relevant statute for 70-odd years
The current Copyright Act covers a much greater variety of creative output than
the original in 1790 accounts for new forms of creative expression and new
technologies for disseminating creative products
o Publication is less important what's important now is fixation

11
 o Doesn't list things that are covered like the 1909 Act
But now it's harder for things to go into the public domain
The 1976 Act's legislative process involved a purposeful inclusion of
representatives of those with economic interests in copyright
o The traditional copyright industries as well as new intermediaries continue
to be invited to the legislative bargaining table
The US was once a major pirate of foreign copyrighted works
o Now a copyright maximalist and enforcer
Complexities entailed by internationalization
o The growing role of international treaties and institutions:
Shift in US position from literary pirate to promoter of global
adherence to copyright norms
Evidence: Membership in Berne Convention, central role
in TRIPS
Limits: Minimal approach for Berne implementation
o Signal importance of WTO as interpreter and enforcer of international
agreements

12
The Subject Matter of Copyright
Copyright protects only original works of authorship fixed in a tangible medium
No facts, ideas, methods, or processes

Requirements for Copyright Protection (Elements)

Fixed in a
Original works
tangible
of authorship
medium

No facts, ideas,
methods,
processes

Congress has broad leeway in defining the terms in the IP clause

o Congressional decision about which "writing" gets cr protection is
primarily one of policy
Costs involved with granting exclusive rights:
o Cost of administration isn't very high, but enforcement cost can be steep
o Results in deadweight losses because creators price above the marginal
cost for their works
102 establishes three requirements: "fixed" in a tangible medium of expression,
"original work of authorship," and cr protection will not extend to ideas,
procedures, etc.

Fixation
No matter how original your creative work is, it's not copyrightable unless
it's fixed
o European law isn't like this
Congress saw its definition of fixation as designed to accommodate new
technologies
When a work's embodiment in a copy or phonorecord is sufficiently permanent or
stable to permit it to be perceived for a period of more than transitory duration
(101)
o Phonorecord is kind of like a copy but about sounds
There are only two types of media in which a work may be fixed: copies or
phonorecords
Initial approach to fixation: tied to the medium in which the work was fixed
o White Smith Publishing Co. v. Apollo: SC held that to be protected, a
work must be embodied in a form from which it could be perceived
without resort to mechanical means

13
 o 1976 Act: Shifted this approach and made irrelevant how and in what
medium the work was fixed
Fixation is broad to avoid rights being made to depend upon the form or medium
in which the work is fixed
o But 1976 Act didnt cover live performances and broadcast transmissions
Resulted in two situation-specific fixation rules
Broadcasting: fixation contemporaneous with transmission
o Content of a live transmission is protected if it's
being recorded simultaneously with its transmission
Bootleg recordings: Section 1101(a) enacted in response to
TRIPS, which requires protection for live musical
performances
The definition of fixation is seen as flexible enough to address commercial reality
and international obligations in some circumstances
Some people believe that fixation is a constitutional requirement derived from
"writings" in the IP clause
o Also want evidentiary benefits
Fixation in comparative perspective
o U.S. unique in its fixation requirement
o Europeans require work to be in a form that others can perceive, but not
necessarily fixed
Policy behind fixation
o Constitutionally required b/c of the constitutional reference to writings?
o Evidentiary benefits in infringement actions?
o Avoiding unreasonable liability?
o Ensuring that whats protected by cr is capable of being consumed?
o Evidence of commercial importance of work?
Audiovisual works are:
o Works that consist of a series of related images which are intrinsically
intended to be shown by the use of machines 101

Williams Electronics v. Arctic International (3rd Cir. 1982)

Facts: P made a video game machine and had three copyright registrations
relating to it: one for the computer program, and the others for the audiovisual effects
displayed during each the play and attract mode. D sold a circuit board kit that when
connected, would produce audiovisual effects and a game almost identical to P's game.
Holding: Here there is fixation because the original audiovisual features of the
game repeat themselves over and over
The memory devices of the game satisfy the statutory requirement of a "copy" in
which the work is "fixed"
The audiovisual work is permanently embodied in a material object from which it
can be perceived with the aid of the other components of the game
Although player interaction can change what happens in the game, there's always
a repetitive sequence of a substantial portion
Notes:

14
 If the court had come out the other way, the video game industry would be very
different today
Mai Systems Corp. v. Peak Computer Inc. (pg. 58)
o Routine copies made in uploading software to RAM for repair purposes.
o Court holds that the copies are fixed.

Cartoon Network v. CSC Holdings (2nd Cir. 2009)

Facts: D, a cable-television operator, planned to implement a new digital-video
recorder (DVR) system that would allow customers to record cable-television programs
on remote hard drives managed by Cablevision. The system would be known as Remote
Storage DVR (RS-DVR) and would require small segments of each cable program to be
sequentially reproduced during a buffering process prior to storage. These segmented
copies would exist for no more than 1.2 seconds before being placed into storage.
Holding: The buffer data is not a copy of the original work whose data is
buffered Two requirements: (1) the work must be embodied in a medium, and (2) it
must remain thus embodied for a period of more than transitory duration
The buffer data is embodied in the buffer, but no bit of data remains in any buffer
for more than 1.2 seconds
The data here is rapidly and automatically overwritten as soon as it is processed
Notes:
Are Cartoon Networks and MAI consistent?
o Are they consistent in the way they view duration?
o If not, which is better policy?
This case was closely watched by those in the industry. The RS-DVR service
was controversial, and the implications of the appeals court decision are still
debated. Cartoon Network was relied on heavily in Justice Scalia's dissent in the
2014 Supreme Court case ABC v. Aereo.

Originality

Burrow-Giles
Associated Ends up at
and Bleistein:
with fine arts Feist
radical change

15
 1790 Act

Maps, charts and books

1909 Act

All the writings of the author

1976 Act

Original works of authorship

Must be an "original work of authorship"
Unlike fixation, nearly all countries require some level of creativity as a
prerequisite for copyright protection
Doesn't make sense to grant exclusive rights to someone who just copies
exclusive work, but it's difficult to quantify originality
Three plausible standards for copyright eligibility
o Originality in the sense of independent origination or non-copying
o Creativity in the sense of some modest level of imagination or escape from
the commonplace
o Novelty or invention in the sense of a leap beyond prior art that would not
be obvious to a person skilled in that art
Similar to patent law

Classic cases
The courts originally found an originality requirement implicit in the statutes and
in the underlying language of the constitutional grant of authority to enact cr laws
o Wasn't an express requirement at first

Burrow-Giles Lithographic Co. v. Sarony (S.C. 1884)

Facts: Sarony filed a copyright infringement suit against Burrow-Giles for
reproducing a photograph of Oscar Wilde. Burrow-Giles argued that a photograph isn't a
writing of which the producer is the author, and thus Congress did not have the power to
protect pictures under the IP clause.
Holding: This photograph is covered by copyright protection because it is an
original work of art, the product of P's intellectual invention, of which P is the author, and
of a class of inventions for which the Constitution intended that Congress should secure
exclusive rights. Photographs are copyrightable so far as they are representatives of
original intellectual conceptions of the author
Photographs weren't included in the list in the act of 1802 because photography as
an art then was unknown

16
 The Constitution is broad enough to cover an act authorizing copyright of
photographs, so far as they are representatives of original intellectual conceptions
of the author
The author here didn't just manually operate the camera, he put a lot of work into
posing and costume, and accessories, and light.
Notes:
Incorporates photography into copyright on the basis of analogical originalism
Uses language of creativity taken from the findings of the court below both as
to the photograph itself and the process of its creation
o Ironic result: language of high authorship used to justify copyrightability
of mass market creativity
Process can be creative too
Justice Miller says he is not ruling on the copyrightability of the ordinary
production of a photograph.

Bleistein v. Donaldson Lithographing Co. (S.C. 1903)

Facts: P was a company hired by a traveling circus, to design chromolithographs
used to produce posters to promote the circus. The posters featured images from the
circus, such as ballet dancers and acrobats. When D ran out of posters, rather than
ordering more from P, D hired a competitor of the P to manufacture copies of three of
those posters.
Holding: The P's have rights entitled to the protection of the law; Others are free
to copy the original, they are not entitled to copy the copy. The copy is the personal
reaction of an individual upon nature
The advertisements were chromolithographs Pictorial illustrations even though
they're created for the purpose of advertising
Don't want to judge cr protection by looking at who the audience is or trying to
judge whether something is of little merit or high pictorial quality non-
discrimination principle
These pictures had their worth and their success sufficiently shown by the desire
to reproduce them without regard for P's rights
Notes:
Despite the personality language, it seems that Holmes is saying that the real
test of the value of a work is whether it has commercial value
o Ds copying is itself the proof bootstraping
When judges try to make aesthetic judgments, they're going to potentially skew
the market
Doctrine-shifting moves
o Arguments from content neutrality
o Market concept of value
o Stance of judicial abdication
Non-discrimination principle:
o Doesnt it resonate with general concepts in our legal culture that no one
should be in a position to judge anothers values?

17
 o At the same time, doesnt it exert pressure on the originality standard
driving it inexorably lower?
From Burrow-Giles to Bleistein
o Commonality: Expansion of the scope of copyright law from works of fine
art to mass and commercial art
o Difference: BG emphasizes the author while Bl focuses on the works
Non-discrimination argument but "narrowest and most obvious
limits" back-door
Significant expansion of cr protection
Market-oriented, anti-subjective approach
o 19th century saw ascendancy of market conception of value
Judicial role shifted from judges as prudent promoters of beneficial social policies
to judges as agents of an apolitical and neutral discipline

Alfred Bell & Co. v. Catalda Fine Arts, Inc. (2nd Cir. 1951)
Facts: Bell was making 'mezzotint' copies of public domain paintings by old
masters. Basically, to make a mezzotint, an artist traces a photograph of a famous work of
art and engraved the tracing onto a printing plate to make reproductions. Catalda began
reprinting some of Bell's mezzotints. Bell sued for copyright infringement.
Holding: "Original" in reference to a copyrights work means that the particular
work "owes its origin" to the "author" Did the author contribute more than trivial
variation?
No large measure of novelty is necessary
A copy of something in the public domain will support a copyright if it is a
distinguishable variation
P's mezzotints could by protected by cr even though they're reproductions of a
work of art
Originality: little more than a prohibition of actual copying
o Originality vs. origination
Reasoning:
The Constitution has different standards for patents and copyrights
The author just needs to have contributed something that is more than a merely
trivial variation, something that is recognizably his own
The mezzotints were a version of the work of art they reproduced, not an
imitation
Notes:
Focus is entirely on:
o Effectively the audience. Because the focus is on whether they can
discern the distinguishable variations.
o The author herself has been effaced completely. Just the work is what is
compared.

Patent vs. Copyright Originality

Why is the standard for originality so much lower in copyright than in patent?
Why is independent creation treated so differently in patent and copyright?

18
 o Maybe if patented works are more expensive to develop than copyrighted
works? (Burk)
o Maybe because theres a different trade-off between quality and quantity
in the two areas? (Goldstein)
o Maybe because were worried about censorship and control over
expressive works in the copyright context only?
o Maybe because we think of copyright as about communicative acts, which
depend principally on independent creation and not high originality?

Cost of law originality standards

Are low requirements of originality inconsistent with incentive theory?
o Works made for low cost
o Works compensated in non-economic ways
o Advertisements
From the utilitarian point of view
o Deadweight loss: protecting works that would have been created anyway
and works that arguably add no measurable value to the store of created
expression
o Is this a worthwhile trade-off for the public in light of what copyright
ownership confers on owners?
o But is there an efficient way to identify and exclude low originality
works consistently w/ the non-discrimination principle?

Establishing the Modern Originality Standard

The intent of the 1976 Act was to avoid "exhausting the constitutional power of
Congress to legislate in the field" of copyrightable subject matter
"Original works of authorship" was intended to incorporate without change the
standard of originality established by the courts under the 1909 Act.
o "Doesn't include requirements of novelty, ingenuity, or esthetic merit, and
there is no intention to enlarge the standard of cr protection to require
them"
o The task of interpreting the scope of the statutory grant of cr protection
was once again left to the courts
The modern definition of "originality requires more than mere independent
creation, but not much more

Feist Publications, Inc. v. Rural Telephone Service Co. (S.C. 1991)

Facts: Both F and R made telephone directories. R refused to license its smaller
directory to F, so F copied its listing, adding addresses to some of the listings.
Holding: R's compilation doesn't meet the minimum standards for cr protection.
The white pages are entirely typical, devoid of even the slightest trace of creativity
But the originality threshold is low
Facts are not copyrightable
o Because a work must be original to the author independently created
o Facts do not owe their origin to an act of authorship
Compilations of facts are generally copyrightable

19
 o May possess the requisite originality
o Author makes choices as to selection and arrangement
CR assures authors the right to their original expression, but encourages others to
build freely upon the information and ideas conveyed by a work
o The point isn't to reward the labor of authors, but to promote the progress
of science and useful arts (rejects sweat of the brow)
CR is not a tool by which a compilation author may keep others from using the
facts or data he has created
Notes:
Applies generally, not only in the context of compilations
Originality explicitly described for the first time as a constitutional requirement
Narrow definition of originality:
o Facts original
o They dont owe their origin to a work of authorship (but are discovered
instead)
When can fact-based works be sufficiently original?
o When they are fact compilations that satisfy two criteria:
1) Independent creation by the author (non-copying)
2) possessing at least some minimal degree of creativity
the requisite level of creativity is extremely low; even a
slight amount will suffice. . . . [Whats needed is] some
creative spark, no matter how crude, humble or obvious
Whats potentially creative in fact compilations?
o Selection of content, order and arrangement in compilations of facts.
High art vs. sweat of the brow
o Parallel jurisprudence since 1920s, when Learned Hand articulated social
benefit rationale for sweat of the brow copyright
Rejected by Feist.

Some Contemporary Originality Problems

Mannion v. Coors Brewing Company (2006)
Facts: D used a photograph in a billboard that looked exactly like a close up of a
photograph done by P. D used a different model but it all looked very similar.
Holding: If a photographer arranges or otherwise creates the subject that his
camera captures, he may have the right to prevent others from producing works that
depict that subject Garnett Original photograph: unusual angle, lighting, composition
orchestration of the scene
Protection derives from features of the work itself, not the effort that goes into it
Three aspects in which a photo may be original:
o Originality in rendition: originality which doesn't depend on creation of
the scene or object, and resides in the specialties of how it is depicted:
shade, exposure, filters
o Originality in timing: a person may create a worthwhile photograph by
being at the right place at the right time
Limited by the principle that cr in a photograph ordinarily confers
no rights over the subject matter

20
 o Originality in the subject: the photographer created the scene or subject to
be photographed
CR protection over the subject matter
o In both rendition and timing, the image that exhibits the originality, but
not the underlying subject, qualifies for cr protection
Notes:
Highly orchestrated images enjoy greater protection
Focus on the entire image
There are limits to how far the cr in the subject that you create exists
o The person (Garnett) is not created by this image Can't say that nobody
can take pictures of him
o Have to look at the entire image, not the individual components
Should cr protection be this broad? Provides an expansion justification for
protectable originality
The nature and extent of a photographs protection differs depending on what
makes that photograph original

Meshwerks, Inc. v. Toyota Motor Sales USA Inc. (10th Cir. 2008)
Facts: D hired P to make computer-animated versions of its cars to be used in
advertisements. P used measurements to create the images, but then used 80-100 hours of
work in which they had to manipulate the data points. P asserts that it only authorized D
to use the images one time.
Holding: P's models are copies of Ds cars, not independent creations
P's models depict nothing more than un-adorned Toyota vehicles
P had nothing to do with designing the cars or even the advertisements
To decide if something is original, look only at the final product, not the process
Labor does not equal cr protections
Notes:
Levi thinks that this is a wrong decision
o How is this different from pencil drawings of real things?
o Does the intent of the creator have salience?
Is this inconsistent with Feist?
Should we consider intent when deciding on originality?

Garcia v. Google (2016)

Facts: Actress in anti-Muslim film sued to have the film taken down from
YouTube on the ground that her performance was a copyrightable work which she did
not authorize to distribute. The film led to anti-American riots in the Muslim world, and
death threats to the actress herself. The 9th Cir. initially issued an injunction requiring the
take-down of the film. The injunction was ultimately reversed en banc by the 9th Cir.,
with a blistering dissent from Kozinski (who had authored the panel decision)
Holding: Treating every acting performance as an independent work would not
only be a logistical and financial nightmare, it would turn cast of thousands into a new
mantra: copyright of thousands.

21
 The 9th Cir. en banc held that, as Google claimed, Garcias copyright law would
result in the legal morass we warned against in Aalmuhammed--splintering a
movie into many different works, even in the absence of an independent
fixation. Simply put, as Google claimed, it make[s] Swiss cheese of copyrights.
Notes:
Some have said that Garcia is an example of a plaintiff trying to engage in
copyright misuseusing copyright for non-copyright reasons.
Would recognizing copyright here enable a mismatch of the plaintiffs goals
(eliminating death threats and harm to reputation) and the copyright systems
goals (stimulating creative expression, not protecting privacy/secrecy)?
Is the problem here that there is a fundamental First Amendment problem with the
remedy sought: taking down a politically controversial film?

The Idea/Expression Dichotomy

Cr protection does not extend to any "idea, procedure, process, system, method of
operation, concept, principle, or discovery" 102(b)
o Regardless of the form in which it is described, explained, illustrated, or
embodied in such a work
Similar in many countries and in the TRIPS
An idea can never be copyrightable, but its expression may be metaphor
o Ensures robust public domain where others can use same ideas and create
other expression
102 has two purposes
o Defines the line between what is eligible for cr protection and what
belongs to the public domain
o Defines the line between copyrightable and patentable subject matter
Granting cr protection for these items would be counterproductive
A metaphor, not a doctrinally describable thing Not a definition

The Classic Case

Baker v. Selden (S.C. 1879)
Facts: Selden (P) copyrighted a book in which he used an introductory essay
explaining his system of bookkeeping followed by forms to put the system to use. He
had arranged the columns and headings so that the entire operation of a day, week or
month was on a single page or on two pages facing each other. Baker (D) then began
selling forms with columns and headings arranged differently to achieve the same result.
Holding: The copyright protection for a book explaining an art or system extends
only to the authors unique explanation of it and does not prevent others from using the
system or the forms incidentally used
While others could not copy his book, they were free to use the system he
described in his book
To find that a copyright protected against use of the system itself or the forms
necessary to such use would be to grant protection similar to a patent without
requiring a showing of novelty.

22
 Copyright is based on originality, not novelty, and protects the explanation of the
system and not the use of the system.
Notes:
"The description of the art in a book lays no foundation for an exclusive claim to
the art itself"
Mulitple lines of authority derived from this case
o Uncopyrightability of blank forms
o Uncopyrightability of functional works
o Uncopyrightability of systems
o Merger doctrine:
Some courts describe the doctrine formally: when only one way to
express idea, idea & expression have merged
Other courts recognize theres always more than one way to
describe something, but that public policy supports merger in
situations where the expressive possibilities are limited
Would giving cr protection in this case give cr protection to the
idea? If yes, then it has merged

Merger Doctrine and Thin Copyright

Merger Doctrine: where only one or a limited number of ways exist to express
an idea, the idea and expression merge, and copyright cannot be used to prevent
another from using the same or similar expression
o Commands universal agreement, but courts differ in the way they apply it
o Some decisions treat merger as a bar to copyrightability
Thin copyright: there are more than a few ways to express an idea, but the scope
for variation is quite limited
o A court may conclude that the particular expression is copyrightable, but
that the scope of the copyright is so thin that infringement only occurs in
the case of a virtually identical copy
202.1 Material not subject to copyright protection (pg. 97)

Complications
Systems and processes are uncopyrightable.
Many industries develop new methods to classify information.
Should such organizational systems by copyrightable?
o Only when especially creative?
o Or not even when especially creative, b/c theyre a system or process?

A.A. Hoehling v. Universal City Studios, Inc. (2nd Cir. 1980)

Facts: P wrote a historical account of the Hindenburg explosion. D wrote a
literary book re: the same event and admitted that he used P's book for some factual
material. Then, D sold the motion picture rights to Universal D who created a movie
based on author D's book. P claims that both D's copied the plot of his book.
Holding: The scope of cr in historical accounts is narrow, embracing no more
than the author's original expression of particular facts and theories already in the public

23
domain while Ps ideas themselves arent subject to cr protection, his expression of
his ideas are
Absent wholesale usurpation of another's expression, claims of cr infringement
where works of history are at issue are rarely successful
Where the idea at issue is an interpretation of an historical event, the
interpretation is not copyrightable
Public benefit in encouraging the development of historical and biographical
works and their public distribution
Scenes a faire: incidents, characters, or settings which are as a practical matter
indispensable or standard in the treatment of a given topic
o Not copyrightable
Notes:
Factual information is a part of the public domain
Scenes a faire: not literally necessary to express the idea, but which the audience
has come to expect
o Does it apply in the same way to other areas? Software?

ATC Distribution Group, Inc v. Whatever It Takes Transmissions &

Parts, Inc. (6th Cir. 2005)
Could there be material that qualifies for cr protection under 102(A) because it's
sufficiently original, but that is excluded by 102(b)?
Facts: P purchased a firms' assets, including a catalog with illustrations and a
numbering system for transmission parts. D, a former employee of the firm, formed his
own firm and developed his own catalog.
Issue: Should organizational systems by industries be copyrightable?
Holding: Not copyrightable all creative aspects were ideas, lack of originality,
merger doctrine
Classification schemes can in principle be creative enough to satisfy the
originality requirement
o Only a bare minimum amount of creativity is required (Feist)
o At least some of P's decisions are non-obvious choices (Matthew Bender)
But original and creative ideas are not copyrightable and all of P's aspects of the
classification scheme are just ideas
Cr protection of the expression of P's ideas is barred by the merger doctrine: when
there's only one way to express an idea, the idea and its expression are inseparable
and cr is no bar to copying the expression
The mere fact that numbers are attached to categories and descriptions that are
copyrightable doesn't render the numbers themselves copyrightable
Notes:
Policy considerations seem important (page 108)
Held differently when the ADA sought protection for its Code that classified
dental procedures into groups and had descriptions for each procedure
o Policy reasoning: ADA is seeking standardization so dentists do not over-
charge patients

24
Form vs. Function: Useful Articles, Architectural Works, and Software
Various tests developed by the courts to determine whether certain kinds of
creative works that are also functional satisfy the requirements for
copyrightability
102: pictorial, graphic, or sculptural (pgs) works are generally copyrightable if
they satisfy low threshold of originality
101/113: useful articles not copyrightable, but
o 101: separable elements of the useful article can be copyrightable if they
meet the standard
Boundary between
o Uncopyrightable works of industrial design and
o Copyrightable works of applied art
o Because of excessive cost to consumers of necessary objects, monopoly
fears: concerns about promoting competition, the widespread availability
of quality products, the advancement of technology
PGS work?
o No apply originality and fixations requirements as usual
o Yes Is it a useful article?
Yes apply separability analysis

25
Useful Article with Pictorial, Graphic, and Sculptural Dimensions

PGS work?

Yes No

Apply originality
and fixation req.'s
Useful article?
for particular
subject matter

Yes No

Separability?
Apply usual
(physical or
requirements
conceptual?)

Yes No

Separable
elements Nothing to
copyrightable if copyright
original and fixed

3-dimensional works of art that are original and fixed are copyrightable
o Does eligibility for cr change when the work is incorporated into a product
with utilitarian function?
Depends on the extent to which a product's expressive aspects are
separable from its useful ones (separability requirement)

26
The Classic Case
Mazer v. Stein (S.C. 1954)
Facts: P created statuettes that were used to create lamp bases. D copied the
statuettes and sold their own lamps with the copies.
Issue: Does an artist have the right to copyright a work of art intended to be
reproduced for "mass" production?
Holding: Yes, even though it was reproduced for mass production, still
copyrightable
"Works of art" and "reproductions of works of art" are terms that were intended
by Congress to include the authority to copyright these statuettes
The encouragement by personal gain is the best way to advance public welfare
through the talents of authors and inventors in science and useful arts
o Incentive theory?
No more distinctions between purely aesthetic articles and useful works of art
o Sets up PGS thought for the way it is now
Notes:
Consistent with nondiscrimination principle

Defining Useful Articles and Determining Separability

It's a PGS work only to the extent that the design incorporates PGS features that
can be identified separately from, and are capable of existing independently of,
the utilitarian aspects of the article (101)
Useful article: "an article having an intrinsic utilitarian function that isn't merely
to portray the appearance of the article or to convey information (101)
Extra test of "separability": unless the shape of a utilitarian object or industrial
product contains some element that physically or conceptually can be identified as
separable from the utilitarian aspects of that article, the design would not be
copyrighted
o Even if it contains such an element, cr protection would extend only to
that element, and would not cover the over-all configuration of the
utilitarian article
Physical separability:
o What would be the effect of limiting PGS protection to physically
separable aspects of useful works?
One court took the position that the only kind of separability courts
should look for is physical separability.
Does this standard discriminate against modern design?
Conceptual separability:
o A pictorial, graphic, or sculptural feature satisfies [the conceptual
separability] requirement only if the artistic feature and the useful article
could both exist side-by-side and be perceived as fully realized, separate
worksone an artistic work and the other a useful article.
Copyright Office approach

27
Pivot Point International, Inc. v. Charlene Products, Inc. (7th Cir. 2004)
Conceptual separability
Facts: D copied a mannequin head that was similar to P's mannequin head. P
created the products to be used for the hair design industry. The design was original and
created by an artist
Holding: If an article isn't "useful" then it's a PGS entitled to cr protection
(assuming the other requirements are met) Mara (the mannequin head) is useful,
continuing with the lower court's decision
Physical separability isn't the exclusive test for determining cr protection
Can also get cr protection when a conceptual separability exists between the
material sought to be copyrighted and the utilitarian design
Conceptually separable when:
o The artistic features are primary and the utilitarian features subsidiary
o The useful article would still be marketable to some significant segment of
the community because of its aesthetic qualities
o The article stimulates in the mind of the beholder a concept that is separate
from the concept evoked from its utilitarian function
The Mara face is subject to cr protection
o Can be conceptualized as existing independent from its use in hair display
or make up training because it's the product of the artist's artistic judgment
No evidence that the artist was constrained with specific dimensions or
measurements could implement the vision as he saw fit
Dissent: To be copyrightable, the statute requires that the useful articles
functionality remain intact once the copyrightable material is separated. If we took
away Maras facial features, her functionality would be greatly diminished or eliminated,
thus proving that her features cannot be copyrighted
Notes:
Something that is not a useful article doesn't need a separability analysis
Process-oriented rhetoric but then the court backs away from it in the application

Kieselstein-Cord
Judgment of elite institutions and use in non-functional ways

Barnhart
Ordinary use as viewed by the average observer

Barnhard dissent
Temporal displacement/ordinary observer approach

Nimmer (not 2nd Cir.)

Marketability

Brandir/Pivot Point
Aesthetic choices unconstrained by utilitarian concerns
Creator-oriented, others are consumer/market oriented

28
Varsity Brands v. Star Athletica (6th Cir. 2015)
Facts: P has cr protection for its graphic designs on its cheerleading uniforms and
warm-ups. P sued D for selling uniforms with substantially similar designs. D claims that
D isn't entitled to cr protection because the designs are designs of "useful articles"
Holding: The graphics are entitled to cr protection. When creating these designs,
the designers do not consider functionality of the uniform or the ease of producing a full-
sized uniform that looks like the sketch
The graphics are entitled to cr protection
When creating these designs, the designers do not consider functionality of the
uniform or the ease of producing a full-sized uniform that looks like the sketch
Need to ask before addressing separability: What are the utilitarian aspects of the
useful article?
Can the viewer of the design identify pictorial, graphic, or sculptural features
separately from ... the utilitarian aspects of the [useful] article[?] 17 U.S.C.
101.
o If the viewer cannot identify pictorial, graphic, or sculptural features
within the design of the useful article, then the design of the useful article
is not copyrightable
Can the pictorial, graphic, or sculptural features of the design of the useful
article exist independently of the utilitarian aspects of the [useful] article[?]
o If the pictorial, graphic, or sculptural features of the design of the useful
article are not required by [the useful article's] utilitarian functions or
are wholly unnecessary to performance of the utilitarian function of the
useful article, then the pictorial, graphic, or sculptural features are not
dictated by the function of the useful article, and therefore can exist
without the useful article.
The graphic designs do not enhance the function of the cheerleading uniform and
not all cheerleading uniforms need those graphics as evidenced by the five
completely different uniforms that P got cr protection for
Notes:
Cr registration made before or within five years after first publication of the work
presumption of validity that can be rebutted give deference (Skidmore)
depending on the reasoning and validity of that reasoning has expertise
One theory: Aspects of garment designs are functional if they affect the
perception of the wearers body (not just cover it or keep it warm) (Buccafusco &
Fromer)
o Broader, interactive interpretation of function
o So Varsity Brands chevrons and stripes would be functional and not only
aesthetic choices, because they are designed to achieve certain effects on
the appearance of the body wearing them.

29
Two Special Cases: Derivative Works & Compilations
103 accords cr protection to two special types of works: compilations and
derivative works
(b) extends only to the material contributed by the author of such work
o Doesn't imply any exclusive right in the pre-existing material
Note: Works can qualify for protection under more than one category

Derivative Works
Broad definition that encompasses any work based on or derived from another
work (101)
o Doesnt indicate the extent to which a derivative work should be
distinguishable from the underlying work to justify a separate copyright.
Cr in a derivative work subsists only in the new material contributed by the author
of the derivative work
A work based on one or more preexisting works,
o such as a translation, musical arrangement, dramatization, fictionalization,
motion picture version, sound recording, art reproduction, abridgement,
condensation, or
o 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.

L. Batlin & Son, Inc. v. Snyder (2nd Cir. 1976)

Facts: A manufacturer produced some metal piggy banks that had the character of
Uncle Sam on them. The manufacturer eventually stopped production and the design fell
in the public domain. Snyder produced a plastic version of the Uncle Sam bank. It had
slight design changes, and was made of plastic instead of metal, but it was very similar.
Snyder registered a copyright of his design. Batlin, a competitor, produced metal Uncle
Sam banks that were similar to both Snyder's version and the original version. Snyder
told Batlin to stop violating his copyright, and Batlin sued to have Snyder's copyright
declared invalid.
Holding: Not copyrightable to extend cr protection to miniscule variations
would allow copiers intent on appropriating and monopolizing public domain works a
tool for harassment
The plastic didn't require much creativity (substantial originality) or a faithful
reproduction (exactitude)
The test of originality is one with a low threshold (Alfred Bell)
Distinguishable variation of something in public domain supports cr protection
The reproduction must contain an original contribution not present in the
underlying work of art and be more than a mere copy
A considerably higher degree of skill is required to make the reproduction
copyrightable (here two days of work is not enough)
Notes:
Whats needed is some substantial variation

30
 Is this the same kind of originality standard seen in Feist?
Gracen v. Bradford Exchange: The purpose of originality is to assure a
sufficiently gross difference between the underlying and the derivative work to
avoid entangling subsequent artists depicting the underlying work in copyright
problems.

High standard of originality in derivative works

Rationales
o Proof problem distinguishing among subsequent derivatives
o Increased transactions costs
o Double payment re: works in public domain
Problems with higher standard:
o Consideration of artistic merit
o Paradox as to what gets most protected
o Why worry about future derivative work makers?
o Is double payment rationale relevant to underlying works still in their
copyright term?

Schrock v. Learning Curve International, Inc (7th Cir. 2009)

Facts: D hired P to take product photographs of its toys for use in promotional
materials. D continued to use the photos in printed advertising, packing, and on the
internet after it stopped using Ps services. Ps invoices to D included usage restrictions
restricting the use of the photos to two years. P alleges that producer of Thomas the Tank
Engine toys had exceeded its license to reproduce and distribute Ps photographs of the
toys. D states that: P had no copyright to infringe because the photographs lacked
sufficient originality.
Holding: Assumes that the photos are derivative works; Derivative works
standard of originality shouldnt be higher than ordinary test for originality, but there
has to be some non-trivial variation that will distinguish derivative work from the
underlying work in some meaningful way shift in medium alone isnt enough
Originality: photographer used a lot of creativity to make the photographs his own
o Positioned the toys in a specific way, used different cameras and lighting
to make the toys look more lifelike
o The purpose of the photographs is irrelevant (Bleistein)
o Same standard of originality for derivative works
Authorization: the author of a derivative work must have permission to make the
work from the owner of the cr in the underlying work
o Does not require permission to copyright it
Notes:
Goldstein alternative approach: that point at which the contribution of
independent expression to an existing work effectively creates a new work for a
different market right to prepare a derivative work
Courts differ on whether photographs should be considered derivative works of
what they depict (pg. 119)

31
 Shrock holds that lawful use requirement can be satisfied by a showing that the
second comer had permission to create a derivative work, and doesnt require an
additional showing of permission to assert a derivative copyright.
o Is this the right policy? (Q 5 p. 119)

Compilations
A work formed by the collection and assembling of pre-existing 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
Other than collective works, almost always take the form of fact works such as
maps, directories, case reports, and historical works
Derivative works need to have underlying copyrightable work, whereas
copyrightable compilations can be created from uncopyrightable underlying
materials (facts)
Feist v. Rural Telephone
o Originality as constitutional requirement
o Rejection of sweat of the brow
o Low level of originality required for compilations
But entirely typical white pages aren't original enough
Choices as to selection and/or arrangement
Originality in fact compilations
o Inheres in selection or arrangement of factual material, per Feist
o But both arrangement and selection as originality criteria for fact
compilations are problematic
Jane Ginsburg: such claims are pretextual in fact compilations
o Is the real problem copyright preemption?

Selection, Arrangement, and Coordination of Data

Factual compilations can have the requisite originality of choices as to selection
and arrangement are made independently by the compiler and entail a minimal
degree of creativity (Feist)
Problems with arrangement criterion
o Difficult for information compilations to satisfy
o Many are likely to be organized alphabetically or chronologically
o Some arrangements will be virtually inevitable to the nature of the subject
(e.g., judicial decisions by hierarchy of jurisdiction)
o Some will be functional to the material (e.g. yellow pages)
o Somesuch as databasesmay lack arrangement precisely because they
depend on user search queries
Problems with selection criterion:
o How far beyond the commonplace must a selection be to be deemed
original?
o What about selections whose value is comprehensiveness?
o Are all selections ideas?

32
 Data compilations
o Central issues: Selection, Arrangement, Utility
o Jane Ginburg critiques selection/arrangement criteria for fact compilations
Criticizes Feist result
Findings of selection/arrangement in fact compilations are
pretextual Particularly w/r/t databases

CCC Information Services v. Maclean Hunter Market Reports (2nd 1995)

Facts: D published the Red Book projections of the values for the next 6
weeks of average versions of most of the used cars sold in that region; also provides
predicted value adjustments for various options and for mileage in 5,000 mile increments
based on professional judgment, not an equation. P provides similar information
through a computer database. P loads major portions of the Red Book onto its network
and republishes the information in various forms to its customers. P wants a declaratory
judgment that it incurred no liability to D.
Holding: The Red Book is sufficiently original for cr protection: consistent with
the goals of cr devises new and useful selections and arrangements of info that
contributes to public knowledge
Valuations depend on data sources, but also professional judgment and expertise
o Perceptions and predictions
Used car valuations are not facts Copyrightable as compilations under Feist
Are not ideas and have not merged
o Original contributions of the compiler will inevitably be ideas (e.g.,
originality in selection) designed to add to the usefulness of the
compilation for its chosen market
o But if we say that this leads to merger, there wont be any compilation
copyrights.
Notes:
Should copyright protect the items identified as protectible by the court?
What might the Baker v. Selden Court say about the copyrightability of the used
car valuations?
Could you argue scene a faire here?
Even if theres no merger and compilations are copyrightable, some compilations
have a weaker claim to protection than others.
Copyrightability should depend on what kind of idea animates the compilation
Ideas that advance understanding of phenomena or solve problems
Ideas that are infused with the authors taste or opinion.
What do you think of this distinction? Whats the court trying to get at?

Matthew Bender & Co. v. West Publishing Co. (2nd Cir. 1999)
Facts: West's star pagination was inserted into competitor's CD-ROM of the
cases. West claimed copyright infringement.
Holding: Because the volume and page numbers are unprotected features of
West's compilation process, they may be copied without infringing its cr.

33
 "West's choices on selection and arrangement can be reasonably viewed as
obvious, typical, and lacking even minimal creativity,"
Notes:
Comes out the opposite way as CCC
Court seems to be mushing together two separate things: how you get to this stuff
and how it is arranged

Selection, Arrangement, and Coordination of Elements Other Than Data

Encyclopedias, anthologies, periodical issues, and similar works are copyrightable
to the extent that they manifest originality in the selection, arrangement, or
coordination of their components

Roth Greeting Cards v. United Card Co. (9th Cir. 1970)

Facts: Roth made some greeting cards containing original illustrations and some
very common, public domain phrases (like "I Love You"). United made some cards with
their own, very similar illustrations, and the same exact phrases. Roth sued, United
argued that the illustrations were different, and the phrases were not copyrightable, so
they weren't infringing on any of Roth's rights.
Holding: Considering all elements of the cards together, the Roth cards are
original and copyrightable
Characters, mood, combination of art work conveying a mood with a particular
message, arrangement of the words
All elements have to be considered as a whole tangible expression of an idea
"Total concept and feel" of the two sets of cards were the same
Dissent: This conclusion . . . results in the whole becoming substantially greater
than the sum of its parts

Bikram's Yoga Coll. v. Evolation Yoga (9th Cir. 2015)

Holding: 9th Cir. rejects copyright in sequence of yoga poses on ground that the
sequence = uncopyrightable process or system
Irrelevant that the sequence was beautiful and made of a selection of hundreds of
poses and arrangements
Notes:
But didn't Feist say that this was okay?
Why doesn't the court look at this like an issue of compilation? Because it's not
about data?
Is Roth Greeting Cards an outlier?

Satava v. Lowry (9th Cir. 2003)

Facts: Plaintiff Richard Satava is a glass artist from California. P makes jellyfish
sculptures in the glass-in-glass medium. P has registered several of his works with the
Register of Copyrights. D, Christopher Lowry, a glass artist from Hawaii, also began
making glass-in-glass jellyfish sculptures. Ds sculptures look like Ps, and many people
confuse them

34
 Holding:
A combination of unprotectable elements is eligible for cr protection only if those
elements are numerous enough and their selection and arrangement original
enough that their combination constitutes an original work of authorship
Here falls short of this standard the elements are commonplace in glass in glass
sculpture and typical of jellyfish physiology
Notes:
Why didnt the jellyfish sculptures (paperweights?) satisfy this standard?
How would they have come out under a Roth Greeting Cards approach?

Authorship: Who Is An Author?

3 kinds of authorship recognized in '76 Act
o Sole authorship
o Joint authorship
o Works made for hire employer authorship
201 initial ownership: cr in a work protected under this title vests initially in the
author or authors of the work. The authors of a joint work are co-owners of cr in
the work
o (b) works made for hire: the employer of other person from 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 cr
The intent to merge requirement creates difficulties for works that are
collaborative and evolve over time
Note: authorship not defined in the Act

Slater v. Wikipedia (The Monkey Selfie)

Monkey cannot own the cr to the photographs

Sole Authorship
Lindsay v. Titanic (1999)
Facts: Lindsay wanted to make a documentary about a sunken ship. He tagged
along with a salvage team, and used them to help film the documentary. Lindsay created
storyboards, specified specific camera angles and shooting sequences, directed, and
produced the film. He remained on the ship while salvage divers in submarines went
down and actually shot the video. The crew of the salvage vessel later licensed some of
the footage they shot to a tv channel. Lindsay sued for cr infringement.
Holding: The Trial Court found that even though Lindsay did not hold the video
camera, he was the 'creative force' behind the video, and so was the author for copyright
purposes.
An individual claiming to be an author must show "originality, intellectual
production, thought, and conception"
"High degree of control over a film operation May be said to be an author

35
 the final footage [is] the product of Lindseys original intellectual
conception and duplicates his conceptions and visions of what the film
should look like
Notes:
Seems to be double-counting originality: looking into originality for authorship
o At first seems to be a high threshold, but then goes into "high degree of
control" doesn't equate to an original conception
Likened this decision to that of Burrow-Giles Lithographic Co. v. Sarony where it
was held that a photographer can have a copyright on a photograph even though
they didn't create the thing they were photographing
Authorship has to do with control, but it seems that also with creativity

Joint Authorship
101 Joint work: "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
Assessment of contributions, timing, and intention
Timing issue:
o Traditional understanding of the statutory definition is that the intention to
merge each authors contribution is to take place at the time they prepared
their contributions.
Partial rationale: attempt to head off collusion between old and
young authors in order to extent copyright term
o This creates problems with collaborative works and works that evolve
over time.
E.g., open source software, collaborative authorship works such as
Wikipedia

Erickson v. Trinity Theatre, Inc. (7th Cir. 1994)

Facts: Erickson worked for Trinity Theatre where she prepared three plays for the
company. They had a falling out and Erickson quit. When Trinity continued to perform
the plays, Erickson sued for copyright infringement. Erickson argued that she was the
author, and therefore controlled the rights to the plays. Trinity argued that since the actors
made suggestions about the play to Erickson during production and rehearsals, Trinity
was a co-author.
Holding: To be an author, one must supply more than mere direction or ideas
To be deemed a co-author, the plaintiffs contribution must be copyrightable
Different views:
o De minimis test (Nimmer)
Requires that only the combined product of joint efforts must be
copyrightable
Not consistent with the Act's premises that ideas and concepts
standing alone should not receive protection
o Copyrightability test (Goldstein) court uses this test
Requires that each author's contribution be copyrightable

36
 Doesnt follow de minimis approach because:
o Don't want to stifle creativity
o Ambiguous concept with no application guidelines
o Need for predictability
Notes: Trinity didnt qualify under this standard b/c it couldnt point to any
specific copyrightable contributions by its actors

Aalmuhammed v. Lee ( 9th Cir. 1999)

Facts: Aalmuhammed was an expert on Malcolm X. He was hired by Lee to be a
consultant for a movie about Malcolm X. Aalmuhammed suggested script revisions,
offered direction to some actors, and helped with editing. When the movie was released,
the credits listed Aalmuhammed as a technical consultant. He wanted to be considered a
co-author, so he sued.
Holding: P was not a joint author because he did not have superintendence of the
work; D controlled it No intent to be co-authors
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 to be merged
into inseparable or interdependent parts of a unitary whole
o P contributed substantially to the film but was not one of its authors
Authorship is required under the statutory definition and
authorship isn't the same thing as making a valuable and
copyrightable contribution
"'Author' involves originating, making, producing, as the inventive or master
mind, the thing which is to be protect" (Burrow-Giles)
Requires more than a minimal creative or original contribution to the work
Notes:
Court requires:
o That both parties made copyrightable contributions, and
o That both parties intended each other to be joint authors
Intention requirement not in the statute why adopt this?
Indications of intention to be joint authors:
o Decision-making authority (control)
o How the parties bill themselves
o Other evidence objective manifestations
Rationale
o The concern is the chilling effect on progress if authors lost incentives to
consult with others and adopt their useful suggestions without sacrificing
sole ownership of the work. (p. 144)
Because the consequences of a finding of joint authorship is an
equal split! So Aalmuhammed would have gotten half the
proceeds of the Malcolm X movie

37
Works Made for Hire
101 work made for hire: (1) 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"
Economic conception of authorship
Consequences of work for hire finding:
o Different term
o Different renewal parties
o Not subject to termination provisions
Work made for hire employer is author

Employee works in
Independent
scope of
contractor work
employment
questions:
questions:

Is there a written
agreement that the
Is s/he an employee? independent
contractors work should
be considered a WMFH?

Does the work fit into

the 9 statutory
Was the work created
categories of
within the scope of her
independent contractor
employment?
works that can be a
WMFH

Works created by employees within the scope of their employment

The creator of the work must be an employee and the work must be prepared
within the scope of his employment

Community for Creative Non-Violence v. Reid (S.C. 1989)

Who is an employee?
Facts: CCNV wanted a sculpture to illustrate the plight of the homeless. They
contracted with a sculptor named Reid to make the sculpture. CCNV paid for the
materials, but Reid donated his time. CCNV provided input on what the sculpture was to
entail, but Reid retained significant creative control. Eventually the sculpture was
finished and CCNV paid $15k. However, when they announced plans to take the
sculpture on a multi-city tour, Reid refused to give up possession of it, and filed a
certificate of copyright registration. Reid argued that he was a co-author of the sculpture.
Holding: Reid was an independent contractor, not an employee not work for hire

38
 The Court decided that they would fall back on the common-law doctrine of
'agency' to determine if Reid was acting as an agent of CCNV when he made the
sculpture.
o Right to control work being performed, skill required, source of
instrumentalities and tools, location of work, duration of relationship, right
to assign additional projects, hired party's discretion, method of payment,
role in hiring and paying assistants, regular course of employer's business,
payment of employee's benefits and taxes.
Reid supplied his own tools, worked in his own studio in another city, was
retained for less than two months, decided his own work schedule, received salary
that was contingent on the sculpture's completion, and had sole discretion over
hiring and paying assistants
Notes:
Multi-factor balancing test with no guidance re: application
The Court rejects the right to control and actual control tests that had been used
previously, as well as the formal salaried employee test.
Post-CCNV interpretations:
o Aymes v. Bonelli (referred to in JustMed): Second Cir. position that there
are some factors that will be significant in virtually every situation
Hiring partys right to control the manner and means of creation,
the skill required, provision of employee benefits, tax treatment of
the hired party, whether the hiring party has the right to assign
additional projects to the hired party

JustMed, Inc. v. Byce (9th Cir. 2010)

Facts: P and D were working together to create a device to help individuals
whose larynxes had been surgically removed. D was then hired as an employee, but later
expressed that he had no explicit knowledge that he was an employee and was accruing
shares as compensation. D worked in a different state from his home using his own
computer, and set his own hours. P never changed the source code and just admitted it
into the program. D attended conferences, marketing meetings, and demonstrations on
behalf of P, and had a business card. P then agreed to pay D half in shares and half in
cash, and D filled out a W-4 form. D never cashed the checks and changed the copyright
on the software to his own name, then later deleted the source code from the systems.
Holding: Despite tax treatment etc., affirms that Byce was an employee.
Turns on whether D was an employee or an independent contractor
o D was an employee the contemplated duration of the relationship
(indefinite), the tasks D did for P, D's formal title, D was hired to replace
an employee, the fact that D earned a salary, and the nature of P's
business,
o Critical: how the technology start-up operated
Uses agency: what matters is the hiring party's right to control the manner and
means by which the product is accomplished
Notes:
Totality of the circumstances analysis (pg. 156)

39
Determining scope of employment
Restatement 228:
o 1) Conduct of the kind the employee is employed to perform;
o 2) Occurs substantially within the authorized time and space limits;
o 3) Actuated, at least in part, by a purpose to serve the master
Note subjectivity of standard based on plaintiffs testimony

Rouse v. Walter & Associates, LLC (2007)

Facts: P created a program (USOFT) to help with another program that it gave cr
rights to a university. P registered a cr for USOFT under its own name. P is suing D for
using USOFT. D is arguing that P can't get cr protection for the program because it was
created within the scope of P's employment at the university.
Holding:
Within the scope of employment if: (1) it's of the kind he is employed to perform;
(2) it occurs substantially within the authorized time and space limits; and (3) it is
actuated, at least in part, by a purpose to serve the master
The kind P were employed to perform? Yes
o Created USOFT to assist and support them in their research at the
university and to speed up the research process
o Even though they don't program software, the development of software
occurred w/in the scope of the employment so can be considered work of
the kind they were hired to perform
Occurred substantially w/in authorized time and space limits? Yes
o An employee can't establish cr rights solely on the basis that the work was
done at home on off-hours
Actuated by a purpose to serve the master? Yes
o Evidence that SOFT was part of the research that was being conducted for
the university
o Faster ultrasound research necessitated the development of this program
Agreement altering the statutory presumption under the CR Act must be express
P failed to show that there was an express, written agreement b/w themselves and
the university that exempts USOFT from the work for hire doctrine

Section 101(2) and specially ordered or commissioned works

If not an employee, then can qualify for work for hire under this section
Section 101(2) has a two-part inquiry: requires a writing and that the type of work
be within one of the 9 categories of works listed in the statute
o contribution to a collective work; part of a motion picture or other
audiovisual work; a translation; a supplementary work; a compilation; an
instructional text; a test; answer material for a test; an atlas.
Requirement of a signed written instrument
o Courts disagree on whether the writing must be prepared before or after
the work is created

40
 Schiller & Schmidt v. Nordisco Corp.: the writing must precede
creation of the work to make the ownership of property rights clear
and definite so that such property will be readily marketable
Other courts have held that the parties could memorialize their
agreement after the fact, so long as the evidence showed that they
actually had agreed on a work made for hire relationship before the
work's creation
o Courts disagree on whether the writing must actually use the words "work
for hire"

Government Works
105 "CR protection under this title is not available for any work of the US
Government, but the US Government is not precluded from receiving and holding
copyrights transferred to it by assignment, bequest, or otherwise"
o Several types of government documents to which this does not apply
o Doesn't directly address the copyright status of works prepared pursuant to
a contract with the federal government
o Does not by its terms apply to state and local legal systems, or to the
products of foreign legal systems
o Does not apply to laws or regulatory codes drafted by private
organizations
o Exception for stamps
Policies behind 105
o Guaranteeing easy access to government documents
o Making sure that government doesnt use copyright as a vehicle to censor
criticism of government works
o Ensuring that government doesnt obtain any unfair competitive
advantages in private markets
o The notion that government has been paid already
Veeck v. Southern Building Code Congress Int'l: Legislative enactments are not
meaningfully different from judicial opinions with respect to copyrightability
o Enacted codes were facts, ineligible for copyright protection
o Laws are facts
Harder cases: commissioned works/works prepared under govt. contract or grant
o Statute doesnt unequivocally bar copyright in such circumstances
o House Report: no copyright if the commissioned work is merely an
alternative to having government employees prepare it.
State government works, state judicial opinions: uncopyrightable per Supreme
Courts decision in Banks v. Manchester.

41
The Statutory Rights of Copyright Owners
106 sets forth the exclusive rights of a cr owners
o To reproduce in copies or phonorecords
Traditionally the most economically important category
o To prepare derivative works
o To distribute
o To perform publicly
o To display publicly
o To perform sounds recordings publicly by means of digital audio
transmission
501(a): anyone who violates the exclusive rights of the copyright owner under
106-122 is an infringer of the copyright
Prima facie case of infringement
o Ownership of valid copyright + Violation of exclusive rights (Copying
in fact [access + similarity] + Improper appropriation [substantial
similarity])

The Reproduction Right

Historically, the exclusive right to reproduce the copyrighted work in copies or
phonorecords has been understood as the core right of the copyright owner

The Exact Copy

1) Piracy cases
o Infringement liability is usually clear
o Issues = procedural and remedial
2) D is engaged in arguably privileged activities, and infringement liability hinges
on the rules that govern the various limitations and exceptions to copyright (107-
122) or the rules provided by other law (contract)
o Defenses:
Public policy defenses: Congress has decided that cr policy or
other public policies such as freedom of expression are best served
by permitting the described uses
107 fair use, 108 reproduction by libraries and archives,
109 first sale doctrine, 110 instruction related and non-
profit performances, 119 noncommercial broadcasting, 121
reproduction for the blind
Defenses based on the type of work: limits the scope of cr in
particular types of works
110 non-dramatic literary or musical works, 113, 117
computer programs, 114 sound recordings, 115 non-
dramatic musical works compulsory license, 116, 120
architectural works
Broadcast industry defenses: 112 ephemeral recordings, 118 use of
art works and music broadcasters, 111 secondary transmissions by

42
 cable systems, 119 satellite transmissions to the public for private
viewing, 122
Intent is to protect these mass communication industries
Courts have held that temporary reproduction of a computer program in RAM that
enables use of the program creates a copy for purposes of the Act (Cartoon
Network)
o 117 has some exceptions but apply only to computer programs
Strict liability approach can't really argue that you didn't know
o May reduce damages - innocent infringement defense 405(b), 504(c)(2)
112 and 118 excludes qualifying broadcasters from infringement liability for
making certain "ephemeral" copies
New exact copying cases involve copies made automatically during reading,
viewing, hearing, and using copyrighted works in digital form.
o Remember MAIs finding that the temporary reproduction of a computer
program in RAM to enable it to be used creates a copy
o Sweeping implications for routine digital practices!
117 helps by permitting certain reproductions of computer
programs, but it is limited
o Possible approaches for relief:
Fixation arguments (see Cartoon Network)
Implied license arguments
Legislative change
o Broadcast context: 112 and 118 re: ephemeral copies

The De Minimis Copy

Courts will not find infringement if what the D took was de minimis too little to
justify a finding of cr infringement
Judge made not in the statute

Gottlieb Development LLC v. Paramount Pictures Corp. (2008)

Facts: The plaintiffs pinball machine appeared in a scene in a movie depicting a
brainstorming meeting in the office of an advertising agency. The pinball machine
appears intermittently in the background, for seconds at a time, and always partially
obscured by the actor Mel Gibson or pieces of furniture.
Holding: Ds use of Ps pinball machine in a 3.5 min scene was de minimis
To establish that infringement is de minimis, D must demonstrate that the copying
of the protected material is so trivial as to fall below the quantitative threshold of
substantial similarity, which is always a required element of actionable copying.
The pinball machine does not appear in any shot by itself, nor is it part of the
plot. It does not appear anywhere else in the film, nor does any character ever
refer to it. It is simply part of the background in one limited scene.
Notes:
De minimis finding is made by the court after having characterized whether or
not the audience would recognize this why wasn't this just sent to a jury?

43
The Substantially Similar Copy
The question is whether D has engaged in actionable copying by taking too much
of what is protected by copyright in the P's work
o Whether the works are "substantially similar"

Copying in fact (Prong 1)

P must show that D in fact obtained protected expression of the P's and used that
expression in the D's work
o CR provides the owner no rights against the author of an independently
created work
o Did D copy Ps work or did he create it independently?
Direct evidence of copying, or circumstantial evidence
o Evidence suggesting that D had access to P's work
Chain of events established b/w Ps work and the Ds access, or
wide dissemination of Ps work
o The degree of similarity between the two works
Ds defense:
o Independent creation
If Ds work is independently created, its copyrightable and non-
infringing even if end result is exactly the same as the Ps work.
o Copying from some 3rd source

Three Boys Music Corp. v. Michael Bolton (2001)

Was there access?
Facts: Isley Brothers recorded a song. Many years later, Bolton recorded a
similar-sounding song. Isley Brothers sued, and D argued that he couldn't remember ever
hearing Ps song and that he came up with his song all by himself (independent creation).
Holding: Held for P; Standard for access: opportunity to view or copy Ps work
o Two elements to establishing infringement:
There must be evidence that D had access to the copyrighted work.
Not to be inferred from mere speculation or conjecture
Reasonable opportunity, more than a bare possibility
There must be evidence that the works are substantially similar.
o The Court found there were two ways to establish access:
A particular chain of events is established between the plaintiff's work and
the defendant's access to that work (like same publisher), or
The plaintiff's work was "widely disseminated."
o Fact dependent trusted jury
Court thought that Ps evidence that the song was widely disseminated
was pretty weak.
o The Isley Brothers had provided testimony from dee-jays that they had played the
song on the radio in the city Bolton grew up in, and that Bolton really liked music
similar to the Isley Brothers.
Notes: Subconscious copying even though song was distributed years ago
o Why liability when the infringer not only doesn't intend to copy but is
unaware that he's copying?

44
Striking similarity
If similarities are striking enough, will proof of access be needed?
o Three Boys suggests no.
o Selle v. Gibb: burden to show that independent creation wasnt possible.
Show substantial similarity through
o Wholesale copying
o Same unique or unusual motif unlikely to come from a prior common
source
o Suspicious snippets, common errors
Effect of striking similarity
o Selle v. Gibb: Striking similarity alone enough
At least some other evidence which would establish a reasonable
possibility that the complaining work was available to D
Why? Especially if youre talking about striking similarity based
on suspicious snippets?
o Term is often used in conclusory or circular fashion

Selle v. Gibb (1984)

Facts: Selle was a small-time musician who wrote a song and sent some demo
tapes to various record labels, but none of them offered to distribute his music. Later, a
band called the Bee Gees recorded a very similar-sounding song. Selle sued and D argued
that they never even heard P's song, came up with it on their own (independent creation).
Holding: Held for D
o Selle was unable to show any evidence that the Bee Gees ever had access to his
song. The best he could show was an expert witness who said that the songs we so
strikingly similar that there was no way they could have been written independent
of each other Court found that wasn't enough.
If two works are so similar as to make it highly probable that the later one
is a copy of the earlier one, the issue of access need not be addressed since
if the later work was a copy its creator must have had access
o But has to be almost identical
o If strikingly similar need to show reasonable possibility of access

Ty, Inc. v. GMA Accessories, Inc. (1997)

Facts: Ty made small stuffed animals & made a stuffed pig. GMA made a similar
stuffed pig. Ty sued, GMA argued that they came up with their pig design by themselves.
Holding: Affirmed for P
Generally, there are two elements to establishing infringement:
o Access + substantial similarity
Selle v. Gibb: if two works are so strikingly similar as to make it highly probable
that the later one is a copy of the earlier one, the issue of access need not be
addressed since if the later work was a copy its creator must have had access
GMA pig was strikingly similar to the Ty pig but not to anything in the real world
o Not realistic, hard to imagine independent creation
GMA could not point to any fictional pig in the public domain that resembled
their pig

45
 Notes:
Are Selle and Ty consistent? Different burdens?
o Selle: cr owner has to show reasonable possibility of access as part of its
prima facie case
o Ty: Similarity alone can generate a presumption of access which the
defendant must rebut.
Or did Ty court think circumstances met the likelihood of access?

Substantial similarity (Prong 2)

If there was access and similarities probative of copying (rather than independent
creation), then we move to Prong 2 of the infringement test improper
appropriation or substantial similarity.
o ** This is a second, different, use of the notion of substantial similarity
The substantial similarity question is one of fact, but determining which aspects
of the P's work are and aren't protectable by cr may involve questions of law
Degree of resemblance between the works that supports a finding of infringement
Ds defenses
o D copied uncopyrightable elements such as ideas rather than expression;
o The audience would not find the works substantially similar;
o The substantial similarity was de minimis.

Same aesthetic Recognizable Total concept and Extrinsic/instrinct

appeal taking feel test
Boisson Steinberg Kisch Krofft
Mannion Krofft Cavalier
Swirsky

Totality Filtration
analysis: More analysis
Fact finder to discerning Fact finder to
compare the two observer compare only
works in their analysis? after filtering out
totality unprotected
material

46
Nichols v. Universal Pictures Corp. (1931)
Facts: Nichols wrote a play about a Jewish family living in New York. Universal
made a movie about the same. Nichols sued & argued that Ds work was substantially
similar to his work. Universal argued that they came up with their movie by themselves,
and that it was different enough from P's play to be outside the scope of P's cr.
Holding: Affirmed for D. A work could be a copy of an earlier work even if it
didn't copy the literal text, but the works needed to be substantially similar.
o There is no bright-line rule for how similar a work has to be to be a cr violation.
o Although the two plays shared many the same themes and the general plot, the
similarities tended to be general things, universal concepts, and stereotypical
characters. Nothing unique to P's play that was found in D's movie.
Can copyright an expression, but not an idea.
o Can't cr something general like- father disapproves of daughter's bf
Scenes a Faire Doctrine: cr does not extend to the incidents, character, or
settings that are as a practical matter indispensable or at least standard in
the treatment of a given topic.
o All police shows are going to have the same stereotypical
characters, but those similar characters are not cr violations.
o Basically, this case said that as long as a D only takes the uncopyrightable
elements of a P's work, the two works will not be substantially similar enough to
constitute cr infringement
Notes:
Origin of "abstractions test" for substantial similarity: Literal similarity can't be
the only scope of cr protection because if it were, then all that a plagiarist would
have to do is change a couple of sentence fragments
o The more concrete the taking is, the more problematic it becomes
o But contextually dependent no strict test
o Page 272
No infringement if the substantial similarity due to uncopyrightable elements, but
no dissection Is Hand just avoiding dissection analysis?

Sheldon v. MGM (not in casebook)

Learned Hand applied the same test and came out the other way
o Public domain story; novel; play and movie. The author of the play says
that it was infringed by the movie. The makers of the movie say that they
properly took the story from the novel and not from the play.

Arnstein v. Porter (1947)

Facts: Arnstein was a songwriter who had published a number of popular songs.
He claimed that Porter had plagiarized some of his songs and sue. Arnstein argued that
Porter had 'stooges' fooling Arnstein around and had even ransacked his apartment and
stole some of his unpublished songs. Porter argued that he had never heard any of
Arnstein's songs and that he came up with his songs himself. TC found for D
Holding: Reversed and remanded.

47
 Whether two songs were substantially similar enough to constitute copyright
infringement was a matter of fact for a jury to decide.
[W]hether D took from P's works so much of what is pleasing to the ears of lay
listeners, who comprise the audience for whom such popular music is composed,
that D wrongfully appropriates something which belongs to the P."
Focus on the economic value to P's work of the piece taken by D.
Is the D substituting his work for the Ps and therefore appropriating Ps
customers?
Looks like focus is on current, existing market: reaction of ordinary lay hearer
Notes:
If the work sounds completely different but is musically the same goes to jury
because the experts say it's musically the same, but then the D will probably win
o Seems to Levi to be a pretty D-friendly standard
Leaves open various questions: How to define the audience? What about potential
markets?

What can cognitive science tell us about similarity judgments?

Klonick
o Difference between similarity and difference judgments
People give greater weight to common features when asked to
judge similarity, and distinctive features when asked to judge
difference
o Similarity judgments arent always transitive or symmetric if you start
w/ A and ask about its similarity to B, you can get different results than if
you start with B and ask about its similarity to A
o People are more likely to find similarity when the more prominent idea
or object is the referent the B in A is like B
This tilts the field in favor of owners of very successful works
o Depending on the situation, feature similarity may matter less than
relational similarity: a bear isnt a lot like a bird, but a mother bear with
a cub is a lot like a bird with a chick.
Balganesh
o Juries are sensitive to additional info about the two works and their
creators/production processes
Their assessments of similarity in fact shift when provided with
additional information about the fact of copying, the amount of
creative effort that went into creating the work, etc.

48
One contemporary approach Second Circuit

Steinberg v. Columbia Pictures Industries, Inc. (1987) - Style

Facts: Steinberg drew an illustration of New York City that was featured on the
cover of a magazine. Columbia used a very similar-looking illustration of New York City
in a promotional poster for a movie. Steinberg sued. Columbia admitted that they had
used Steinberg's illustration as a basis for their poster. However, they argued that they
were dissimilar enough that it wasn't an infringement. Columbia argued that they merely
copied Steinberg's idea, not his expression, and ideas cannot be the basis of cr protection.
Holding: Found for Steinberg the two works were substantially similar
Looked at properties of the two illustrations and found that they both had things in
common which were not common among other illustrations of New York.
"Whether the average lay observer would recognize the alleged copy as having
been appropriated from the copyrighted work."
o Despite many differences (pg. 282)
Very pro-plaintiff u-turn away from Arnstein
Similarities:
o Vantage point, locations, errors and anomalies of Steinbergs shadows and
streetlight (p. 279), childlike, spiky block print (p. 282)
No scenes faire
Notes:
Focuses on style
Is this too pro-P a standard?
o Is the court protecting Ps conceptual ingenuity or expressive artistry?
Doesn't seem like Levi agrees with this case

Boisson v. Banian, Ltd. (2001) -Works with significant unprotectable elements

Facts: Boisson was a quilt-maker who created two quilts that incorporated the
alphabet. Banian made three very similar-looking quilts. Boisson sued. D admitted that
they had used P's quilts as a basis for their own, but argued that their quilts were
dissimilar enough that it wasn't infringement. TC found for D.
Holding: Reversed no cr for alphabet, but yes for layout and color combos
If "the ordinary observer, unless she set out to detect the disparities, would be
disposed to overlook them, and regard the aesthetic appeal as the same."
More discerning ordinary observer standard
Consider total concept and feel
Substantial similarity in some copyrightable elements of some of the quilts
Notes:
More discerning ordinary observer standard adopted when work incorporates
public domain elements (pg. 284)
What do we look at discerningly?
o Total concept and feel instructed by common sense (p. 285)
o Look at: arrangement, letter shapes, colors, quilting patterns, choice and
placement of icons
Good approach, or does it unduly double-count public domain material?

49
Mannion v. Coors Brewing Company (2006)
Facts: (Same as above) D used a photo in a billboard that looked exactly like a
close up of a photograph done by P. D used different model but looked very similar.
Holding:
The idea-expression distinction "breaks down" in the visual arts because "it is
impossible in most cases to speak of the particular idea captured, embodied, or
conveyed by a work of art.
Inquiries are identical whether ordinary or more discerning observer test is used
Must compare protectable elements of the photos, but the elements are not to
viewed in isolation
Whether the aesthetic appeal of the 2 images is the same
Ambivalent about the more discerning observer test when the work contains
both protectable and unprotectable elements (pg. 288)
o The circuits cases say you shouldnt dissect, but discerning observer test
seems to be doing just that
If the points of dissimilarity exceed the points of similarity and indicate that the
points of similarity are, within the context of the plaintiffs work, of minimal
importance, then no infringement results.
Notes:
Highly orchestrated images enjoy greater protection
Talks about whether or not the visual medium is different from other
copyrightable mediums

Another contemporary approach Ninth Circuit

Sid & Mart Krofft v. McDonalds (pg. 292 1977)

Facts: Sid & Marty Kroffts successful children's show H.R. Pufnstuf -- top rated
Saturday-morning TV show. McDonaldland ad campaign introduced similar characters.
Holding: D had captured the total concept and feel of Ps show affirmed
finding of infringement
Alternative to 2nd Cir. Nichols abstraction test
o First look at whether there is similarity in ideas. (Extrinsic test)
Depends not on the responses of the trier of fact, but on specific
criteria which can be listed and analyzed.
Type of artwork, materials used, subject matter, setting
Analytic dissection and expert testimony are appropriate.
Question may be decided as a matter of law.
o If so, then look at whether there is similarity in expression of the ideas.
(Intrinsic test)
Depending on the response of the ordinary reasonable person.
Works should be considered and tested not hypercritically or with
meticulous scrutiny, but by the observations and impressions of the
average reasonable reader and spectator.
Analytic dissection and expert testimony are not appropriate

50
Cavalier v. Random House, Inc. (9th Cir. 2002)
Facts: The Cavaliers wrote some children's books involving a talking moon. They
tried to sell these books to Random House, but no agreement was ever reached. A little
while later, Random House published different books with similar themes. The Cavaliers
sued and argued that Ds new books were substantially similar to their work.
Holding: Affirmed for D
o Two-part analysis for infringement:
The extrinsic test which is an objective comparison of specific expressive
elements
o Plot, themes, dialogue, mood, setting, etc.
o Court must filter out and disregard the non-protectable elements
o Not a test for similarity in ideas as articulated in Sid & Marty
Krofft
The intrinsic test which is a subjective comparison that focuses on
whether a reasonable audience would find the "total concept and feel" of
the works to be similar.
o Neither the works as a whole, nor specific elements of the works were
substantially similar enough to rise to the level of infringement.
o Comparison of the literary works as a whole
Actual narratives dont share much in common:
Principal setting = scene a faire
Pace/dialogue/mood/theme and characters differ
o Comparison of the individual art works
No smj on night light design and stars relaxing on clouds; but smj on stars
being polished
Notes:
Reinterprets the standard as an objective comparison of specific expressive
elements and a subjective comparison of the total concept and feel

Swisky v. Carey (2004)

Facts: Swirsky wrote a song that was a minor hit. Later, Carey wrote a similar-
sounding song that also became a hit. Swirsky sued and admitted that most of D's song
was not similar to his song, but that the chorus was substantially similar. Swirsky had an
expert witness testify about the songs' similarities.
Holding: Held for D
Two-part analysis for infringement:
o The extrinsic test considers whether two works share a similarity of ideas
and expressions as measured by external, objective criteria
Analytic dissection with respect to protected elements and expert
testimony required
BUT note: substantial similarity can be found in a
combination of elements, even if those elements are each
individually unprotected.
No uniform set of factors to be used; music cant be
classified into 5 or 6 constituent elements

51
 o The intrinsic test which is a subjective comparison that focuses on
whether a reasonable audience would find the "total concept and feel" of
the works to be similar.
Experts methodology was flawed
o He engaged in intrinsic rather than extrinsic analysis
o Using the courts own analysis, there was no sub. sim. in 4 of the
measures of the chorus
Another measure was scene a faire
Substantial similarity shouldnt be founded solely on similarities in key, harmony,
tempo or genre, either alone or in combination
Notes:
Extrinsic tests permits summary judgment in clear cases of non-infringement

The Right to Prepare Derivative Works

The Act grants to cr owners the exclusive right to "prepare derivative works
based upon the copyrighted work" 106(2)
Derivative work: a work based upon one or more preexisting works 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
101
Derivative works meeting the statutory standards of 102 are themselves
independently copyrightable 103(a)
Closely allied to the reproduction right
Key element: some sort of recasting or transformation
Question/problem 1: Has the derivative work added something original to the
pre-existing material?
o The answer to this question is usually clear in most cases.
Question/problem 2: Is it a derivative work?
o Reproduction/adaptation rights boundary
o In light of the fact that the reproduction right is broad enough to cover
non-literal infringement, how do we distinguish between infringing
reproductions and derivative works?
o Couldnt many of the works in the reproduction cases be considered
derivative works?
E.g., Moscow on the Hudson poster? Coors billboard?
Question/problem 3: Infringement of derivative works right without reproduction?
o Derivative works that dont involve copying
o The definition of derivative work doesnt discuss copying/reproduction
o So can there be an infringement of the derivative works right by simply
putting a lawfully purchased work in a different context?
Question 4: Fixation in the digital context
o Must an infringing derivative work meet the fixation requirement that
applies to copyrightable derivative works?

52
Reproduction or Derivative Work?
New works that
Derivative works
incorporate parts Literal
reflecting
or slight reproductions of
substantial
modifications of entire works
transformations
underlying works

Warner Bros. Entertainment v. RDR Books (2008)

Facts: Vander Ark created the Harry Potter Lexicon, an online encyclopedia of
the Harry Potter book series that collected and reorganized various facts from the novels
into a searchable form. The Lexicon is non-profit and quickly became a favorite for fans
of the books. Vander Ark was contacted by the President of RDR Books, and asked about
the possibility of publishing a for-profit print version of the site. Lawyers for Rowling
and Time Warner argued that RDR's attempt to publish for profit a print facsimile of The
Lexicon constituted an infringement of their cr.
Holding: Court finds infringement of the reproduction right, but not the
derivative works right; the derivative works right should be reserved for things that
serve a different function than the original
D acknowledged actual copying
Passes the substantial similarity test: both quantitative and qualitative
o Copies sufficient quantity of the series 450 pages from the 4,100 series
Most of the entries contain direct quotations or paraphrases
o The Lexicon draws its content from creative, original expression in the
series and companion books
o The rearrangement of acts doesn't alter the protected expression such that
the Lexicon ceases to be substantially similar to the original works
A work isn't derivative just because it's based on the pre-existing works
o The statute seeks to protect works that are "recast, transformed, or
adapted" into another medium while still representing the original work
of authorship
Whether the Ds work represents the original or gives the material
a new purpose
o Doesn't recast the material in another medium to retell the story of harry
potter, but instead gives the copyrighted material another purpose gives
the reader a ready understanding of individual elements in the harry potter
world

Copyright, Markets, and Derivative Works

How should a court determine whether a particular market is within a copyright
owner's control?
Goldstein: Derivative work = work in which the contribution of independent
expression to an existing work effectively creates a new work for a different
market

53
 o Derivative rights affect the level of investment and the direction of
investment in copyrighted works
o Articulates traditional economic explanation for the derivative work right,
which is quite broad
o If the derivative works right is the right that allows a cr owner to cover
other markets captured by the transformation of the original work,
Why do those markets belong to the cr owner of the pre-existing
work?
Is there any limit to those markets deemed to belong to the original
rights-owner?
Samuelson: there are important policy reasons to limit the derivative work right to
foreseeable markets will encourage follow on creators to make new works of
authorship that will add to the store of knowledge
o Reads the statutory language to incorporate limitations
o Helps by looking at the justification of the right
Expectation that the particular derivative markets are important in
recouping investments in the works
Giving the author time to decide which derivative markets to enter
and when/with whom
Avoiding unjust enrichment by unlicensed exploiters of
foreseeable derivative markets
o Levi likes this but the problem is that it's not self-limited either
Drassinower Levi hates this
o Get rid of the derivative works right completely
o Works are communicative acts rather than property/things/commodities,

Derivative Works that Do Not Involve Copying

Mirage Editions v. Albuquerque A.R.T. Company (9th Cir. 1989)
Facts: Mirage was a book publisher that made books containing reproductions of
famous artwork. ART legitimately bought copies of Mirages' books, cut them up, and
glued the individual pages onto ceramic tiles, which they sold. Mirage sued and argued
that they had the right to control the distribution of their copyrighted work, and that they
had never authorized ART to make ceramic tiles. ART argued that they had legitimately
purchased Mirage's books and therefore had the right to do anything they wanted with
them, including ripping them apart, gluing the pages to ceramic tiles and selling them.
Holding: Affirmed for P mounting the artwork on tile recasts or transforms the
individual images.
o The first sale doctrine (109(a)) gives someone who buys a book the right to lend it
or do anything they want with it, in general.
If ART was buying Mirage's books and then selling them in a bookstore,
there would be no copyright infringement.
o But first sale doctrine did not give someone the right to "recast, transform, or
adapt" a work.
The right to prepare derivative works remains with the original cr holder.

54
 o Ripping the book apart and turning it into ceramic tiles was enough of an
alteration to constitute a derivative work, and therefore it was cr infringement
Notes:
Contrast this decision with Lee v. A.R.T. Company - opposite conclusion.
Levi thinks that this case is also about copying more complicated than the book
make it seem like it is
Mirage calls into question the originality requirement at the margins

Lee v. A.R.T. Company (7th Cir. 1997)

Facts: Lee was an artist who owned the cr to her paintings. She authorized
postcards to be made of her work, which were then sold in stores. ART legitimately
bought copies of Lee's postcards and glued the individual pages onto ceramic tiles, which
they sold. Lee sued and argued that she had the right to control the distribution of her
copyrighted work, and that had never authorized ART to make ceramic tiles. ART argued
that they had legitimately purchased the postcards and therefore had the right to do
anything they wanted with them.
Holding: Mounting art on a tile is equivalent to showing it in a frame The
postcards werent transformed in the process
First sale doctrine (109(a)) gives someone who buys a work the right to do
anything they want with it
P had not suffered any economic loss because she had already "captured the
value" of the original sale of the postcard.
Any subsequent alterations that consume or destroy the postcard lack
economic significance.
Since the work wasn't recast, transformed, adapted, or altered, it couldn't be
considered a derivative work
Notes:
Cant make criminals out of art collectors
Easterbrooks focus on the ordinary practices of art collectors suggests that
custom has a role to play in distinguishing permissible uses from impermissible
recasting.

Micro Star v. FormGen (9th Cir. 1998)

Facts: FormGen made Duke Nukem 3D (D/N-3D), a 3D first-person perspective
video game. A build editor was shipped along with the game, which enables players to
design and build their own levels, and then share those levels with others through the
Internet. FormGen encouraged people to make levels, and did not consider this user-
created content to be a copyright infringement. Micro Star collected 300 of these user-
generated levels, packaged them onto a CD, and sold it commercially as Nuke It (N/I).
N/I's packaging was decorated with numerous screen shots of the included user-created
levels. Micro Star went to court, asked for a declaratory judgment that this was not cr
infringement. FormGen countersued, claiming that the levels were derivative works.
Holding: Found for Formgen - Derivative work must exist in a concrete, fixed
form and must contain a substantial amount of copyrighted material
o Extends the notion to the outer boundaries of copyright law by also holding that:

55
 1) An exact description of an audio-visual display counts as sufficiently
permanent to satisfy that standard.
o Note that no other court has adopted the quasi-fixation
requirement.
2) The work is the D/N-3D story itself (at a pretty abstract level), so the
original author owns the sequel rights
o The data in this case was definitely fixed burned onto a CD.
o Even though the fan-generated content didn't contain any of FormGen's art or
images, it was still a derivative work because it was basically a map for how to
get that content.
Likened it to sheet music, which isn't the music itself, but is detailed
instructions on how to make the music.
Notes:
Established that audio-visual display can be copyrighted in certain circumstances
Doesnt discuss the user-generated Duke Nukem game levels from the point of
view of substantial similarity.
o FormGen owns the D/N-3D story itself and any manifestations of it.
This means that a sequel of sorts can be substantially similar to
the original even though it tells a different story

Fictional Characters and The Reproduction and Derivative Work Rights

Copyright Act does not address the copyrightability of characters.
One is the Nichols approach, in which Judge Learned Hand adopted a specificity
of delineation standard
o Separate the non-protectable stock characters from fully realized
characters that can be protected under the Act.
Simple stock characters are nothing more than ideas that any
author can utilize.
Thus, the issue becomes how well developed is the character in
question compared to the generic stock character on which they
are based.
o Hard to apply to literary works
o What aspects do we look at to determine sufficiency of distinctiveness or
delineation?
The other is the story being told test out of the Maltese Falcon case
o Focuses on the significance of the character to the story, but effectively
limits protection to characters in stories devoid of plot.
o To what extent the character is intertwined with the plot of the story

DC Comics v. Towle (Supp., 2016)

Facts: P is the cr owner of comic books featuring the story of Batman. D
produced replicas of the Batmobile as it appeared in a 1966 tv show and 1989 motion
picture.
Holding: The Batmobile is entitled to cr protection
Cr protection is available only for characters that are especially distinctive

56
 Court adopts 3-pronged test:
o 1) Character must have physical as well as conceptual qualities
o 2) Character must be sufficiently delineated that it is recognizable
whenever it appears
Consistent, identifiable character traits and attributes, although
the character need not have a consistent appearance
o 3) Character must be especially distinctive and contain some unique
elements of expression
Cannot be a stock character
Cr 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
Batmobile (1) has appeared graphically in comic books and as a three-
dimensional car in tv series and motion pictures, (2) has maintained distinct
physical and conceptual qualities since its first appearance, and (3) contains
unique character traits, physical characteristics, and a highly recognizable name.

Warner Brothers Entertainment v. X One X Productions (2011)

Facts: P asserts ownership of registered copyrights to the films The Wizard of Oz
and Tom and Jerry shorts. Before the films were copyrighted, D used images from
publicity shots that were not drawn from the film in order to extract the images of the
characters and use it on shirts, lunchboxes, playing cards, etc. P contends that D extracted
images from the public domain materials and used them in new ways that infringe the
copyrights in the associated films.
Holding:
The freedom to make new works based on public domain materials ends where
the resulting derivative work comes into conflict with a valid copyright
If material related to certain characters is in the public domain, but later works
covered by copyright add new aspects to those characters, a work developed from
the public domain material infringes the copyrights in the later works to the extent
that it incorporates aspects of the characters developed solely in those later works
The scope of the film copyrights: The scope of cr protection for the characters is
limited to the increments of character expression in the films that go beyond the
character expression in the books on which they were based
o The cr covers all visual depictions of the film characters at issue, except
for any aspects of the characters that were injected into the public domain
by the publicity materials
The scope of the material dedicated to the public: To the extent that the copyright-
eligible aspects of a character are injected into the public domain, the character
protection under the corresponding film copyrights must be limited accordingly
o The publicity materials didn't place the entirety of the film characters at
issue into the public domain
The isolated images can't anticipate the full range of distinctive
speech, movement, demeanor, and personality traits

57
 o For the visual characteristics: the individuals shown in the publicity
materials establish "characters" for cr purposes only if they display
"consistent, widely identifiable" visual characteristics

The Rights of Distribution, Public Performance, and Public

Display
The Copyright Act gives copyright owners certain exclusive rights to disseminate
their copyrighted works to the public
Distribution - 106(3)
Performance - 106(4) & 106(6)
Display - 106(5)

Distribution of Copies
Whether physical or non-physical
106(3): 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"
o Gives the cr owner the right to control the 1st public distribution
The cr owner can go after distributors of reproductions that they themselves have
not made
o Doesn't require reproduction separate right
The distribution right has become more important because of
o The increase in digital distribution of works and
o Increasing ability of firms to engage in price differentiation in selling their
products
Has always gone hand in hand with the right to reproduce the work, and its scope
and application have evolved in response to technological developments and
consumer practices
Most often invoked in cases involving exact copies
Distribution right and its exceptions = attempts to balance the clash b/w
o Cr owners desire to control downstream uses of their works in order to:
1) shut down intermediaries who traffic in unauthorized copies;
2) maximize demand for copies of their work
3) facilitate differential pricing of their works to different
customers without fearing arbitrage effects
o Users attitudes that:
1) copyright owners desire to profit from downstream uses is
more than they deserve;
2) people should be able to do what they want with copies of items
they have purchased; and
3) distaste for differential pricing of products

58
 106(3) exclusive
distribution right

Curtailed by 109(a) first

sale right

What constitutes a distribution?

Capitol Records, Inc. v. Thomas (2008)
Facts: Illegal downloading via peer-to-peer file sharing application Kazaa
Issue: Does making a work available to public for download constitute a
distribution? Battle of experts: Register of Copyrights (yes) vs. Nimmer (no)
Holding: No The plain meaning of distribute doesnt include making available
There is no single definition of distribute in copyright law
Congresss choice to not include offers . . . indicates its intent that an actual
distribution or dissemination is required in 106(3)
Notes:
Most courts have agreed with Capitol Records when they have considered what
constitutes distribution in the digital context But some come out the other way.

The First Sale Doctrine

The distribution right is subject to a number of important limitations
o First sale doctrine and the rental rights problem
First sale doctrine is a key exception to 106(3)
o Allows owner of physical copy to resell or loan work, despite cr owners
distribution right
o 109(a): Notwithstanding the provisions of section 106(3), the owner of a
particular copy or phonorecord lawfully made under this title, or any
person authorized by such owner, is entitled, without the authority of the
cr owner, to sell or dispose of the possession of that copy or phonorecord
Rooted in the distinction between the ownership of cr in a work and ownership of
the physical object in which the work is embodied
Origin lies in the common law right to control disposition of chattels in one's
lawful possession
o When you buy a copy of a book you become the owner of that copy, and
as the owner you are empowered to engage in a wide variety of conduct
The cr owner's exclusive rights with respect to a particular copy of
a work became "exhausted" upon a lawful transfer of ownership of
that copy
Helps prevent the cr owner from preventing the free alienability of goods
Seems to promote progress justifications
Thought not to apply to digital distributions
109(b) computer and software rentals

59
 o (b)(1)(A) unless authorized neither the owner of a particular
phonorecord nor any person in possession of a particular copy of a
computer program may,
for the purposes of direct or indirect commercial advantage,
dispose of, or authorize the disposal of, the possession of that
phonorecord or computer program (including any tape, disk, or
other medium embodying such program) by rental, lease, or
lending
o (B) doesnt apply to computer program embodied in a machine and
which cannot be copied during the ordinary use, or used in conjunction
with a limited purpose computer that is designed for playing video games
Congress has curtailed the first sale doctrine in certain cases where the prospect of
market substitution by used or lower-priced copies is particularly easy and
likely.

Bobbs-Merrill Co v. Straus (S.C. 1908)

Facts: Bobbs-Merrill was a book publisher that owned the rights to a book called
The Castaway. Inside the book cover, they wrote a notice saying that the minimum retail
sale price of the book was $1, and if a retailer sells it for less than that they are infringing
the copyright. Straus was a retailer who bought copies of the book from a wholesaler and
started selling them for 89. Bobbs-Merrill sued and argued their ownership of the
copyright gave them the exclusive right to distribute, and that meant that they could
revoke Straus' right to sell the books at any time. Straus argued that they didn't buy the
book from Bobbs-Merrill, they bought it from a wholesaler.
Holding: Found for Straus Cr law gave the cr owner the right to restrict others
from making their own copies of a work. However, it did not give them any rights to
control what happened to books after they sold them.
First sale doctrine: once someone buys a legitimate copy of a work, they can do
whatever they want with it, including sell it to others, or lend it out
o They just can't make extra copies of it.
o Prevents used bookstores and libraries from being copyright infringers.

Capitol Records, LLC v. ReDigi Inc. (2013)

Facts: ReDigi was the "first and only online marketplace for digital used music."
ReDigi was an online used record store for pre-owned digital music downloads
Holding: Partial summary judgment was granted in favor of Capitol Records
because both the reproduction and distribution rights were infringed
Explicit rejection of ReDigi's digital first sale defense
o Digital redistribution entails reproduction by fixation in a new
material object the recipients hard drive or mobile device and the
first sale doctrine is an exception to the distribution right.
The fact that the system was completely automated was irrelevant to the finding
the ReDigi was a direct infringer

60
Rental Restrictions
The protection that 109 confers on owners of copies is limited for some
categories of works
109(b) doesn't apply to the lending, lease, or rental of phonorecords by nonprofit
libraries and nonprofit educational institutions, and also to computer programs
that are embodied in a machine or product and which cannot be copied during the
ordinary operation or use of the machine or product

Libraries and 108

The privileges established under 108 include reproduction in a single copy for
the library itself or for library patrons for purposes of private study, scholarship,
or research 108(a)-(e)
Limitations designed to ensure that none of those activities can become a
substitute for purchases of copyrighted works

Importation and Exhaustion

The right to prevent the unauthorized importation of copies of a copyrighted work
into the U.S.
602: Importation into US, without the authority of the owner of a cr under this
title, of copies or phonorecords of a work that have been acquired outside the US
is an infringement of the exclusive right to distribute copies or phonorecords
under section 106
The CR Act counterbalances the broad 106(3) and 602 rights with exceptions,
which themselves have exceptions

602(a) importation
right

Qualified by 3
specific exemptions
and first sale
doctrine under
109(a)

61
Kirtsaeng v. John Wiley & Sons (SC 2013)
Facts: To subsidize the cost of his education, Kirtsaeng asked friends and family
in Thailand to buy copies of textbooks in Thailand and to ship those books to him in the
United States. Kirstaeng then sold the textbooks on eBay at a profit. The publisher sued
Kirtsaeng under Section 602(a)(1).
Holding: SC held that there was no geographic restriction on the "first sale"
doctrine, which states that the copyright owner maintains control of the first sale only.
The language and common-law history of the Copyright Act support a non-
geographic reading of the Act that allows for unrestricted resale of copyrighted
goods regardless of the location of their manufacture.
Lawfully made under this title not a geographic limit
A geography-based reading of the "first sale" doctrine would drastically harm the
used-book business as it would force book sellers to be subject to the whim of
foreign copyright holders.
Manufactured in US Manufactured outside US

First sale in US 109(a) shields resale in US Resale in US infringing, or does

109(a) apply?

First sale outside 109(a) shields resale in US Resale in US infringing? Issue in

US (Quality King) Kirtsaeng

Public Performance and Display Rights

Right of public performance is a recently recognized right
1909 Act performance right recognized only for dramatic works and musical
compositions + and limited to controlling only for profit public performances
o SC adopted an expansive view of for profit in determining public
performances indirect profit counts too! Herbert v. Shanley p. 378
For profit isnt limited to circumstances when tickets are sold at
the door; but music performances to set the mood in restaurants
also are part of a total for which the public pays.
o SC said no public performance in playing radio in a small fast-food shop
(20th C. Music Corp. v. Aiken)
1976 Act: Eliminated for profit limitation on the performance right
o Increased the categories of works subject to performance and display
rights: literary, musical, dramatic and choreographic works, pantomimes,
motion pictures and other audiovisual works
o Defined performance broadly to cover both Aiken and the cable
companies retransmission
o But did not include a performance rights in sound recordings later
changed under 106(6), but it is limited to digital audio transmission
Perform ( 101): to perform a work means to recite, render, play, dance, or act
it, either directly or by means of any device or process

62
 To perform or display a work publicly means:
o 1) public place clause: to perform or display it at any 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; or
o 2) transmit clause: to transmit or otherwise communicate a
performance or display of the work to a place specified by clause (1) or to
the public, by means of any device or process, whether the members of the
public capable of receiving the performance or display receive it in the
same place or in separate places and at the same time or at different times.
To analyze public performance claims:
o 1) Identify all performances definition of performance is broad
W/r/t music, there are two performances: performance of the
musical work and the sound recording
Sound recordings have much narrower performance rights
o 2) Determine whether the performances are public
Performance rights
o The owner of the cr has the exclusive rights to do and to authorize
106(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
106(6) in the case of sound recordings, to perform the copyrighted
work publicly by means of digital audio transmission

Columbia Pictures v. Redd Horne (not in book)

Customer selects VHS tape, employee puts it in player in front, customer(s) see it
in small room in the back
Court finds public performance
o Facility was open to the public as a whole
o The performance involved transmission from the front of the store to the
back rooms
Privacy is just an additional feature that doesnt change the fundamentally
public character of the performance
Court seems concerned with the potential market substitution problems that might
arise

Cartoon Network v. CSC Holdings Cablevision (2009)

Facts: (Same as above) In 2006, CSC Holdings, Inc. (Cablevision) (defendant), a
cable-television operator, planned to implement a new digital-video recorder (DVR)
system that would allow customers to record cable-television programs on remote hard
drives managed by Cablevision. The system would be known as Remote Storage DVR
(RS-DVR) and would require small segments of each cable program to be sequentially
reproduced during a buffering process prior to storage. These segmented copies would
exist for no more than 1.2 seconds before being placed into storage.
Issue: Although Cablevision transmits a performance of the work, is it to the
public?

63
 Holding: No, because the transmission was to one person at one time from a
different copy of the work for each customer.
Although the transmit clause is not a model of clarity, we believe it refers to
the performance created by the act of transmission.
[B]because the RS-DVR system, as designed, only makes transmission to one
subscriber using a copy made by that subscriber, the universe of people
capable of receiving an RS-DVR transmission is the single subscriber whose self-
made copy is used to create that transmission.
Notes:
Contrasting views on this case:
o Cablevision showed bad faith in designing its system specifically to
exploit a statutory gap
o Cablevision creatively designed around the limitations in the statute
o It had a good business reason for doing so saving the costs of supplying
DVR boxes to its customers.

American Broadcasting Companies v. Aereo (SC 2014)

Facts: D provides a service that allows its subscribers to watch programs that are
currently airing on network television or record programs that will air in the future over
the Internet. Aereo does not have a license from the cr holders of the programs to record
or transmit their programs. Two groups of Ps filed separate copyright infringement suits
against Aereo and moved for a preliminary injunction.
Holding: Because Aereo is functionally similar to community antenna television
(CATV), which Congress specifically amended the Copyright Act to cover, the
Copyright Act regulates Aereo's actions in a similar manner.
Under the definitions Congress established in the Copyright Act, Aereo performs
work because it shows images in sequence with the accompanying audio, and it
does so publicly because those images and sounds are received beyond the place
from where they were sent by a large number of unrelated people.
o Therefore, Aereo, like CATV, is not just an equipment provider but rather
a broadcaster.
1) Performance: An entity that engages in activities like Aereos [acting like a
CATV system] performs.
o It is not merely an equipment provider.
o Note that its subscribers perform too.
2) Public: 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. [T]he
subscribers to whom Aereo transmits television programs constitute the public.
Dissent:
Direct infringement liability requires volitional infringing conduct
o Here, Aereos subscribers call the shots
Plus, Aereos technology is materially different from cable, so the cable analogy
doesnt fit well.
o The majority provides no standards to predict when the cable analogy will
be applied.

64
 Notes:
Most recent Supreme Court case on public performance rights
Questions:
o Does Aereo perform? If so, does it do so publicly?
Majority characterizes holding as narrow
o The decision does not determine whether different kinds of providers in
different contexts also perform.
The case reduces the Cablevision clarity that led to investment in cloud-based
technology

Cable and satellite retransmission of broadcast signals

Cable and satellite operators arent liable for retransmission so long as they
comply with compulsory licenses.
o Cable: 111
o Satellite: STELA Reauthorization Act
Internet-based retransmissions of broadcast programming does not benefit from
the compulsory license

The Public Display Right and De Minimis Use

Right of public display - 106(5)
o Confined to 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
Public display jurisprudence
o Thin probably because of first sale provisions
o 109(c): The owner of a particular copy lawfully made is entitled,
[without permission] 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.
In light of 109, the scope of the public display right under 106:
o Grounds infringement actions against displays of unlawfully made copies
o Applies when the defendant has rented or licensed (and not purchased) the
displayed copy
o Applies to displays made by transmission
o Applies to in-theater performance of a film incorporating images of the
copyrighted work

Online Infringement of the Public Display Right

Perfect 10 v. Amazon (9th Cir. 2007)
Facts: In response to image searches, Googles search engine communicated
thumbnail versions of images to the user. Google stored the thumbnails on its servers.
Google did not store the full versions of the images on its servers. If users clicked on a
thumbnail, Google sent HTML instructions to the users computer on where to find the
full image on a third party website. The image then appeared from the third party website

65
in a window, framed by additional information from Google. This process was known as
in-line linking. Google obtained revenue from certain of these third party websites
through advertising agreements. Perfect 10 operated a subscription website for pictures of
nude models. Googles search engine returned thumbnails of copyrighted Perfect 10
images because third party websites would reproduce, display, and distribute
unauthorized copies of the images. Perfect 10 brought a copyright infringement suit
against Google and Amazon.com
Holding: Creating and publicly displaying thumbnail versions of copyrighted
images is likely to be infringement (although ultimately found to be fair use), but linking
to third-party websites that display full-size versions of the images is not infringing.
Affirmed DC: the district court found that Google would infringe the distribution
and display rights by framing others' content only if it hosted and physically
transmitted the content itself (the "server test").
Since Google only provided an instruction for the user's computer to fetch
the infringing pages from servers not under its control, rather than hosting
or transmitting the content itself, the court found that Perfect 10 was
unlikely to succeed on this point, and so denied its request for injunction.
Notes:
Most courts hold that providing a hyperlink does not itself constitute a display of
the underlying work.
o But the courts take different theoretical approaches for getting there.
Are you persuaded by the Ninth Circuits plain language of the Act approach
(see p. 402 linked photographic images arent stored on the search engines
servers, so no display)?

Statutory Limitations on Exclusive Rights of Public Performance and Display

Privileges which allow uses without seeking permission or payment 110
o Note the difference between the 110 exemptions and fair use under 107
Vague/general versus list of specific/precise provisions
Compulsory licenses which dont require permission, but do require payment of
governmentally-set compulsory license fees for the uses.
o There are 5 compulsory licenses now (one is the cover provision of
115)

Copyright in Musical Works and Sound Recordings

Two copyrights in recorded music:
o Copyright in the musical work
Can include both musical notes and lyrics
o Copyright in the sound recording
Federal sound recording copyright dates only from 1972 (although
some states did provide protection under state law)
Protects the elements of original authorship that inhere in a fixed
recording of sounds
Sound recordings are fixed in phonorecords

66
 o Includes record albums, CDs, cassettes, digital files
Phonorecords reproduce both the underlying musical work and the sound
recording
Structure of copyright in music:
o 106(1) gives the owner of a copyright the exclusive right to reproduce the
copyrighted work in phonorecords.
However, that exclusive right is modified by the compulsory
license provision of 115 but not the way most creators of
sound recordings obtain permission to use musical works

Reproduction, Public Distribution, and Derivative Works

Musical Works and Section 115
Music publisher issues licenses to others:
o A mechanical license to a record company so the record company can
make recordings of the composition
Usually via the intermediary Harry Fox Agency
o A reproduction license to a sheet music printer to permit publication of
sheet music (which will be purchased by amateur musicians who want to
play the composition)
o A synchronization license to a movie studio to be negotiated between the
music publisher and the movie studio
Compulsory license for mechanicals under 115: Cover records applies
when:
o A musical composition that has been reproduced in phonorecords with
permission and has been distributed to the public may generally be
reproduced on other phonorecords by other persons if they notify the
copyright owner properly and pay a specified royalty.
Reality of mechanical licenses in act:
o The usual custom mechanical license from Harry Fox Agency, which
has staggering # of copyrighted works
Amount paid for this license is influenced by the existence of the
compulsory license parties negotiate in the shadow of the
compulsory license
o Cover performer has a limited right to arrange the work to fit his/her style
of performance
But this has been interpreted leniently by courts
Limitations on the 115 compulsory license
o Applies only to non-dramatic musical works
Generally, popular music
o Applies to digital phonorecord delivery (DPD) See 115(d)
o Does not apply to web streaming

67
Sounds Recordings and Section 114
Sound recordings were granted federal copyright protection only as of the Sound
Recording Act of 1971, which took effect on Feb. 15, 1972
o So pre-1972 sound recordings do not currently have federal copyright
protection If theyre protected at all, its under state law
o Note the Copyright Office recommendation to extend federal Copyright
Act protection to pre-1972 sound recordings.
Sound recording cr protects the elements of original authorship that inhere in a
fixed recording of sounds
o Sound recordings are fixed in phonorecords
Vinyl albums, cassettes, CDs, digital files
The compulsory mechanical license under 115 doesnt apply to sound recordings
Sound alikes/imitations not prohibited subject to same limit as the
reproduction right
o Even if the sound-alikes sound really similar
o Only protects against direct duplication of the recorded sounds
o A derivative work is created only when the actual sounds fixed in the
sound recording are rearranged, remixed, or otherwise altered in
sequence or quality

What is being registered What the author created

Performing arts work (musical work):
Song or other musical composition
Sound recording:
Sound recording only
Musical composition and sound
recording
Music and words, or music
Sound recording only
Music and sound recording or
Music, words, and sound recording

68
 Reproduction & Other Public
distribution in reprod/creation performance
phonorecords of deriv. works

Musical works Statutory right: Statutory right: Statutory right:

106(1) & (3) 106(1) & (2) 106(4)
Specific Rights Specific
limitations on administered by: limitations on
106 rights: Music publishers 106 rights:
115-compulsory 110-various
license limitations
1001-1008- Rights
AHRA administered by:
Rights ASCAP, BMI or
administered by: SESAC
Music publishers
Copyright office
(115 & AHRA)
Harry Fox Agency
Sound recordings Statutory right: Statutory right: Statutory right:
106(1) & (3) 106(1) & (2) 106(6)
Specific Specific Specific
limitations on limitations on limitations on
106 rights: 106 rights: 106 rights:
114(b)- 114(b)-actual 106(6) & 114(a)-
soundalikes not sounds must be digital audio
covered reproduced transmission only
1001-1008- Rights 114(d)-(j)-
AHRA administered by: exemptions and
Rights Record labels statutory license
administered by: Rights
Record labels administered by
Copyright office -Record labels
(AHRA SoundExchange
(114 statutory
license.

69
Sampling
Involves digitally copying and remixing sounds from previously recorded
albums
o When should sampling require the permission of the musical work cr
owner?
o When should it require the permission of the sound recording cr
owner?
Different approaches:
o Newton: Court adopts a de minimis use test as a limitation on the
familiar substantial similarity analysis
o Bridgeport: Rejects traditional, case-by-case approach in favor of a
comprehensive solution tailored to sampling.
Controversial w/r/t statutory interpretation and policy

Newton v. Diamond (9th Cir. 2005)

Facts: Newton was a jazz musician who composed and recorded a song. He sold
the rights to the sound recording to ECM. However, he retained the rights to the
composition. Years later, another band called the Beastie Boys (represented by Diamond)
sampled three notes from Newton's song, and used them in a tape-loop for one of their
songs. Diamond got the rights to the sound recording from ECM, but did not get any
rights from Newton (had sound recording license but not musical work license)
Holding: Diamond's use of the sample was de minimis - trivial copying does not
constitute actionable infringement under copyright law.
De minimis copying: the average audience would not recognize the appropriation.
o 3 notes was way too short for the average person to recognize that it came
from Newton's song.
Diamond had a license to use Newton's performance, he just didn't have a license
to use the underlying composition to be infringement, the sample had to be
such that the average person would recognize the notes were written by Newton.
o Newton had argued that his flute playing technique was unique and that
people could tell he was playing just by listening to how the notes were
sounded. But the Court found that didn't matter because it was only the
underlying notes that were the basis for the infringement claim.
Newton should probably have added annotations to his sheet music
so that his unique play style would have been described in the
underlying composition. That would have granted him the
protection he was looking for.
Notes:
Court adopts a de minimis use test as a limitation on the familiar
substantial similarity analysis
o Focusing on qualitative and quantitative significance of the taking
to the plaintiffs work as a whole
Example of a court using case-by-case development to address a modern
problem

70
Bridgeport Music v. Dimension Films (6th Cir. 2005)
Facts: Bridgeport and Westbound owned the copyrights to the musical
composition and sound recordings respectively, of a George Clinton song. A four second
long, three note sample from the song was taken and used in a tape loop for a rap song
included in the soundtrack of a movie owned by Dimension. Dimension had gotten
Bridgeport's license, but did not have a license from Westbound (sounds recording).
Holding: A defense of de minimis use should not be allowed when the defendant
has not disputed that it digitally sampled a copyrighted sound recording.
114(b) clearly gives the cr holder the exclusive right to prepare derivative works.
Distinguished this case from Newton v. Diamond
o In that case, the infringer had a license to the sound recording, but not the
underlying composition. In this case, Dimension had a license to the
underlying composition, but not the sound recording.
o The Court found that the difference was that it was very easy to prove that
someone sampled an actual sound recording.
Notes:
Rejects traditional, case-by-case approach in favor of a comprehensive solution
tailored to sampling.
o Controversial w/r/t statutory interpretation and policy

VGM Salsoul v. Ciccone (Supp. Pg. 9)

Question: Does the de minimis exception, which applies to claims of infringement
of musical compositions, apply to samples of copyrighted sound recordings?
Holding: Yes!
o Affirms applicability of de minimis analysis to music sampling
o Contra Bridgeport

Public Performance of Music

Musical Works and Performing Rights Organizations
Using the intermediary of the collective rights organizations (CROs) BMI,
ASCAP & SESAC the music publisher will issue blanket licenses to perform
the musical composition to radio/tv stations, restaurants and webcasters.
o Blanket licenses: flat fee for permission to perform any song in the
CROs catalog
CROs established to solve the transaction cost problems of trying to get payments
for public performances of musical works
o ASCAP, BMI, SESAC
CROs, as private organizations, set their rates per the market (by contrast to
compulsory licenses and royalty pooling arrangements)
Typically, a performer who wants to perform the musical composition enters into
a recording contract with a record company, in which he assigns his copyright in
the sound recording that will be produced to the Record Company.
o The terms of the record companys obligations to the performer are set out
in the recording contract.

71
 The record company is both the assignee of the sound recording copyright and a
licensee of a performance license in the musical composition from the music
publisher.
o The Record Company has to obtain a performance license from the
music publisher.

Public Performance of Sound Recordings by Digital Audio Transmission

Sound recording copyrights:
o Analog radio and TV broadcasters, as well as restaurants and other places
where music is played as entertainment, pay license fees only for
performance of the musical composition, and not for the performance of
the sound recording
Pay the music publisher (via the CROs), but not record company
Sound recordings not protected by general public performance right
o So DJ in nightclub, elevator music, jukebox dont need license to perform
sound recordings in most cases
But dont forget that they do have to have permission to perform
the underlying musical composition
EXCEPT that webcasters pay license fees both to the Music Publisher for the
musical composition, and to the Record Company for the performance of the
sound recording, per a statutory amendment giving sound recording copyright
owners rights with respect to digital audio transmissions.
Digital Performance Right in Sound Recordings Act of 1995 (DPRSRA), further
amended by the DMCA, provides a limited performance right in sound
recordings.
o Right limited to digital audio transmission.
114(j)(7): digital audio transmission performance right
Services that digitally perform sound recordings but are not interactive can utilize
114(d) statutory license
The core problem DPRA addressed has to do with market substitution: Congress
designed the 3-tier regime so that webcasts posing the greatest threat of market
substitution would require negotiated licenses.
3-tiered structure for categorizing digital transmissions based on their likelihood
of affecting phonorecord sales.
o Subject to liability exemptions under 114(d)(1) for certain transmissions
and retransmissions.
o Subject to statutory licensing under 114(d)(2).
o If service is interactive service, then licensing fee required to be paid to
copyright holders of sound recordings
o If service is not an interactive service, then licensing fee = statutory
licensing fee
o Note either way, a licensing fee has to be paid to the owner of the sound
recording copyright.
Webcasting interactive for purpose of DPRSA?

72
 o Arista v. Launch Media: a webcasting service that provided users with
individualized internet radio stations was not considered an interactive
service under 114(j)(7) because it did not allow the customer much
control.
Arista court reads interactive narrowly b/c it realizes how
drastically these services costs would increase if these services
were ruled interactive
o But in the meantime, while the litigation was pending, LAUNCHcast
changed its design to reduce its functionality!

Technological Disruption and the Future of Music

The complex cluster of music copyright rules isnt due to a top-down design
scheme
o Gradual process of reacting to technological change
Against a backdrop of incumbent industry players asking for increased protection
against disruptors of traditional business models
Increasingly against demands by other industries e.g., consumer electronics
industry for greater freedom to develop new technologies unfettered by
copyright industries.
No one is satisfied with the complex and technical provisions!

In Re Pandora Media (2014)

Copyright and Computer Software

Computer software as boundary issue: useful work or literary work?
o Early on, not clearly protected.
o CONTU characterizes as writing
o Thereafter the Copyright Act explicitly treated software programs as
literary works.
Software/hardware comparison:
o Remember that hardware can be designed to do whatever software does!
o First computers: largely special purpose machines hard-wired to perform
particular tasks
o Evolution: As cost of memory declined and it became clear that
computers could be used to solve many tasks, functionality moved from
hardware to software.
Software and the public goods problem:
o Software is expensive to develop, but cheap and quick to copy some
incentive is needed for its production.
First generation issues: literal infringement
o Literal copying of object code (Apple v. Franklin)
Second generation issues:
o Non-literal copying copying of program structure and interfaces
o CA v. Altai, Lotus v. Borland, Oracle v. Google

73
Source Code vs. Object Code
First generation issue
o Whether copyright law protects both source code and object code
o Where it should apply differently to operating system software and
application programs

Apple Computer v. Franklin Computer (3rd Cir. 1984)

Copying of literal code
Facts: Franklin copied Apples literal code to make its machine 100% compatible
w/ Apple. Franklin did not dispute that it copied Apple's software, but they argued that
the software was not copyrightable. Franklin argued that the operating system was a
method or process, and those aren't copyrightable. (Baker v. Selden). Franklin argued that
the only way to make their computer work was to copy Apple's operating system exactly.
Since there was only one expression that could be used to express that particular idea,
then the expression could not be copyrighted (merger).
Holding: 1) Object code copyrightable as literary work; 2) Operating system
programs are not uncopyrightable processes and will be treated the same as application
software; 3) No merger of idea and expression due to Franklins need for 100%
compatibility
Rejected the method/process argument and found that even though the operating
system was a set of instructions for making a computer work, it was still
copyrightable.
Even though the operating system was part of what made the computer work, the
statutory definition of a computer program in 17 U.S.C. 101 did not differentiate
between the operating system and other applications programs (which were
already held to be copyrightable).
Found that there was evidence suggesting that there were other possible ways to
write the operating system, so there wasn't a single expression, and the doctrine of
merger didn't apply.
Notes:
On the idea/expression dichotomy, the court adopted a very high-level, abstract
notion of idea, which left a lot of expressive possibilities
o If other methods of expressing that idea arent foreclosed as a practical
matter, then there is no merger
Court rejected total compatibility as the lynchpin of merger here because it
characterized compatibility as a commercial and competitive objective which
doesnt enter into the somewhat metaphysical issue of whether particular ideas
and expressions have merged.

74
Program Structure (Non-Literal Copying)
Second generation of cases
o Involves claims directed toward program structure
Rather than copying literal elements of the code, another programmer could copy
the structure of a program and write code in a different language from the original
o Would function in the same way but wouldnt copy the original
o Does the 2nd program infringe the cr in the first programs design?
Remember that there can be infringement of the reproduction right for literary
works even if the copying isnt precisely literal
o Otherwise, the infringer would be able to get away with copying so long
as s/he included immaterial variations
The plaintiffs argument: If a computer program is a literary work, then it too
must be protected against more than mere literal copying of the code.

Computer Associates v. Altai (2nd Cir. 1992)

Facts: CA wrote a computer program that would allow their scheduling software
to run on different kinds of computers. Altai sold a similar kind of scheduling software,
so they asked their programmers (who were kept segregated from CA's program), to
write a program with the same functionality, which they did. CA sued Altai for copyright
infringement.
Issue: Whether and to what extent the non-literal aspects of a computer
program are protected by copyright.
Holding: Those elements of computer programs that are necessarily incidental to
its function are unprotectable
Looked to Baker v. Selden, and noted that an idea cannot be copyrighted, only the
expression of that idea can be copyrighted.
Performed the Abstraction - Filtration - Comparison test and found that the
copyrightable elements from CA's program were not substantially similar to those
elements in Altai's program.
Abstraction - Filtration - Comparison test (substantial similarity test for computer
program structure)
o In Abstraction the court breaks up the program into different levels, from
very general to very specific.
E.g. Main purpose, program structure, modules, algorithms, data
structures, source code.
A program has structure at every level of abstraction at which it is
viewed.
At low levels of abstraction, a programs structure may be quite
complex, at the highest level, it is trivial.
o In Filtration, the court decides what components are absolutely essential
to fulfilling the abstract function of the program at the various levels.
Filter out everything that is dictated by:
Efficiency
o The more efficient a set of modules are, the more
closely they approximate the idea/process embodied
in that particular aspect of that programs structure

75
 o Whether the use of this particular set of modules is
necessary efficiently to implement that part of the
programs process being implemented.
Yes: Expression has merged with the
underlying idea and is unprotected
External factors
o Impossible to write a program to perform particular
functions without employing standard techniques.
o Programmers freedom of choice is often
circumscribed by extrinsic considerations (pg. 218)
Taken from the public domain.
o Comparison: Once a court has sifted out all the elements of the allegedly
infringed program which are ideas, or are dictated by efficiency or
external factors, or taken from the public domain, there may remain a core
of protectable expression.
Sift out all elements of the allegedly infringed program which was ideas of
dictated by efficiency or external factors, or taken from the public domain in order
to find "a core of protectable expression."
o Then focus on whether there are substantial similarities between any
elements within this core in the two programs.
Notes:
Policy conclusions:
o Extent of protection for non-literal program structure is not clear;
o Copyright is not ideally suited to deal with software.

User Interfaces
Software market is characterized by network effects.
o Value of a product in such a market grows as more people purchase it
Great old example: telephones!
Positive feedback effects and large first mover advantages in network markets.
(see p. 219)

Lotus Development v. Borland International (1st Cir. 1995)

Facts: Lotus developed software to make spreadsheets. Borland made competing
software. The Borland spreadsheet used almost identical menus and commands. Lotus
sued, but. Borland didn't copy any of Lotus' software, they wrote all the code themselves.
They just used the same menus and had the same commands and macros. Borland argued
that you couldn't copyright concepts like "cut" and "paste" and "print," you could only
copyright the underlying computer code. Those were just a method or process which are
not copyrightable under 102(b). (Baker v. Selden)
Holding: Lotus' menu commands were uncopyrightable because they were a
method of operation.
The menu commands are simply the method by which the user controls and
operates the program.
o Just tell the computer what to do dont just describe how to

76
 You can't copyright buttons on a VCR that say 'play' and 'record', and they
analogized that to Lotus' menus.
Concurrence:
Boudin suggests a privilege approach
o Here Lotus is trying to use copyright law as an anticompetitive measure to
prevent someone from commercializing a better product
Policy: The value of the menu over time lies in the users investments in learning
it.
o Protection is unattractive because the menu commands are for standard
procedures that Lotus didnt invent, and providing protection would lock
users into a program on the basis of investments they (and not Lotus)
made, while deterring the release of improved versions.
Notes:
It doesnt matter that there are other ways to design the menu command hierarchy,
because it is an uncopyrightable method of operation
Does Lotus v. Borlands approach undermine Apple v. Franklins theory for
software copyright?

Application Programming Interfaces (APIs)

Sets of instructions that allow programs to communicate with each other
o No communication to people at all
Example: Programmer writes an application program for Java using Javas APIs
o Doesnt need to write for the operating systems of the devices that the
program will run on (e.g., Windows etc.)
Oracle v. Google (2014)
Facts: Google copied 37 Oracle API packages. Sun, which had originally written
Java, was much more open than Oracle (which bought Sun) is. Google and Sun
unsuccessfully negotiated for a license for Google to adapt the entire Java platform for
mobile devices. When negotiations broke down, Google created its own virtual machine
(Dalvik) and copied Java APIs in order to make it easier for programmers to program
applications for Adroid. The problem is disintermediation/relevance Programmers
wont need the Java engine to write for Android so long as they can use the Java APIs
Issue: Whether Oracle can claim a copyright on Java APIs and, if so, whether
Google infringed that copyright
Holding: Qualified yes to both
The Copyright Act clearly provides protection to "original works of authorship
fixed in any tangible medium of expression".
The legislative history explains that literary works include "computer programs to
the extent that they incorporate authorship in the programmer's expression of
original ideas, as distinguished from the ideas themselves".
To qualify for copyright protection a work must be original. 17 U.S.C. 102(a).
o This explains why the court was "first to assess whether the expression is
original to the programmer

77
 o Google conceded "that the originality requirements are met" This led
the court to acknowledge "that the overall structure of Oracle's API
packages is creative, original, and resembles a taxonomy"
Reversed the district court on the central issue, holding that the "structure,
sequence and organization" of an API was copyrightable.
It also ruled for Oracle regarding the small amount of literal copying, holding that
it was not de minimis. The case was remanded to the district court for
reconsideration on the basis of the fair use doctrine.
Notes:
Controversial decision.
Is this a radical extension or simply application of existing 9th Cir. law to new
context?

Wrap up on computer software and copyright

For many, the right place for computer software protection is patent law rather
than copyright
But recent software patent cases (e.g., Alice Corp. Pty Ltd. V. CLS Bank Intl in
the Federal Circuit) may be shaking up software patents by cutting into the
circumstances in which software is eligible for patent protection (according to an
IP lawyer on a panel).
Some see this move (as well as Oracle v. Google) as opening the door to more
copyright protection of software
But there is still the possibility that fair use will be interpreted expansively (as in
protecting public interest in software interoperability) so copyright may not be the
safe harbor that patent lawyers might see in light of patent law developments

78
Indirect Infringement and Lawful Use
The Different Faces of Infringement
CR law has developed doctrines of direct and secondary liability to address who
should be liable when infringement occurs
The nature of the liability of those who commit the act that violates one of the cr
owners' 106 rights
o And under what circumstances should one who isn't a direct infringer but
somehow participates in the infringing conduct be liable?
Anyone who violates any of the exclusive rights of the copyright owneris an
infringer...) - 501(a)

Direct Infringement
Scope of direct infringement liability
o Doctrinal questions:
Who counts as a direct infringer in light of changed technology?
Liability via authorization?

Volition
Issue with volitional act approach
o If theres no liability for not monitoring, as opposed to monitoring but
missing an infringement, then isnt there a perverse incentive: not to
monitor?

Religious Technology Center v. Netcom On-Line Communication

Services (1995)
Facts: Erlich was a former Scientologist who was now critical of the group. He
posted some Scientology documents in an internet newsgroup BBS. The Scientologists
informed Erlich that he was infringing on their copyright. In addition to sending notice to
Erlich, they also notified Klemesrud, who owned the website Erlich used to post the
documents, as well as Netcom, which was Klemesrud's internet service provider, and told
them to block Erlich. After Klemesrud and Netcom took no action to block Erlich, the
Scientologists sued everybody for copyright infringement. The Scientologists argued that
when Erlich uploaded the documents, they were temporarily stored on Klemesrud's
computer, then copies were made and sent by Netcom to places all over the internet. That
would be a violation of the Scientologists' right to reproduce, the right to distribute, and
the right to publicly display under 106.
Holding:
Infringement consists of the unauthorized exercise of one of the exclusive rights
of the cr holder delineated in 106 (501)
o Direct infringement doesn't require intent or a particular state of mind,
but willfulness is relevant to the award of statutory damages (504(c))
Under MAI, copies were created and they were sufficiently fixed to constitute
recognizable copies under the Act

79
 The storage on a D's system of infringing copies and retransmission to other
servers is not a direct infringement by the BBS operator of the exclusive right to
reproduce the work where such copies are uploaded by an infringing user
o The copying that occurred between the computers on the internet was
incidental to Erlich's intentional copying of the documents to the internet.
o BBS and Netcom are like photocopy machine where public makes copies.
o Even though 106 is a strict liability statute, there should be some element
of volition or causation which is lacking where a D's system is merely
used to create a copy by a third party
Netcom and the BBS aren't liable for infringement of P's exclusive right to
publicly distribute and display copies of its work
o Where the BBS merely stores and passes along all messages sent to its
subscribers, the BBS shouldn't be seen as causing these works to be
publicly distributed or displayed
o Netcom merely provides access to the internet doesn't supply a product
or create/control the content of the information
Notes:
Concerned about "holding the entire internet liable"
The court concluded that triable issues of fact remained as to both knowledge and
ability to control re: vicarious liability
No causation but yet they said that monitoring was technically possible
BBS operators are like owners of photocopy machines who allow uses some of
which might be infringing.
o But remember that bookstores are liable for infringing distribution!

Cartoon Network LP v. CSC Holdings, Inc. (2008)

Facts: (Same as before) D, a cable-television operator, planned to implement a
new digital-video recorder (DVR) system that would allow customers to record cable-
television programs on remote hard drives managed by Cablevision. The system would
be known as Remote Storage DVR (RS-DVR) and would require small segments of each
cable program to be sequentially reproduced during a buffering process prior to storage.
These segmented copies would exist for no more than 1.2 seconds before being placed
into storage.
Issue: After a RS-DVR subscriber selects a program to record, and that program
airs, a copy of the program resides on the hard disks of Cablevision's Arroyo Server
Who made this copy?
o If Cablevision Direct infringement
o If the customer Cablevision would face at most secondary liability
Holding: The district court erred in holding that Cablevision, rather than its RS-
DVR customers, makes the copies carried out by the RS-DVR system
Netcom ^ was a rational interpretation of 106 not just applicable to ISPs
When there's a dispute as to the author of an infringing instance of reproduction,
look to the volitional conduct that causes the copy to be made (Netcom)
o Here two instances of volitional conduct: Cablevision's designing a system
that exists only to produce a copy and the customer in ordering that system
to produce a copy of a specific program

80
 o VCR the operator of the VCR who presses the button supplies the
necessary element of volition
RS-DVR customer isn't sufficiently distinguishable from a VCR
user to imposes liability as a direct infringer on a different parties
for copies that are made automatically upon that customer's
demand
Cablevision is like a store proprietor who charges people to use a photocopier on
his premises doesn't "make" copies when his machine is operated
Cablevision's discretion in selecting the programming that's available for
recording isn't enough to displace the customer as the person who "makes" the
copies
Notes:
Cablevision too is likened to a store proprietor who charges his customers to use a
photocopier on his premises
o Its discretion in selecting the programming to make available for recording
doesnt mean that it displaces the customer as the person who actually
makes the copies.

Infringement by Authorization
106: the owner of the cr has the exclusive rights to do and to authorize
o Congress added the words "to authorize" to section 106 to confirm its
intent that contributory infringers be liable under the Act
In many cases, the question whether authorization of an infringing act constitutes
direct infringement is irrelevant
o The court will hold the D liable for contributory infringement
An action in the US based on contributory infringement must be based on an act
of direct infringement that is cognizable under US law
o Courts are divided on whether a P may successfully sue for direct
infringement based on the authorization to commit acts abroad

Vicarious Liability and Contributory Infringement

History of Secondary Liability
The 1909 Act didn't mention liability for acts committed by one other than the
direct infringer
In many cases a D may be held both vicariously and contributorily liable
o But remember that there can be no secondary liability in the absence of
primary liability
There must be a direct infringer for there to be a possibility of a
secondary infringer

Vicarious liability:
Theoretical basis in respondeat superior doctrine- in certain circumstances, a
principal may be held liable for an agent's acts

81
 Employer/employee and landlord/tenant contexts and in cases against owners of
venues for infringement by performers
o "Right and ability to supervise" together with "an obvious and direct
financial interest in the exploitation of copyrighted materials" (Shapiro,
Bernstein, & Co. v. H.L. Green Co)
Regardless of actual knowledge
Elements of vicarious liability:
o 1) direct infringement occurred
o 2) defendant directly benefited financially from the infringement
Either b/c defendant gets a cut of the infringing transaction, or b/c
the infringing transactions are a draw
o 3) defendant had the right and ability to control the infringers acts.
Look at K
Knowledge is not an element.
Could control, but no direct financial benefit, so no vicarious infringement b/c
fees fixed.

Contributory infringement:
Theoretical basis in tort law, particularly joint and several liability
o "One who, with knowledge of the infringing activity, induces, causes, or
materially contributes to the infringing conduct of another" (Gershwin
Publishing corp. v. Columbia Artists Management)
Elements of contributory infringement:
o 1) direct infringement occurred
o 2) defendant had actual or constructive knowledge of infringing activity
Knowledge not based on mere assertions of infringement by
plaintiff; probably no knowledge if possible fair use, for e.g.
Apparently also knowledge inferred from red flags
o 3) defendant induces, causes or materially contributes to infringement
A showing that defendant induces, causes or materially contributes
to the infringement:
Providing venue/facility even for automatic distribution could be
considered material contribution
Knowledge = notice + failing to take measures to prevent

Contemporary Approaches to Secondary Liability

Fonovisa Inc. v. Cherry Auction Inc. (1996)
Facts: P owns cr's and trademarks in Latin music recordings. D operates a swap
meet vendors pay it a daily rental fee to get a booth space. D can exclude vendors at
any time and also gets an entrance fee for each customer who attends the swap meet. No
dispute that D was aware that vendors were selling counterfeit recordings in violation of
P's rights.
Holding: District court erred in holding that D here was with respect to both
control and financial benefit in the same position as an absentee landlord who has
surrendered its exclusive right of occupancy in its leased property to its tenants

82
P has a claim for vicarious copyright infringement
Although the Act doesn't expressly impose liability on anyone other than direct
infringers, courts have long recognized secondary liability in certain
circumstances
Shapiro court didn't think vicarious liability was unduly harsh nor unfair because
the store proprietor has the power to cease the conduct of the concessionaire, and
because the proprietor derived an obvious and direct financial benefit from the
infringement
o Even though D was unaware of the infringement
Gershwin even in the absence of an employer-employee relationship if: right
and ability to supervise and direct financial interest
D had control: the right to terminate vendors the ability to control the activities
on the premises, promoted the swap meet controlled the access of customers to
the area
D has sufficient direct financial benefit: even though it doesn't get a commission,
it gets substantial benefit from admission fees, concession stand sales, and
parking fees, all of which flow directly from customers who want to purchase the
counterfeit recordings
P has a claim for contributory infringement
Directly contribute to another's infringement should be held accountable
Knowledge is obvious in this case, question of whether D materially contributed
o Sufficient because D provided the support services necessary for the
infringing activity to take place in the massive quantities alleged: space,
utilities, parking, advertising, plumbing, and customers
o Not passive participation providing the site and facilities for known
infringing activity is sufficient to establish contributory liability
Notes:
Takes an expansive interpretation of both contributory and vicarious liability
Seems to say that indirect profits that are sufficiently large or predictable count as
direct profits.

Perfect 10, Inc. v. Amazon.com, Inc. (2008)

Facts: (Same as above pg. 65) Search engines thumbnail pictures that facilitate
access to infringing images
Holding: Computer system operator can be held contributorily liable if 1) it has
actual knowledge that specific infringing material is available using its system and 2) it
can take simple measures to prevent further damage.
Contributory infringement
A computer system operator can be held contributorily liable if it "has actual
knowledge that specific infringing material is available using its system"
(Napster) and can "take simple measures to prevent further damage" (Netcom)
Uses Gershwin rule
In Napster and Netcom: a service provider's knowing failure to prevent infringing
actions could be the basis for imposing contributory liability
o Intent may be imputed

83
 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
Vicarious Infringement
P must establish control and direct financial benefit
P hasn't established that Google has the legal right to stop or limit the direct
infringement of 3rd party sites
o Google lacks the practical ability to police the third party sites' infringing
conduct
o Failure to change its operations isn't the same as declining to exercise a
right and ability to make third party websites stop their direct infringement
Notes:
Contribution to the infringement must be material
Unlike Fonovisa, where Cherry Auction had broad Ks with its vendors, Google
doesnt have Ks w/ 3rd party websites

Perfect 10 v. Visa: Tertiary liability extension

Secondary liability claim: Perfect 10 argued that the credit card
companies/banks/processing companies continued to process credit card
payments to websites that infringed Perfect 10s copyrights, despite notification
of infringement
Contributory infringement:
o The credit card companies dont materially contribute to the infringement
because they have no direct connection to it.
o But is direct connection a traditional part of the test for contributory
infringement?
How is the holding as to CI consistent with Perfect 10 v. Amazon?
o Court says that Google search engine itself assisted in the distribution of
infringing content, whereas the credit card companies payment systems
dont.
o They make it easier for infringement to be profitable, but dont help users
locate and download infringing images.
o Infringement could still continue without credit card payments in the
current form.
Vicarious infringement:
o Defendants have no ability to directly control the infringing activity
Mere ability to withdraw a carrot is not enough
o Finding liability here would be radical
J. Kozinski, in dissent:
o Re: contributory infringement:
Credit card companies are providing an essential step in the
infringement process
o Re: vicarious infringement:
Defendants profit from the infringements

84
 They have the K right to force removal of infringing material as a
precondition of using their payment systems.
Even if the pirates might find some other way to do business, and
therefore the cards cant stop infringement altogether, they can
diminish the scale

Device Manufacturers and Liability for Inducing Infringement

Problem of dual use technologies: What should we do when the D sells a product
or service that has both legal and illegal uses?
Device manufacturers
o Unlike banks and credit cards, manufacturers of disruptive technologies
that used for illegal copying are more directly involved in the effectuation
of the illegal activity.
o If/when these manufacturers should be held liable under principles of
secondary liability.

Sony v. Universal
Facts: Sony Corporation of America manufactured and sold the "Betamax" home
video tape recorder (VTR). Universal City Studios owned the copyrights to television
programs broadcast on public airwaves. Universal sued Sony for copyright infringement,
alleging that because consumers used Sony's Betamax to record Universal's copyrighted
works, Sony was liable for the copyright infringement allegedly committed by those
consumers in violation of the Copyright Act.
Issue: Does Sony's sale of "Betamax" video tape recorders to the general public
constitute contributory infringement of copyrighted public broadcasts under the
Copyright Act?
Holding: No, the sale of the VTR's to the general public does not constitute
contributory infringement of Universal's copyrights if the product is widely used for
legitimate, unobjectionable purposes.
There was a significant likelihood that a substantial number of copyright holders
who license their works for free public broadcasts would not object to having
their broadcasts time-shifted by private viewers and that Universal failed to show
that time-shifting would cause non-minimal harm to the potential market for, or
the value of, their copyrighted works.
"[T]he sale of copying equipment...does not constitute contributory infringement
if the product is widely used for legitimate, unobjectionable purposes, or, indeed,
is merely capable of substantial noninfringing uses."
VCR passed COSNIU test
o Time shifting
o Fair use copying
Notes:
COSNIU test: Capable of substantial non-infringing uses?
Two strands of contributory infringement liability revealed
o Liability based on actual knowledge of specific non-infringing uses

85
 o Liability based on imputed knowledge when an instrumentality is not
capable of substantial non-infringing uses.
How to apply Sony in the context of digital technologies
First battleground P2P file sharing (Napster, Aimster, Grokster)

P2P provides 2 user benefits:

1) decentralization increases Copyright owners see mostly
potential of Internet as an detriment: a decline in the
informational tool; 2) free
gatekeeping function of centralized
access to copyrighted music access points at the very moment
that perfect digital copies and
instantaneous transmission invite
wide-scale infringement

A&M Records v. Napster

Facts: Napster was sued by several record companies. Napster provided a
platform for users to access and download compressed digital music files, specifically
MP3s, from other users' machines. Unlike many peer-to-peer services, however, Napster
included a central server that indexed connected users and files available on their
machines, creating a searchable list of music available across Napster's network.
Napster's ease of use compared to other peer-to-peer services quickly made it a popular
service for music enthusiasts to find and download digital song files for free.
Holding:
Contributory liability when a computer system operator is notified of specific
infringement + has the ability to purge the infringing files
Vicarious liability b/c financial benefit from ad sales + right/ability to control
infringement.
9th Circuit acknowledged the Sony rule and said it would shield the development
and distribution of Napsters software, but once Napster received notice of
specific infringing files, its actual knowledge could support an obligation to block
exchange of the files to police its system.
Notes:
Post-Napster P2P companies:
o 1) They made efforts to capture the Napster market and satisfy the demand
for infringing music sharing
o 2) They adopted both business models and marketing strategies designed
to accomplish # 1
o 3) They did not focus their technical architecture and design on reducing
infringement
Does the sheer volume of infringing copying enabled by P2P software warrant
refinement/elimination of the Sony test, at least online?

86
In re Aimster
Facts: Recording industry owners of copyrights in musical performances brought
contributory and vicarious infringement action, a type of secondary liability, against a
website operator called Aimster, a company like Napster, which facilitated the swapping
of digital copies of songs over the internet.
Holding: 7th Cir. found contributory infringement liability
Encryption-based strategy = willful blindness
Aimsters software tutorial = an invitation to infringement
Narrow COSNIU reading
Narrow interpretation of Sony
Even if there is a showing of non-infringing uses, defendant has to show that it is
disproportionately costly to eliminate or reduce infringing uses in order not to
be found contributorily liable.

MGM Studios v. Grokster (S.C.)

Facts: Grokster and other companies distributed free software that allowed
computer users to share electronic files through peer-to-peer networks. In such networks,
users can share digital files directly between their computers, without the use of a central
server. Users employed the software primarily to download copyrighted files, file-sharing
which the software companies knew about and encouraged. The companies profited from
advertising revenue, since they streamed ads to the software users. A group of movie
studios and other copyright holders sued and alleged that Grokster and the other
companies violated the Copyright Act by intentionally distributing software to enable
users to infringe copyrighted works.
Issue: Were companies that distributed file-sharing software, and encouraged and
profited from direct copyright infringement using such software, liable for the
infringement?
Holding: Yes;
Companies that distributed software, and promoted that software to infringe
copyrights, were liable for the resulting acts of infringement.
Although the Copyright Act did not expressly make anyone liable for another's
infringement, secondary liability doctrines applied here.
o The software in this case was used so widely to infringe copyrights that it
would have been immensely difficult to deal with each individual
infringer.
The "only practical alternative" was to go against the software distributor for
secondary liability.
Here the software companies were liable for encouraging and profiting from
direct infringement.
Showing of non-infringing uses but not actual knowledge infringing uses
Notes:
Adds a third strand of contributory infringement liability: inducement
o Based loosely on bad intent
Grokster structured its architecture to avoid any centralization no knowledge
and no ability to control

87
 Much more protective of new technology than the 7th Cir. in Aimster
Avoided reversing or amending Sony
o But grounded liability based on inducement instead
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.
What is not enough to justify secondary liability under Grokster?
o 1) Mere knowledge of infringing potential or of actual infringing uses
o 2) Ordinary acts incident to product distribution e.g., offering
technical support or product updates in themselves
o 3) Failure to take affirmative steps to prevent infringement, in itself, if the
device is otherwise capable of substantial non-infringing uses & there is
no evidence of bad intent.

OSP Liability & Qualified Statutory Immunity

OSP concern about potential of huge liability for perceived deep pockets
Legislative compromise between telecom lobby and copyright industries lobby:
512 safe harbor
o Immunity from infringement liability for service providers that engage in:
1) transitory digital network communication
Passive transmission conduit
2) system caching
3) storing information on its systems at the direction of users
4) providing information location tools such as hypertext links.
Definition of service provider varies depending on which safe harbor is invoked
(512(k)(1)
Requirements per safe harbor : An OSP must comply with detailed statutory
requirements (differing for each safe harbor) to be covered by the safe harbors.
o Overall requirements: Plus, with respect to all safe harbors, an OSP must:
o 1) not interfere with standard technical measures applied by copyright
owners to protect their works, and
o 2) reasonably implement a policy to terminate repeat infringers accounts.
Most important safe harbor?
o Probably immunity from liability for infringing material hosted on an
OSPs servers on behalf of subscribers
Note: it does not shelter an OSP to whom vicarious liability would
attach
Section 512 = intensively negotiated and complex.
o Intended to be a careful balancing act to provide protection against
monetary remedies for those ISPs who acted responsibly.
o Over the years, it was exported widely as a model including to the EU,
Japan and China.

88
 Notice and take-down provision 512(c)
o OSP immunity for storage if they have notice, comply with take-down
procedure and dont have 512(c)(1)(a) specific knowledge or financial
interest under 512(c)(1)(b)
o Procedure allows for notification of takedown and counter-notification by
the subscriber
Limitation of liability for material posted by a subscriber (or linking) is
conditioned upon a lack of knowledge
o Once OSP has knowledge, OSP must remove the material
o Knowledge can be triggered by notice
Upon notification from the copyright owner of claimed
infringement, the OSP must respond expeditiously to remove or
disable access to the material claimed to be infringing.
o OSP must act in good faith and take reasonable steps to notify the
subscriber that it has removed or disabled access to the material
o If the subscriber sends the OSP a counter- notification that there has been
a mistake or misidentification of the material , OSP must promptly
notify the copyright owner that it will replace the material in 10 business
days
OSP must then replace the material not less than 10 nor more than
14 business days after receipt of the counter notification, UNLESS
the copyright owner sends notice that it has filed an action seeking
a court order to restrain the subscriber
Problems with notice and takedown
o Abusive notices:
Notices are used to target competitors content, critical speech,
and claims masquerading as copyright but really grounded in
trademark or privacy.
o The counter notice provisions are said to be ineffective.
o The safest thing for an ISP to do is comply, even with problematic
notices.
Pitfalls of the 512(c) and (d) safe harbors
o Designating an agent
Invites notices
o No safe harbor from vicarious liability
Elements:
Right and ability to control the activity, and
Receives a financial benefit directly attributable to the
infringing activity
See 512(c)(1)(B) & 512(d)(2)

89
Viacom v. Youtube (2nd Cir.)
Facts: Viacom and other copyright holders alleged direct and secondary
copyright infringement based on the public performance, display, and reproduction of
about 79,000 audiovisual clips shown on the YouTube (Defendant) website, an online
video sharing service. The plaintiffs (Plaintiff) argued that YouTube (Defendant) was not
entitled to safe harbor protection under the Digital Millennium Copyright Act (DMCA)
for airing the clips because, as plaintiffs (Plaintiff) claimed, YouTube (Defendant) was
aware or chose a blind eye to the fact that these clips did indeed infringe on the plaintiffs
(Plaintiff) copyrights.
Holding: Reversed a win for Viacom
The 512 safe harbor of the Digital Millennium Copyright Act (DMCA) requires
knowledge or awareness of specific infringing activity.
o The 512 (C)(1)(A) safe harbor does not apply if the service provider has
actual knowledge or red flag knowledge of infringing activity
o Affirmed the District Courts holding that actual knowledge refers to
knowledge of specific and identifiable infringements.
The common law willful blindness doctrine may be used to show knowledge or
awareness of specific instances of infringement under the DMCA.
o On the one hand, the court said that willful blindness in the context of the
DMCA cannot be interpreted as a general monitoring duty.
o But on the other hand, the court held that willful blindness doctrine may
be applied in appropriate circumstances, to demonstrate knowledge or
awareness of specific instances of infringement under the DMCA.
o [w]hether 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.
A service provider has the right and ability to control infringing activity under
512(c)(1)(B) of the DMCA whether or not an item-specific knowledge of
infringing activity exists.
o Concludes that the control provision is not equivalent to the common law
of vicarious liability
o The right and ability to control infringing activity requires something
more than the ability to remove or block access to materials posted on a
service providers website.
As for red flag knowledge, the court rejected Viacoms argument that the
term refers to generalized knowledge of infringement.
o Instead, actual knowledge is subjective knowledge of specific
infringement,
o 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.
Notes:
Interprets safe harbor #3 in 512(c)
Evidence showed the massive scope of infringing content on YouTube
Despite remand, many people saw this as a huge win for YouTube

90
Lenz v. Universal Music Corp (Supp.)
Facts: The Electronic Frontier Foundation (EFF) filed suit against Universal
Music Publishing Group (UMPG) asking a federal court to protect the fair use and free
speech rights of a mother who posted a short video of her toddler son dancing to a Prince
song on the Internet. Stephanie Lenz's 29-second recording shows her son bouncing
along to the Prince song "Let's Go Crazy " which is heard playing in the background.
Lenz uploaded the home video to YouTube in February to share it with her family and
friends. YouTube then informed Lenz that it had removed the video from its website after
Universal claimed that the recording infringed a copyright controlled by the music
company. Under federal copyright law a mere allegation of copyright infringement can
result in the removal of content from the Internet.
Issue: Does 512(c)(3)(A)(v) require a copyright owner to consider the fair use
doctrine in formulating a good faith belief that the use of material is unauthorized by
law?
Holding: The statute requires cr holders to consider fair use before sending a
takedown notification. In this case, theres a triable issue as to whether the cr holder
formed a subject good faith belief that the issue was not authorized by law

Fair Use
Fair use doctrine is a general limit that applies to all cr rights, including those
rights that are also subject to more specific exceptions
107 simply enumerates factors for courts to consider in making fair use
determinations
o "[F]or purposes such as criticism, comment, news reporting, teaching,
scholarship, or research"
o Factors: purpose and character of the use (commercial vs. nonprofit),
nature of the copyrighted work, amount and substantiality of the portion
used, the effect of the use upon the potential market for or value of the
copyrighted work
Fair use is an equitable rule of reason and each case is determined on its own facts
o Also depends on the normative theories relied on by the court

Cultural Interchange
Many of the uses described in the preamble to 107 further the development of a
common culture
o All promote the progress of learning and the arts help to produce a
public that is educated and informed
o But how far should fair use privileges extend in the name of cultural
progress and the dissemination of knowledge?

91
Classic Cases
Harper & Row, Publishers v. Nation Enterprises (SC 1985) *
Facts: In 1977, former President Gerald Ford contracted with Harper & Row,
Publishers, Inc. to publish his memoirs. Harper & Row negotiated a prepublication
agreement with Time Magazine for the right to excerpt 7,500 words from Ford's account
of his pardon of former President Richard Nixon. Before Time released its article, an
unauthorized source provided The Nation Magazine with the unpublished Ford
manuscript. Subsequently, The Nation, using approximately 300 words from the
manuscript, scooped Time. Harper & Row sued The Nation, alleging violations of the
Copyright Revision Act of 1976.
Holding: Not fair use
Is the purpose and character of the use commercial or non-commercial?
Court shouldn't determine what is "news" but D sought to exploit the
headline value of its infringement
Look at whether the user stands to profit from exploitation of the
copyrighted material without paying the customary price
o D's goal was to scoop competitors and sell more magazines
that's a commercial use.
D tried to argue that the public had an interest in learning this news as fast
as possible but this would destroy any cr protection for public figures
The nature of the copyrighted work.
While the Court agreed with D that the law generally recognizes a greater
need to disseminate factual work, D went beyond conveying just facts and
focus on the most expressive elements of the work
The scope of fair use is narrower with unpublished works
The amount of the original work used.
D didn't take a substantial portion, but the portion that he did take was
qualitatively substantial took the most powerful passages
Can't excuse yourself by showing how much you didn't take
The effect on the potential market.
Court says it's the most important element Fair use is limited to
copying that doesn't materially impair the marketability of the work
Actual damage Time cancelled its projected serialization
To negate fair use, one can show that it would adversely affect the
potential market for the work (including derivative works)
"A use that supplants any part of the normal market"
Notes:
Court seems to be focusing a lot on the fact that the manuscript was unpublished
and that D acted in bad faith but not statutory factors
Should this matter?
Looked at intended purpose
"Fair use presupposed good faith and fair dealing"
Dissent:
This is too narrow of a definition for fair use
Court focuses too much on protecting the owner's economic interest
Only 300 out of 200,00 words and factual, historical information

92
Campbell v. Acuff-Rose Music, Inc. (SC 1994) *
Facts: Acuff-Rose Music, Inc. sued 2 Live Crew and their record company, claiming
that 2 Live Crew's song "Pretty Woman" infringed Acuff-Rose's copyright in Roy
Orbison's "Oh, Pretty Woman."
Holding: Fair use
Parodies could be covered by fair use, depending on the circumstances
o Courts shouldn't apply the statute rigidly when it would stifle the creativity
the doctrine is supposed to encourage
The four factors should be weighed together, in light of the purposes of copyright
Is the purpose and character of the use commercial or non-profit and educational?
o To what extent is the new work transformative? Does it supersede the
original work or does it add something new?
Transformative fair use promotes science and the arts and thus the
purpose of copyright
The more transformative the work, the less significant the other
factors are
o Parody has an obvious claim to transformative value uses some
elements of the old work to create a new one that comments on the old
author's work
Needs to mimic an original to make its point
o D's song could be perceived as parody comments on the
original/criticizes it through a joinder of reference and ridicule
o Can't give dispositive weight to whether it's commercial vs. non-profit
The nature of the copyrighted work.
o The original song falls within the core of the cr's protective purposes
but most things typically will so this isn't much help when it comes to fair
use
The amount of the original work used.
o The Court found that Campbell had used the original work, but it can only
be parody if you can recognize the original material. (On the other hand,
satire doesn't require recognition of the original material)
o Even if they took the "heart" of the song, copying doesn't become
excessive in relation to parodic purpose merely because the purpose that
was taken was the original's heart
o But context is also important D copied the first line, but then used his
own lyrics
The effect on the potential market.
o When the second use is transformative, market substitution is less certain
and market harm can't be readily inferred
Not likely that a parody will affect the market for the original
not acting as a substitute and will prob serve a different market
function
o Difference between criticism and copyright infringement
o However, if Acuff-Rose could show that they lost the chance to sell the
rights to another parodist because of Campbell's version, then they might
have

93
Transformative use beyond parody

Castle Rock Entertainment v. Carol Publishing Group ( 2d Cir. 1998)

Facts: Castle Rock made a popular tv show called Seinfeld. Carol published a
book of containing trivia questions and answers related to the tv show.The book
referenced specific episodes, characters, and events of the show, and directly copied lines
of dialogue. Castle Rock sued for copyright infringement. Castle Rock argued that the
book was a derivative work, and that only the copyright holder has the right to authorize a
derivative work. See 17 U.S.C. 106(2). Carol argued that Castle Rock owned the
copyright on a tv show, not a trivia book. Carol argued that the format of the book was so
different than the show, and that the book contained original research and expression,
therefore there was no substantial similarity between the two works. Basically, Carol
argued that under the total concept and feel test the two works were not substantially
similar because they had totally different themes, sequence, pace, etc.
Holding: Not fair use.
Purpose/character of the use
o Commercial use but that's not the most important point
o Most important q. is whether it supersedes the original work or adds
something new whether it's transformative
Not transformative doesn't educate, criticize, or comment on
instead repackages the show to entertain views
"So minimally alters Seinfeld's original expression"
The nature of the copyrighted work.
o Fictional works, like Seinfeld have greater protection than facts
The amount of the original work used.
o The Court found that Carol's book copied the original more than necessary
to "further the purpose and character of the use." (Campbell)
o 643 trivia questions to make a straightforward point entertainment, not
commentary
The effect on the potential market.
o Whether the secondary use usurps or substitutes for the market of the
original work (Campbell)
o D's book substitutes for a derivative market that P "would in general
develop or license others to develop" (Campbell)
o Likely to fill a market niche that P would in general develop

Bill Graham Archives v. Dorling Kindersley, Ltd. (2d Cir. 2006)

Facts: P owned the copyright in images on Grateful Dead event posters and
tickets, and contended that D infringed its copyright by publishing seven of the images in
reduced size in a book on the history of the Grateful Dead.
Holding: Fair use
Purpose and character of the use
o D's actual use of each image is transformatively different from the original
expressive purpose
Biographical vs. artistic expression and promotion

94
 o Used the minimal size for the images, minimized the expressive value by
putting the images in a collage (for presentation, not commercial gain),
small amount of cr material in book vs. large amount of other material
(insignificant taking), not exploiting images for commercial gain (ads,
promotions, etc.)
o Frequent fair use protection for the use of copyrighted work in biographies
Nature of the copyrighted work
o The images are creative works but this factor has limited weight b/c D's
purpose was to emphasize the historical rather than creative value
Amount and substantiality of portion used
o Reduced size and layout of book limited visual impact of the images'
artistic expression
Effect on the market
o P established a market for licensing its images but this doesn't show
impairment to a traditional market
Notes:
Being denied permission to use a work doesn't weigh against a finding of fair use

Cariou v. Prince (2d Cir. 2013)

Facts: P is a professional photographer who published a book of his photographs
of Rastafarians in Jamaica. D is a well-known appropriation artist who created a photo
series of approximately 30 artworks. In his artworks, D used varying amounts of Ps
images and incorporated them into his art. D displayed the series in a gallery and
published and sold an exhibition catalog from the show. A gallery owner decided not to
do a gallery show with P after seeing Ds work because that type of show had been done
already.
Holding: Fair use for 25 of them, remand for the other 5
CR is designed to stimulate activity and progress in the arts for the intellectual
enrichment of the public Fair use is necessary
o Not about giving authors absolute ownership
The manner in which the copied work is used
o Supersedes vs. transformative
o No requirement that a work comment on the original or its author to be
transformative
o Alter the original with new expression, meaning, or message (Campbell)
o 25 of the artworks are transformative different composition,
presentation, scale, color palette, and media
How the work appears to the reasonable observer, not necessarily
about what an artist says
Effect on the market
o 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)
Where the infringers target audience and the nature of the
infringing content is the same as the original

95
 o Gallery owner didnt put on the show b/c she thought P was already
working with D
o Ps work and Ds work have different audiences no evidence that Ds
work touching the primary or derivative market for Ps work
Nature of the copyrighted work
o Ps work is creative and published but this is less important when its
being used for a transformative purpose
Amount and substantiality used in relation to the whole
o Whether the quantity and value of the materials used are reasonable in
relation to the purpose of the copying (Blanch)
o The law doesnt require that the 2nd artist take no more than is necessary
(Campbell)
2nd work has to use at least enough of the original to fulfill the
transformative purpose
o Quality and importance to the original work (Campbell)
D used key portions of certain photographs but the photographs
were transformed
5 of the photographs might not sufficiently differ from Ps photos to be
transformative
o Minimal alteration not sure if new expression, meaning, or message
(Campbell)

Best Practices Guidelines

Cr litigation is expensive many people want an ex ante way to look at fair use
to avoid litigation
Several groups have sought to establish voluntary, industry-specific fair use
guidelines
o Example on page 599
Unclear to what extent courts will be willing to rely on these guidelines to aid in a
determination in any case
Approach with skepticism
o Creates a voluntary negotiated area where "responsible users" and
"responsible owners" have reached some type of market agreement
regarding level of tolerated use
But what about the person that is innovative? Fair use isn't
supposed to be a market-negotiated, arbitrated decision about use
Some market skew at play but people don't notice because it's
workable
o Potentially an overbroad impact on judicial determinations as reflection of
norms without recognition of limits/contestation

96
Fair Use and the First Amendment
Harper & Row Court rejected Ps argument that the 1st Amendment should
afford it a separate defense to cr infringement
o Freedom of thought and expression includes both the right to speak
freely and the right to refrain from speaking at all
o Both the idea-expression distinction and the fair use doctrine embody 1st
protections
Suntrust Bank v. Houghton Mifflin The Wind Done Gone was a highly
transformative parody of Gone with the Wind
o Characterized cr and the 1st as working toward the shared goal of
preventing censorship
Courts must remain cognizant of the 1st Amendment protections
interwoven into cr law
o Unusual case courts generally decline to give 1st Amendment
considerations separate and independent weight

Fair Use in Technology and in Institutional Settings

A court is more likely to take a favorable view of uses that are reasonable and
customary, whether under an implied consent theory or under a more general
theory of socially acceptable conduct
A court is more likely to excuse a use as fair if it is transformative, altering the
original to add new expression or a new message
Uses of copyrighted content enabled by new technologies test the boundaries of
both approaches ^
o Not the subjects of established custom, and often dont align with accepted
understandings of what makes a use transformative in nature

Technical Interchange
In order for computer programs to accomplish the tasks for which they were
designed, they typically must interoperate with one another
Achieving interoperability with a preexisting computer program often requires
copying elements of that program
o If the program is distributed in object code only, programmers engage in
decompilation converting the program from zeros and ones into human-
readable commands
Necessarily involves making copies of large portions of the
copyrighted work
o The eventual new program may be one that works with the copyrighted
work, or one that substitutes for it.

97
Sega Enterprises, Ltd. V. Accolade, Inc. (9th Cir. 1992)
Facts: Sega made video game consoles and licensed the rights to third-party
video game developers to make games for their console. Accolade wanted to sell their
games for the Sega console but didn't want to pay Sega's licensing fee. They figured out
how to get their games compatible with the Sega console and started selling them.
Accolade got some Sega consoles, reverse engineered how the computer chips worked,
and then created a manual that had no Sega computer code in it, but explained how to
modify a program so it would run on a Sega console. Sega sued for copyright
infringement for copying the code on their computer chips. Accolade argued that they had
never actually copied any of the computer code on Sega's chips, they just copied the
specifications for how to write the software. Since those specifications were not
copyrightable, they did nothing wrong. In addition, Accolade argued that they were
protected by the fair use provision
Holding: The disassembly process reproduced Segas code in copies for the
purposes of 106(1). Where disassembly is the only way to gain access to the ideas and
functional elements embodied in a copyrighted computer program and where theres a
legitimate reason for seeking such access, disassembly is a fair use of the copyrighted
work.
Purpose and character of the use: D copies Ps code for a legitimate, essentially
non-exploitative purpose the commercial aspect of its use is of minimal
significance + public benefit = weighs towards D
o The fact that the copying is for a commercial purpose weighs against a
finding of fair use (Harper & Row)
o The use at issue was intermediate and any exploitation was indirect or
derivative
D copied Ps software just to discover the requirements for
compatibility with the Genesis console aspects of the programs
that arent protected by cr
No evidence that D was trying to avoid performing its own
creative work most of the games released were
originally developed for other systems
o Wrote its own procedures for the Genesis console
o Public benefit Ds identification of the functional requirements for
Genesis compatibility has led to an increase in the number of
independently designed video game programs growth in creative
expression
Doesnt matter that the works are offered for sale on the market
Effect on the potential market: Weighs in favor of D
o Whether, if the challenged use should become widespread, it would
adversely affect the potential market for the copyrighted work
Diminishing potential sales, interfering with marketability, or
usurping the market
o Unlike the D in Harper & Row, D didnt attempt to scoop Ps release of
any particular game or games just wanted to become a legitimate
competitor in the field

98
 o By facilitating the entry of a new competitor that isnt a P licensee, Ds
disassembly affected the market for Genesis-compatible games in an
indirect way
But video game users buy more than one game
o And an attempt to monopolize the market by making it impossible for
others to compete runs counter to the statutory purpose of promoting
creative expression and cant constitute a strong equitable basis for
resisting the invocation of the fair use doctrine
o Minor economic loss
Nature of the copyrighted work: Lower degree of protection unprotected aspects
that cannot be examined without copying weighs in favor of D
o Not all copyrighted works are entitled to the same level of protection
Fiction: greater protection than works that have strong factual
elements or works that have strong functional elements
Works that are just compilations of facts are copyrightable, but the
cr is thin
o Disassembly is wholesale copying but computer programs are unique
among copyrighted works
The unprotected aspects of most functional works are readily
accessible but people cant gain access to the unprotected ideas
and functional concepts contained in the object code
Disassembly was necessary to understand the functional
requirements for compatibility and necessarily involves
copying
o If disassembly of copyrighted object code is per se an unfair use, the
owner of the copyright gains a de facto monopoly over the functional
aspects of his work aspects that were expressly denied cr protection by
Congress 102(b)
P doesnt have a cr on the Genesis console
Amount: D disassembled entire programs weighs against D
o But the fact that an entire work was copies doesnt preclude a finding of
fair use (Sony Corp.)
Where the ultimate use is as limited as it was here, the factor is of
very little weight
The court must keep in mind the public policy underlying the Copyright Act
o The de facto monopoly given to computer program owners b/c their
functional concepts are hidden is against the fundamental purpose of the
Act encourage the production of original works by protecting the
expressive elements of those works while leaving the ideas, facts, and
functional concepts in the public domain (Feist)
Cant use sweat of the brow rationale (Feist)
Notes:
The 2nd factor (nature of the copyrighted work) isnt too important in cultural
interchange cases but seems very important in this case
Vague and ambiguous standard according to Levi

99
Online Search
Displaying certain kinds of search results to internet users can entail both
infringing copying and infringing public display

Perfect 10, Inc. v. Amazon, Inc. (9th Cir. 2007)

Facts: (Same as above pg. 65) Search engines thumbnail pictures that facilitate
access to infringing images
Holding: (Found above that the inclusion in search results of small thumbnail
images infringed Ps public display rights). Significant transformative use with public
benefit is fair use in light of the purpose of copyright
Kelly v. Arriba Soft pretty much the same facts; the court held that the search
engines use of thumbnail images in response to search queries was fair use based
on the transformative nature of a search engine and its benefit to the public and
use of the image didnt harm the market
o District court here held that it wasnt fair use and distinguished Kelly
Purpose and character of the use: Highly transformative and serves a public
benefit outweighs the superseding and commercial use
o Ds use of the images served a different function than Ps use
improving access to information on the internet vs. artistic expression
Kelly
o A search engine transforms the image into a pointer directing a user to a
source of information
Like a parody, provides social benefit by incorporating image into
an electronic reference tool
Can be even more transformative than a parody because theres an
entirely new use
The fact that Google used the entire image doesnt diminish the
transformative nature of the use
Even making an exact copy of a work may be
transformative as long as the copy serves a different
function
The nature of the copyrighted work slightly in favor of P
o The images were creative close to the core of cr but they were
previously published on the internet
Once P has exploited this commercially valuable right of first
publication by putting its images on the internet for paid
subscribers, its no longer entitled to the enhanced protection
available for an unpublished work
Amount and substantiality of the portion used - neutral
o Reasonable in light of the purpose of a search engine necessary to copy
the entire image to allow users to recognize the image
Effect of use on the market
o Kelly didnt harm the photographer because the thumbnails werent a
substitute for the full-sized images same reasoning here
o P argued presumption of market harm if the intended use is for
commercial gain but court says not when the work is transformative

100
Notes:
Did Kelly v. Arriba Soft and Perfect 10 transform the P's works or simply their
context?
o It's not just transforming the work in a different context what is the
purpose of the use by Google? The purpose of the use is identification
rather than appreciation
o Getting at something having to do with the functionality that functionality
that Google is giving is curation ability to curate materials that are
disorganized
Should it matter that all of the indexing that Google does is even if it doesn't
have ads so that it can make money out of the nature of your search and send
info about you to its commercial partners?
o The search is of economic value to Google

The Authors Guild, Inc. v. HathiTrust (2d Cir. 2014)

Facts: D has a repository of digital copies of books. Member libraries may order
replacement copies of works if "(1) the member already owned an original copy, (2) the
member's original copy is lost, destroyed, or stolen, and (3) a replacement copy is
unobtainable at a fair price." The HDL main functionality is full-text search. When search
results are found in works in the public domain, the work is displayed online, and so are
works for which the copyright holder has granted permission. For other works, only page
numbers and the number of search results per page are shown. In addition, the HDL
makes its collection available to students with print disabilities by offering them secure
system access for screen readers. The collection of works available to print-disabled
students through HDL is often larger and easier to navigate than those offered through
most university student disability student services offices
Holding: Fair use allows D to digitize copyrighted works for the purpose of
permitting full-text searches. Fair use for the libraries to provide full digital access to
copyrighted works to their print-disabled patrons.
Contrary to what the district court said, a work doesnt become transformative by
making an invaluable contribution
o The test is serving a new and different function from the original work
Full text search:
o Doesnt allow users to view any portion of the books theyre searching
doesnt add into circulation any copies of any books
o Nature/purpose of the use: transformative
The result of a word search is different in purpose, character,
expression, meaning, and message from the page and book from
which it is drawn
No evidence that the Authors write with the purpose of enabling
text searches of their books so it doesnt supersede (Campbell)
Full-text search adds more than previous things decided to be fair
use: Cariou v. Prince fair use though same medium, Bill Graham
v. Dorling Kindersley fair use to have unaltered concert photos in a
biography

101
 o Nature of the copyrighted work: not dispositive, protected work but
transformative use (Cariou)
o Amount and substantiality: not excessive b/c necessary to make use of the
entirety of the work to enable the full-text search function
More than necessary? (Campbell) Was the copying excessive?
Keeping the copies in four different locations is also necessary
two different servers to avoid overburdening
o Effect of the use on the market: No harm to any potential or existing
market
Whether the secondary use usurps the market of the original work
No evidence of any quantifiable harm resulting from Ds use
At the outset, concerned with the harm that results because the
secondary use serves as a substitute for the original (Campbell)
Cognizable harm is limited to market substitution
transformative uses dont count because they dont serve as
substitutes (Bill Graham Archives)
Lost-licensing revenue argument doesnt work full-text
search feature doesnt serve as a substitute for the books
that are being searched
P argued risk of a security breach but D took extensive security
measures
Access to the print-disabled:
o Nature of the use valid purpose even though not transformative
Dist. Ct. wrong is saying expanded access = transformative
Enables a larger audience to read the works same purpose
Not transformative, just like translating a book into a different
language isnt transformative simply because it enables a new
audience to read a work
Valid purpose even though not transformative
SC said making a copy of a cr work for the blind is fair use
dont need anything more than a purpose to entertain or
to inform to motivate the copying (Sony Corp. of Am.)
Legislative history: making books accessible to the blind
for free fair use under 107 because of the unique
circumstances
Nature of the work merits protection, but doesnt preclude a
finding against fair use given the other factors
Quantity/substantiality: image files not excessive contain
information that cant be converted to text or speech
Necessary for disabled persons to be able to use the text
fully
Effect on the market: in favor of fair use
Insignificant present-day market for books accessible to the
handicapped
Preservation:

102
 o The record doesnt reflect the existence of a non-speculative risk that D
might create replacement copies of the Ps copyrighted work P doesnt
have standing
Notes:
Author's Guild is more about socially beneficial practices than a doctrinal
application of fair use
Is the 2nd circuit consistent in its application of transformative? Is the 2nd circuit
consistent with the SC under Campbell?
Does search really add something new or does it just supplant?
Seems like a practical approach
How we define the market changes the answer to whether there is market harm
The court in this case doesn't accept the lost licensing revenue argument b/c lost
licensing revenue counts only when the use serves as a substitute for the original

Copying by Institutional Users

Many cases of simple copying for research or classroom use involves institutional
users

Cambridge University Press v. Patton (11th Cir. 2014)

Facts: The Ps are three publishing houses that allege that members of Georgia
State University (D) infringed Ps cr by maintaining a policy which allows GSU
professors to make digital copies of excerpts of Ps books available to students without
paying P. D maintains two on-campus systems for digital distribution of course materials
to students. The Copyright Clearance Center (CCC) is a system that licenses excerpts
from copyrighted works for a fee, acting on behalf of publishers who choose to make
their works available through the CCC. These licenses are called permissions. The 3
Ps offer excerpt-specific permissions to photocopy or digitally reproduce portions of
their works, which can be obtained directly from the Ps or through CCC but not
available for all of the works. When D assembles and sells a paper course-pack
containing excerpts from cr works, GSU pays permissions fees for use of the excerpts.
For digital copies, Ds professors fill out a checklist to determine whether it would be fair
use or not. The issue in the case is under what circumstances D must pay permissions
fees to post a digital copy of an excerpt of Ps works to its systems.
Below: The dist. ct. held that fair use applied whenever three out of the four
factors favored D. Factor 1 and 2 favored D in all circumstances fair use applied each
time a professor posted an excerpt that fell within the 10 percent or one chapter limit on
allowable copying and each time there was no evidence that digital permissions were
available for excerpts of the work in question
Holding: Remand did not err with work-by-work analysis, but erred in giving
each of the factors equal weight should have taken a holistic analysis to balance the
factors
Fair use must be determined on a case-by-case basis, applying the four factors to
each work at issue (Campbell)
The district courts arithmetic approach was improper

103
 Nature of the use: not transformative but Congress cares about educational
copying furthers the goal of cr
o Verbatim copies of portions of the original books which have been
converted into a digital format
Arranging the excerpts into a particular order is just a de minimis
amount of new meaning
o Not entirely clear that use by a nonprofit entity for educational purposes is
always a nonprofit use as contemplated by 107(1)
Not whether the sole motive of the use is monetary gain but
whether the user stands to profit from exploitation of the
copyrighted material without paying the customary price Harper
& Row
Although D benefit from its use of Ps work by being able to
provide the works conveniently to student, and profits by avoiding
paying licensing fees, Ds use is not fairly characterized as
commercial exploitation
And the use provides a broader public benefit education
o Congress devoted effort to ensure that fair use would allow for educational
copying under the proper circumstances and allowing latitude for
educational fair use promotes the goals of copyright
Takes into account that the school is non-profit and a public
university
Nature of the work not necessarily fair use in every instance, but of little
importance to this case
Amount and substantiality:
o District court should have analyzed each instance of alleged copying
individually, considering the quantity and the quality of the material taken
including whether it constituted the heart of the work and whether that
taking was excessive in light of the educational purpose and the threat of
market substitution.
o Classroom Guidelines that are part of the legislative history of the Cr Act
dont have the force of law
Suggest a minimum, not maximum, amount of allowable
educational copying that might be fair use
Effect on market: the small excerpts that D used dont substitute for the full books
from which they were drawn but because non-transformative, the treat of
market substitution os high the district court should have afforded this factor
additional weight
o Not whether Ds use cause P to lose some potential revenue, but whether
Ds use would cause substantial economic harm such that it would
frustrate the purposes of cr by impairing Ds incentive to publish the work
(Harper and Row kind of doesnt materially impair the
marketability of the work)
Considering the damage that might occur is everybody did it
o Not determinative that programs exist through which universities may
license excerpts of Ps work

104
 The ability to license doesnt demand a finding against fair use
BUT, if a cr holder hasnt made a license available, the inference is
that the author didnt think there would be enough use to bother
making a license little damage to the market when someone
uses the work that way weighs in favor of fair use
Concurrence:
Seemed to be more judgmental of what the school was doing was just trying to
save money

Fair Use in Comparative Perspective

Most countries recognize a need for limitations on cr owners exclusive rights but
most dont use fair use instead designate specific types of uses that are
permitted

Practical Considerations in Licensing &

Enforcing Copyrights
Copyright Due Diligence
Formalities
Until recently, the U.S. didnt play a significant role in the evolution of
international cr law
o U.S. required compliance with formalities as quid pro for federal cr
protection: publication, notice, registration, deposit of a copy of the
copyrighted work with a designated entity
o Berne Convention expressly prohibits member countries from subjecting
rights to formalities
U.S. joined in 1989, it amended its statutory provisions now
failure to comply with formalities no longer results in loss of cr
protection
But the changes only apply prospectively some older
works still affected
Formality always served to ensure that the public domain was thickly populated
o The cost of the public to having some people unhappy because they didnt
pay attention was seen as a desirable cost
Rather than having a major benefit of a huge public domain
o See a very significant turn on how good formalities are on the part of the
copyright left

105
Overview
First Copyright Act of 1970 provided protection to authors of maps, charts, and
books
o Requirements to get this protection: (1) give copy of the title page of the
work to the clerks office in the district court, (2) give notice of cr to the
public by publishing of a copy of the record of cr, (3) deposit a copy of the
work in the office of the US secretary of state, (4) copy of record inserted
in the title page
Copyright Act of 1909 abandoned the requirement of notice in a newspaper
o Instead, proper notice of cr required on each copy of the work published or
offered for sale in the US
Copyright or Copr. and the name of the proprietor
Printed literary, musical, and dramatic works: include year cr was
secured by publication
All other works, proper notice: together with an accompanying
mark, symbol, or initials of the cr owner, and the owners full
name had to be on some part of the work
o Strict compliance with the notice requirement necessary
Together with requirement of two complete copies of the best
published edition of the work with CR Office
o CR owner could register his claim in the CR Office and get a certificate of
registration optional, but failure to register and deposit copies barred
any action for cr infringement
And required to register to receive a renewal term
o Allowed certain unpublished works not for sale to be registered and
receive protection: lectures, dramatic and musical compositions, motion
pictures, photographs, drawings, etc.
1976 Copyright statute, Congress didnt want to abandon formalities as a
prerequisite for cr protection, but was sensitive to the hardship placed on authors
o Abandoned the requirement of publication and replaced it with the
requirement of fixation in a tangible medium of expression
o Kept notice requirement: must be included on works published by
authority of the cr owner
(1) Copyright, copr. or the symbol , (2) year of first
publication, and (3) the name of the cr owner
Errors in name or date could be corrected without losing protection
Location on the work just has to give reasonable notice 401(c)
Omission not fatal if just small number of copies distributed
without notice or the registration of the work occurred within 5
years of publication and reasonable effort made to cure earlier
omission 401(c) and 405
o Failure to comply with demand to deposit copies civil fine, not
forfeiture
o Registration still voluntary and required to file an infringement lawsuit
Deposit two copies of published works or one complete copy of an
unpublished work, registration form, and fee

106
 1988 when U.S. joined the Berne Convention changed notice and registration
requirements
o Notice no longer a condition of protection for works published after 3/1/89
- 401(a)
But still important to give notice to defeat a Ds assertion of
innocent infringement - 401(d)
o Still need to register to bring suit for U.S. works, but not for works
originating from a Berne Convention country - 411
But still important to register to get attorneys fees and statutory
damages - 412
And presumption of proof of date of creation and publication,
identity of cr owner, and validity of the cr - 410(c)

Publication
Prior to 1979 Act, unpublished creative works of authorship protected by state
common law cr
o Publication destroyed the common law rights and gave federal statutory
protection
But only if the author complied with the federal formalities
Didnt comply with formalities lost both state common law
protection and federal statutory protection

Estate of Martin Luther King, Jr. v. CBS, Inc. (11th Cir. 1999)
Facts: King gave a famous speech that was widely reported in the newspapers
and broadcast on radio and television. Copies of the speech were given to members of the
press. One month after he gave the speech, King secured a copyright under the Copyright
Act of 1909. He immediately sued to enjoin unauthorized sale of recordings of the
speech. Twenty years later, a tv station, CBS, made a documentary about King and used
the video they recorded of King's speech. King's estate sued for copyright infringement.
CBS argued that under the Copyright Act of 1909, if you publish a work without filing
for a copyright first, you lose protection of that work. Since King waited a month to file,
he missed his chance.
Issue: Whether Ps attempt to obtain statutory protection on 9/30/63 was
effective, or whether it was a nullity because the speech had already been forfeited to the
public domain via a general publication.
Holding: Release to the news media for contemporary coverage of a newsworthy
event is only a limited publication there exists genuine issues of material fact
Because of the dates of the critical events, proper analysis occurs under the 1909
Act
1909 Act: author got state common law protection automatically at the time of
creation of the work persisted until the moment of a general publication
forfeited work to the public domain or if in compliance with statutory
requirements, converted into federal cr
Only a general publication divests a common law copyright: work made available
to members of the public at large w/out regard to their identity or intention

107
 o Non-divesting limited publication: select group and for a limited purpose,
without right of diffusion, reproduction, distribution, or sale
General publication occurs just in two circumstances:
o Tangible copies of the work are distributed to the general public in a
manner that allows the public to exercise dominion and control over the
work
o The work is exhibited/displayed in a manner that permits unrestricted
copying by the general pubic
Restrictions may be implied
Distribution to the news media
Notes:
Courts have held that posting material to a website is production (Getaped.com v.
Cangemi)

Notice of Copyright
Public benefit of notice rules pre-1989
o If notice not on copies of the work, work isnt copyrighted
o Notice had publication date public could determine the duration
o Sign of abandonment
Today, abandonment can only occur as the result of an intentional
relinquishment of a known right by the owner (A&M Records v.
Napster) failure to enforce not enough

Deposit Requirements
The Act provides that the Register of Copyrights may issue regulations modifying
the deposit requirements for any category of copyrightable works
o Can consider the nature of the work and the owners financial condition
o Changes made for computer programs on page 661

Registration
For newly published works, cr owners have three months in which to register their
work and remain eligible for statutory damages and attorneys fees even if the
infringement commences prior to registration - 412
Registration within 5 years of publication constitutes prima facie evidence of the
validity of the cr and of the facts stated in the certificate - 410
If registration denied can still start an infringement lawsuit, just wont have
evidentiary presumptions that accompany registration
o Can sue Register of Copyrights to compel issuance of registration, but
agency action is only set aside if arbitrary, capricious, abuse of
discretion, etc
Pre-registration permitted for motion pictures, sound records, and software -
408(f)
o Can sue as if full registration made - 411(a)

108
 o But must fully register within three months of first publication or one
month of learning of the infringement
Or dismissal of any action commenced less than two months after
publication (408(f)(4)), and ineligible to receive statutory
damages and attorneys fees for infringements commenced before
the registration (412)
Registration of a collective work effects registration of independently
copyrightable works included within it

Restoration of Copyright Protection for Certain Works of Foreign Authors

Article 18 of the Berne Convention requires retroactive protection of foreign
works that lost cr for failure to satisfy formalities imposed by domestic law
NAFTA added 104A restored cr protection in Canadian and Mexican motion
picture works
URAA that implemented TRIPS in the U.S. amended 104A to extend restoration
to all types of works by authors from all WTO countries
o Effective date of restoration: 1/1/1996 for works whose source countries
were members of the Berne Convention or WTO on that date
For the remainder of the term of the cr that the work wouldve
been granted had it not lost protection
o Works cr must not have expired in the source country before the date of
restoration in the U.S.
104A(b) vests ownership initially in the author or initial rightholder in the work
as determined by the law in the source country of the work

Duration
How long cr should last depends on how long that property interest should last
All cr durations run until the end of the calendar year, regardless of which set of
rules is applicable - 305
As a result of the Sonny Bono Copyright Extension Act (CTEA), which amended
the 1976 Act, the current duration of cr protection is 20 years longer than that
initially adopted in the 1976 Act
o 1976 Act originally provided for a basic term of protection of the life of
the author plus 50 years, and for works made for hire and
anonymous/pseudonym works, either 100 years from creation or 75 from
publication, whichever is shorter
Works created on or after January 1, 1978 1976 Act modified by CTEA
o Look at date of fixation
o Single author: life of the author plus 70 years
o Joint author, not work made for hire: life of the last surviving author plus
70 years
o Anonymous/pseudonym work, work made for hire: 120 from creation or
95 years from publication, whichever expires first - 302
Works first published before January 1, 1978 1909 Act

109
 o Publication with proper notice started cr protection
28 year term of cr protection
o Cr owner could extend protection for a renewal term of 28 by filing a
renewal certificate with the CR Office
Filed during the final year of the initial term of protection
o Date of death of the author irrelevant, just care about date of publication,
proper notice, and filing of renewal certificate
o But, 1976 Act allowed for an additional 19 year extension to the renewal
term if the cr owner secured a renewal term by the timely filing of a
renewal certificate
Total possible term of 75 years
o 1998 again added another 20 years to the renewal term now a max of 95
years
CTEA didnt grant protection for works that were already in the
public domain because the 75 years had expired works
published before 1923 are in he public domain
After 1923 but before 1978, potential total duration of 95
years
o Works published after 1992 and before 1978 dont require renewal
certificate
Works before 92 require one

1923 1964 January 1, 1978

28-year term, 95 years, renewal 1) Sole and joint

extended to 95 years automatic authors: life of the
if a renewal was author plus 70 years
timely filed 2) Anonymous,
pseudonymous,
works made for hire:
120 years from
creation OR 95 years
from publication
(shortest)

Works created but unpublished before January 1, 1978

o 1909 Act only protected published works, and the 1976 Act protects both
so long as they are fixed
o These works were subject to common law or state statutory cr protection
o When adopting the 1976 Act, Congress decided to grant previously
unpublished works federal cr protection
The same duration rules used for works created after 1/1/78 should
apply, but wont expire before December 31, 2002
Also granted an additional 25 (now 45) years of protection if the
work was published before 12/31/02

110
 Unpublished before 1/1/78, and Unpublished before 1/1/78 and
not published before 12/31/02 published before 12/31/02

1) Sole and joint authors: life of 1) Sole and joint authors: life of
the author plus 70 but not the author plus 70 but not
before 12/31/02 before 12/31/2047
2) Anonymous, pseudonymous, 2) Anonymous, pseudonymous,
made for hire: 120 years from made for hire: 120 years from
creation, 95 from publication creation, 95 from publication
(shortest) but not before (shortest) but not before
12/31/02 12/31/2047

Duration of cr in foreign works

o After 1/1/78: 1976 Acts duration rules, as modified by CTEA
o More complicated for works created before 1/1/78
Societe Civile Succession v. Renoir: held that the publication w/out
cr notice in a foreign country doesnt place a work in the public
domain in the U.S.
Treated works first published abroad w/o notice of cr as
analogous to works created but unpublished prior to 1/1/78

Policies Behind Copyright Duration

Constitution required that exclusive rights granted to authors be for limited
times
Cr expanded and made into a unitary term due to increased desire to harmonize
US law with cr protection schemes in other countries
o Berne Convention requires minimum term of protection of life plus 50
years
But the expansion of duration, elimination of required formalities, and the shift to
a unitary term has resulted in the slower entry of works into the public domain
o No affirmative steps are needed to get/keep cr protection for a long
duration
o Due to CTEA, no works will enter public domain due to expiration until
1/1/19

111
Extension of subsisting copyrights
In the US, the extensions of cr duration have applied not only to new works
created after the passage of each extension, but also to works already created

Eldred v. Ashcroft (SC 2003)*

Facts: Petitioners, whose products or services build on copyrighted works that
have entered the public domain, argued that the CTEA violates both the Copyright
Clause's "limited Times" prescription and the First Amendment's free speech guarantee.
They claimed Congress cannot extend the copyright term for published works with
existing copyrights.
Holding: CTEA doesnt violate the Copyright Clauses limited times
prescription or the First Amendments free speech guarantee
CTEA standard harmonizes the US baseline cr term with the term adopted by the
EU in 1993
Congress has the authority under the CR Clause to extend the terms of existing
copyrights
o Can prescribe limited times for cr protection and secure the same level
and duration for all cr holders present and future
o Limited doesnt mean fixed or inalterable
o History of granting authors with existing crs the benefit of the term
extensions so that all are governed under the same rules
Defer to Congress on whether the CTEA is a rational exercise of the legislative
authority given by the CR Clause rational
o Congress typically makes these judgments
o CTEA ensures that American authors get the same cr protection in Europe
that European authors get
o CTEA might provide incentive for authors to create/disseminate their
work in the U.S.
It is generally for Congress, not the courts, to decide how best to pursue the
Copyright Clauses objectives
o Objective of CTEA provides a rational basis for the conclusion that the
CTEA promotes the Progress of Science
o Congress has extended existing cr protection so many times that you cant
say it fails per se to promote the progress of science
o Patents and cr dont entail the same exchange, and references to a quid pro
quo typically appear in the patent contact
In cr, disclosure is the desired objective, not something exacted
from the author in exchange for the cr
Rejects petitioners plea for imposition of uncommonly strict scrutiny on a cr
scheme that incorporates its own speech-protective purposes and safeguards
o The cr clause and 1st amendment were adopted close in time indicates
that in the Framers view, crs limited monopolies are compatible with
free speech principles
o Crs purpose is to promote the creation and publication of free speech
o Cr law contains built-in First Amendment accommodations (Harper &
Row)

112
 Distinguishes between ideas and expressions and only expressions
are eligible for protection
Fair use defense allows the public to use facts, ideas, and
expression in certain circumstances latitude to scholarship,
comment, and parody
o CTEA supplements these safeguards: allows libraries and similar
institutions to reporoduce and distribute copies of certain publishing works
during the last 20 years of any term of cr for purposes of preservation,
scholarship, and research (108(h))
Fairness in Music Listening Act exempts small business and
restaurants from having to pay performance royalties on music
played from licensed radio, tv, etc. (110(5)(B))
CTEA just protects authors original expression from unrestricted
exploitation
o Congress hasnt altered the traditional contours of cr protection further
1st Amendment scrutiny is unnecessary
Dissent by Stevens:
That Congress exercised its unquestionable constitutional authority to create a
new federal system securing rights for authors and inventors in 1790 doesnt
provide support for the proposition that Congress can extend pre-existing federal
protections retroactively
Just because Congress has repeatedly acted on a mistaken interpretation of the
Constitution, that doesnt qualify the SCs duty to invalidate an unconstitutional
practice when its finally challenged in an appropriate case (INS v. Chadha)
The interest in preserving perishable copies of old copyrighted films doesnt
justify a wholesale extension of existing copyrights
o Wont promote new works and a blanket extension doesnt bear a
relationship to the alleged harm
The SC in this case has failed to protect the public interest in free access to the
products of inventive and artistic genius virtually ignoring the central purpose
of the Copyright/Patent Clause
o The Court has quitclaimed to Congress its principal responsibility in this
area of the law
o The Court essentially said that Congress actions under the CR Clause are
practically judicially unreviewable
Dissent by Breyer:
The First Amendment and CR Clause seek related objected and mutually
reinforce each other
o A statute that exceeds proper CR Clause bounds may set the clause and
amendment at cross-purposes, thus depriving the public of the speech-
related benefits that the Founders promised
Would have reviewed the claims that the CTEA restricts the dissemination of
speech more carefully
Believes that the statute lacks the constitutionally necessary rational support:
o If the significant benefits that it bestows are private, not public
Primarily benefits the holders of existing crs

113
 CTEA imposes a permissions requirement that can inhibit or
prevent the use of old works, particularly without commercial
value
o If it threatens seriously to undermine the expressive values that the CR
Clause embodies
Total implausibility of any incentive effect
o If it cannot find justification in any significant Clause-related objective
Statute has an apparent failure to provide significant international
uniformity
Notes:
Did adding protection to existing cr create incentives for create them?
o Levi: Of course not
o Levi thinks that RBG was too deferential to Congress
Ginsburg doesnt like the CTEA, but feels like she has to defer

Restoration of Lapsed Copyrights

Can Congress restore cr protection to works that have passed in the public
domain?
o In 2012, the CR considered a constitutional challenge to 104A, which
restores cr to eligible foreign works (Golan)
Still limited: the cr protection had definite endpoints
Congress had removed works from the public domain in 1790
when it created the federal cr system and to restore protection to
works that lost it during the two world wars
The grant of legislative authority also encompasses dissemination
incentives, not just the incentive to create works initially
Rejected the First Amendment challenge, like it had in Eldred
CR law has speech-protective purposes and safeguards
The Berne Convention required restoration
Dissent by Breyer: the constitutional values attached to the public
domain required the US government to do more to preserve it
No countervailing benefit

Renewals and Terminations of Transfers

Since its inception, the U.S. cr regime has included provisions meant to give the
author and his family a chance to recapture the value of a previously assigned cr
Under certain circumstances, title to a subsisting cr can revert back to the author
of her heirs

Renewals
The 1909 Act granted cr protection for an initial 28-year term with the possibility
for a renewal term of 28 years
o To get the renewal term, the author had to file a renewal certificate iwht
the Copyright Office

114
 1909 Acts duration scheme applies to works created before the effective date of
the 1976 Act (1/1/78)
o The last of the renewal terms will not expire until the year 2072

Stewart v. Abend (S.C. 1990)

Facts: The author of a pre-existing work agreed to assign the rights in his renewal
cr term to the owner of a derivative work, but died before the commencement of the
renewal period. The owner of the derivative work (D) continued to distribute and publish
the work even though the executor assigned the renewal rights to P.
Issue: 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.
Holding: A copyright owner's right to permit the creation of a derivative work
passes to the heirs of the author of the work, who are not bound by the original author's
agreement to permit such use.
In 1931, Congress altered the renewal 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
o Intent to provide for the family of the author after his death
The Court noted that one of the reasons for the renewal clause was to allow an
author of a work, who sold the rights very cheaply when the work was first
published, to have a chance to renegotiate the assignment of rights in the future,
when they might be worth a lot more.
When an author dies before the renewal period arrives, his executor is entitled to
the renewal rights, even though the author previously assigned is renewal rights to
another party (Miller Music Corp. v Charles N. Daniels)
o If the author is alive at the commencement of the renewal period, the
assignment made before the original cr expires is valid against the world
Basically, Woolrich's promise was an unfulfilled expectancy
2nd Circuit held in Rohauer v. Killiam Shows 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
o The SC says that this is contrary to the cr principle that a person may
exploit only such material that he owns or is licensed to use
o Aspects of a derivative work added by the derivative author are that
authors property, but the element drawn from the pre-existing work
remains on grant from the owner of the pre-existing work - 103(b)
The termination provisions of the 1976 Act added 19 years to the 1909 Acts
provision of 28 years of initial cr protection and 28 years of renewal protection
304(a) and (b)
o The author has the power to terminate the grant of rights at the end of the
renewal term and gain the benefit of the additional 19 years of protection
Provides a 3rd opportunity for the author to benefit from a work
But, 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

115
 derivative work has held valid rights in the original and renewal
term
But because Congress decided not to permit authors to
exercise a 3rd opportunity to benefit from a work
incorporated into a derivative work, this doesnt mean that
theres a general policy of undermining the authors 2nd
opportunity
If the respondents choose to arbitrarily refuse to license one who seeks to exploit
the work, they can do so (Fox Film Corp. v. Doyal)
Notes:
Note that under modern copyright law, a copyright is valid for 70 years plus the
life the author does not need to be renewed.
o The holding in this case only applies to works produced prior to 1976.

Inheritance and Vesting of Renewal Rights

304 dictates the succeeding claimants to the renewal term in the event of an
authors death
o First class: Widow, widower, or children of the author but doesnt
specify how the interest is to be divided among members of this class
50 percent to the widow/widower, 50 percent divided among the
children (BMI v. Roger Miller Music)
o If none in the 1st class, then: The authors executory as fiduciary to the
beneficiaries under the authors will
o If no will, then: The authors next of kin, as determined by state intestacy
rules (DeSylva v. Ballentine)
1976 Act originally didnt address the issue of when the right to the renewal term
vests
o Beginning of the final year of protection vs. the date of the filing of the
renewal certificate vs. the first day of the renewal term
Copyright Renewal Act of 1992 abolished the renewal certificate requirement
o Works first covered by federal cr protection in or after 1964 obtained
protection for the full 75 (now 95) years without the requirement of filing
a renewal certificate
o But renewal encouraged by providing certain benefits
Certainty of vesting if timely filed in the final year of the first term
vested in the appropriate person as of the date of the filing of
the renewal certificate
If not filed, then vested as of the first day of the renewal
term - 304(a)(2)
If the renewal application isnt filed, then a derivative work
prepared under authority of a grant or license from the cr owner
may be continued to be used under the terms of the grant
Changes the result of Stewart in situations where the
renewal wasnt filed

116
 While new derivative works may not be prepared during
the renewal term, the cr owner cant stop the exploitation of
authorized derivative works that were created prior to the
end of the first term

Terminations of Transfers
The 1976 Act includes provisions for terminating transfers of cr interests
Termination of transfers encompasses both transfers and license of a copyright
Under both of the following sections, termination may be effected
notwithstanding any agreement to the contrary, including an agreement to make a
will or to make any future grant 203(a)(5), 304(c)(5)
o An author may exercise the right to terminate even when he has agreed by
contract not to do so
o Expressly prohibited any assignment or waiver of termination rights
Terminations of transfers made after 1/1/1978: Section 203
Policy rationale similar to that for the renewal term: Congress wanted to provide
authors with a 2nd opportunity to obtain remuneration for their creative endeavors
Types of transfers that can be terminated:
o Apply only to transfers made by the author, not any subsequent transfer of
cr interest by those in the chain ot title
o Both exclusive and non-exclusive licenses, as well as outright transfers of
cr interest, can be terminated
o Do not apply to works made for hire
o Transfers by will are not subject to termination
Who may exercise the termination right:
o Grant executed by one author: termination may be exercised by the author
If the author is dead, by those who own at least 51 percent of the
authors termination interest
o Grant executed by more than one author: a majority of the authors must
act together to terminate the grant, with each authors interest being
exercised as a unit
If the author is dead, his or her termination interest is owned first
by the widow or widower
If theres surviving children or grandchildren, then the
widow or widower owns of the termination interest and
the children/grandchildren divide the other half on a per
stirpes basis (pg. 695)
When the termination may be effected:
o At any time during a five-year window, which begins at the end of 35
years from the date of execution of the grant
Except where the grant covers the right of publication in the work,
then the five-year window begins 35 years from the date of
publication or 40 years from the date of execution, whichever is
earlier
How termination is effected:

117
 o Notice of termination must be given by serving advance notice on the
grantee or the grantees successor in title
o The notice must state the effective date of termination and must be served
not less than two or more than ten years prior to that effective date
o A copy of the notice shall be recorded with the CR Office before the
effective date of termination
The effect of termination:
o Upon the effective date, all rights that were covered by the grant revert to
the author or the person owning termination interest
Vest as of the date the notice of termination was served and vest in
the same proportionate shares as the termination right was divided
(per stirpes)
o Further grants of the terminated rights are only valid if they are made after
the effective date of termination
But further valid grants to the grantees whose rights are being
terminated may be made after notice of termination has been
served
o Derivative works prepared under authority of the grant before its
termination may continue to be utilized after the termination
But that use remains subject to the terms of the grant
Does not extend to permit preparation of other derivative works
after the termination date
Terminations of transfers made before 1/1/1978: Section 304(c)-(d)
Different policy decision concerning who should benefit from the lengthening of
the renewal term by 19 years under the 1976 Act and by 20 additional years under
the CTEA
o Favors creators and their families if they are interested in recapturing the
value of the cr by following the procedure set forth in the Act for
terminating transfers
Types of transfers that can be terminated:
o Only those transfers that convey any interest in the renewal term can be
terminated
During the initial term of cr not terminable
o Apply to exclusive and non-exclusive licenses, as well as outright
transfers (just like 203 above)
o Transfers that can be terminated include not only those made by the
author, but also those made by a widow, widower, children, executor, or
next of kin
o Transfers concerning work for hire and transfers made by will are not
terminable
Who may exercise the termination right:
o When the transfer sought to be terminated is a grant by someone other
than the author, termination can only be exercised by the surviving person
or persons that executed the grant
Transfer executed by a widow who dies before timely notice of
termination can be sent is no longer terminable

118
 o Termination of transfer by the author can be exercised by the author
If the author is dead, by a majority of those owning termination
interests
o The ownership of termination interests and the majority requirements are
identical to those under the 203 termination provision
When termination may be effected:
o The termination right granted under 304(c) concerns the additional 19
years added to the renewal term by the 1976 Act
Termination can be effected during a 5-year window that begins 56
years from the date cr protection was originally secured (typically
upon publication with proper notice)
o Termination provisions of 304(d) concern the additional 20 years
provided by the CTEA
Termination can be effected during the 5-year window that begins
at the end of 75 years from the date cr was originally secured
Can be used only if the termination right under 304(c) expired
prior to the effective date of the CTEA (10/27/98) and if the
termination right provided in (c) was not exercised
How the termination is effected:
o Notice of termination must be given by serving advance notice on the
grantee or the grantees successor in title
o Must state the effective date of termination and must be served not less
than two or more than ten years prior to the effective date
o Similar to 203
o Copy of the notice must also be recorded with the CR office prior to the
effective date
The effect of termination:
o Similar to the effect of termination under 203, including the requirements
for valid subsequent grants and for ongoing use of derivative works
prepared prior to termination

Agreements to the Contrary

1909 Act renewal term was meant to provide authors with an opportunity to
renegotiate assignments made before the full value of a work was known
o But the ability to transfer the contingent interest in the renewal term meant
that such transfers became standard in industry contracts undermined
the purpose of the renewal term as a second bite at the apple
So termination provisions provided a stronger right for authors and
their statutory heirs
Termination of the grant may be effected notwithstanding any agreement to the
contrary, including any agreement to make a will or to make any future grant
203(a)(5), 204(c)(5), 304(d)(1)
o The termination right is inalienable (Stewart v. Abend)
o Agreement that the author will not seek to exercise her termination rights

119
 o Settlement agreement characterizing the work as a work for hire (Marvel
Characters v. Simon) different construction would vitiate the statutory
purpose of protecting authors
o According to 2nd and 9th Circuits, Congress could not have intended to
prevent an authors heirs from negotiating a re-grant on more favorable
terms

The Orphan Works Problem

The current system of automatic, lengthy protection without notice and
registration requirements can lead to difficulties in locating cr owners
Orphan works: Works whose owners cant be located
o Some uses of orphan works may be made without locating the current cr
owner, but may also result in a decision to not use the work at all
There have been attempts at both public and private solutions to the issues caused
by orphan works pg. 701-703
o Private solutions have focused first on developing registries of works and
owners
o Legislated solutions have focused on remedial limitations and
requirements of diligence

Licenses and Transfers

Contracts are necessary to transfer title or interests in the intangible asset of a
copyright
o Also can embody licenses that authorize licensees to engage in activities
that otherwise would constitute infringement

Modes of Transfer
106 grants a bundle of rights to the author of a cr
o Each right in the bundle may be transferred and owned separately and
each right also is divisible
o The owner of a particular right is entitled to the full protection and
remedies afford cr owners under the Act - 201(d)(2)

Writing and Recording Transfers of Copyright

Transfer of ownership: an assignment, mortgage, exclusive license, or any
other conveyance, alienation, or hypothecation of a cr or any of the exclusive
rights comprised in a cr, whether or not its limited in time or place of effect, but
not including a non-exclusive license - 101
204: Statute of frauds requirement any purported transfer an a cr interest be
must be stated in a writing signed by the owner of the right being transferred

120
 o Transfer of ownership definition is broad applies not only to complete
transfers of cr ownership, but also to exclusive licenses of some or all of
the 106 rights
When a cr is transferred, 205 authorizes recordation of the transfer with the CR
office and specifies procedures for recordation
o Not required, but leads to benefits:
Provides constructive notice of the facts in the document so long as
the doc or attached materials identify the work in question and the
cr has been registered
Establishes priority of ownership in the event of conflicting claims
205(d) order for determining which claim prevails b/w 2 conflicting transferees
o The transfer first executed and properly recorded within one month of its
execution prevails
First transfer will still prevail if its recorded before a later transfer
But the later transfer will prevail if the recipient properly recorded
before the earlier transfer was recorded, took the transfer in good
faith for valuable consideration or on the basis of a promise to pay
a royalty, and had no notice of the earlier transfer
205 a non-exclusive license prevails over a conflicting transfer of cr ownership
if the license is in writing and signed by the owner of the rights so long as the
license was taken in good faith before the conflicting transfer was recorded and
without notice of the conflicting transfer
o Non-exclusive license: when a cr owner grants more than one person the
same right
A cr may also be transferred by operation of law - 204, 201(d)(1)
o Transfers by will and by intestate succession

Implied Licenses
9th Cir. held that rights obtained pursuant to any license, including an exclusive
license, may not be sublicensed without authorization from the cr owner (Gardner
v. Nike)
o Reasoned that an exclusive licensee is not equivalent to a cr owner even
though an exclusive license constitutes a transfer of ownership
o 201(d)(2) only confers the protections and remedies afforded a cr owner,
not the rights

Asset Marketing Systems, Inc. v. Gagnon (9th Cir. 2009)

Facts: P hired D as an at-will, independent contractor toassist with IT. D was
asked to develop custom software for P. P and D has this relationship for four years. P
claims that D signed a Vendor Nondisclosure Agreement where D gave P ownership of
all intellectual property developed for P by D. P and D eventually terminated their
relationship. P demanded that D provide P with any and all copies of the source code for
all software developed by and on behalf of P. D demanded that P stop using his
programs; the use was unauthorized and cr infringement because P didnt have a license
or permission.

121
 Holding: AMS has an implied unlimited, non-exclusive license to retain, use, and
modify the software. Because P paid consideration, this license is irrevocable
An implied license is granted when (1) a person requests the creation of a work,
(2) the creator makes that particular work and delivers it to the licensee who
requested it, and (3) the licensors intent
o Prong 3 depends on the protected right at issue, here re: using, retaining,
and modifying the programs
Grants of non-exclusive licenses need not be in writing - 204
P requested the creation of the programs
o D didnt create the programs on his own initiative and market them to P
created them in response to Ps requests
D created the software for P and delivered it
o Created specifically for P and P paid for the work related to drafting of the
programs as well as some related costs
o D delivered the programs when he installed them onto Ps computers and
stored the source code on site at Ps office
If P didnt have the right to modify the code, it might have
infringed Ds cr by exceeding the scope of its license
But Ds conduct manifested an objective intent to give P an
unlimited license at the time of creation
Ds intent as manifested by his conduct
o The relevant intent is the licensors objective intent at the time of the
creation and delivery of the software as manifested by the parties conduct
(Effects Assocs. V. Cohen)
Whether the parties were engaged in a short-term discrete
transaction as opposed to an ongoing relationship
Had ongoing relationship indicates neither an intent to
grant nor deny a license without Ds future involvement
Whether the creator utilized written contracts providing that the
materials could only be used with the creators future involvement
or express permission
Courts can look to contracts, even if unexecuted, as
evidence of the intent of the party submitting the contract
Defies logic that P wouldve paid D for his services if P
couldnt have used the programs without further payment
pursuant to a separate licensing arrangement that was never
mentioned in their agreement
Unexcuted K submitted by P provided P with a non-
exclusive, unlimited licensing of software
Whether the creators conduct during the creation or delivery of
the material indicated that use of the material without the creators
involvement or consent was permissible
The parties didnt discuss a licensing agreement until their
arrangement was ending delivered the software without
any limitations on Ps use

122
The Revision Privilege for Collective Works
201(c) of the Act contains a provision that affords the creators of collective
works an automatic, royalty-free license to republish copyrighted contributions to
those works in certain circumstances

New York Times Company v. Tasini (SC 2001)

Facts: A number of freelance journalists (including Tasini) wrote articles that
were published in various publications (including the NY Times). Contracts were written
and the journalists were paid for their work. Later, the publishers contracted with
database services (like LEXIS/NEXIS) to put all the articles in searchable, online
databases. The journalists sued for copyright infringement. The journalists argued that
they had never contracted for their work to be put into a database, especially since they
weren't going to get paid anything extra. The publishers argued that 17 U.S.C. 201(c)
accorded them protection.
Issue: Do print and electronic publishers violate the copyrights of freelance
authors when they include the freelancers' already-published articles in computer
databases without the author's permission?
Holding: The publishers are not sheltered by 201(c) 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', or 'as
part of any later collective work in the same series.
When a freelance author has contributed an article to a collective work
(newspaper or magazine) the statute recognizes two distinct copyrighted works
o Copyright in each separate contribution to a collective work is distinct
from cr in the collective work as a whole - 201(c)
o Cr in the separate contribution vests initially in the author of the
contribution
o Cr in the collective work vests in the collective author and extends only to
the creative material contributed by that author, not to the preexisting
material employed in the work - 103(b)
201(c) allowed a publisher to republish a contributor's work in three special
circumstances:
o In the collective work itself,
o In a revision of that collective work,
o In a later collective work in the same series.
o Ex: publishing company could reprint a contribution from one issue in a
later issue of its magazine, could reprint a contribution from a 1980
edition of an encyclopedia in a 1990 revision of it, but could not revise the
contribution itself or include it in a new anthology or an entirely different
magazine or other collective work
The Court found that the database was not the same as the original publication
format, therefore it did not count as part of the original collective work, or a
revision.
o When the user conducts a search, each article appears as a separate item
within the search result without the graphics, formatting, or other
articles with which the article was initially published

123
 Revision: denotes a new version, and a version is, in this setting, a distinct
form of something regarded by its creators or others as one work
o The massive whole of the database is not recognizable as a new version of
its every small part
Dissent by Stevens:
The conversion of the text of the overall collective work into separate electronic
files shouldnt, by itself, decide the question
o Principle of media neutrality

New Uses and Old Language

The dispute in Tasini arose in part because of technological change
o CDs and networked databases didnt exist when the1976 Act was enacted
Interpreting the scope of the privilege often turned on the meaning of what
constituted a revision
Disputes about whether a licensee may exploit a licensed work through new
marketing channels made possible by technologies developed after the licensing
contract

Boosey & Hawkes Music Publishers v. The Walt Disney Company (2nd
Cir. 1998)
Facts: Disney wanted to use Ps music throughout the world in a motion picture.
The work was in the public domain in the U.S., but was copyrighted in some countries. P
and D entered an agreement giving D the right to use the work in consideration of a fee.
The agreement specified that Disneys license to the work is limited to the use of the
musical composition in synchronism or timed-relation with the motion picture. P made a
reservation of all rights not granted in the agreement. D released the movie (Fantasia) in
video format, and P is claiming that the agreement didnt include a grant of rights to
Disney to use the work in this format.
Issue: Whether the motion picture license covers video format.
Holding: The license for motion picture rights extends to video format
distribution.
Bartsch v. Metro-Goldwyn-Mayer: licensees may properly pursue any uses which
may reasonably be said to fall within the medium as described in the license
o A license of motion picture rights to a play included the right to telecast
the motion picture
o If the words are broad enough then this is the fairest outcome at least
when the new medium isnt completely unknown at the time of
contracting
The words in the agreement were broad enough to include distribution of the
motion picture in video format
o Right to record the work in any manner, medium, or form for us in a
motion picture
The burden of excluding the right to the new use will rest on the grantor
A nascent market for home viewing of feature films existed at the time of the
agreement

124
 o If new-use licensing hinges on the foreseeability of the new channels of
distribution at the time of contracting
This result is more fair and sensible than a result that would deprive a contracting
party of the rights reasonably found in the terms of the contract it negotiates
o Even if it deprives the author-licensor of participation in the profits of new
unforeseen channels of distribution
o Focus on neutral principles of contract interpretation rather than solicitude
for either party (author vs. big business)
Intent of the parties wouldnt be helpful because the subject of the inquiry is not
likely something that the parties were thinking about

Random House v. Rosetta Books (2nd Cir. 2002)

Facts: D contracted with several authors to publish certain of their works in
digital format over the internet. Once it did so, P sued D, accusing it of committing cr
infringement and tortuously interfering with the contracts P had with some authors by
selling its e-books. Though the text of the ebook is the same as that of the original work,
the ebook contains various features that take advantage of its digital format. While each
of Ps agreements with its author differs in some respects, each uses the phrase print,
publish, and sell the work in book form. Some of the agreements contained a non-
compete clause.
Holding: To print, publish, and sell the work in book form does not include the
right to publish the work as an ebook
This language is understood to be a limited grant in the publishing industry
Two elements to establish a prima facie case of infringement: ownership of a
valid cr, and copying of constituent elements of the work that are original (Feist)
o Here, only the ownership prong is at issue since the text of the ebook is
identical to the text published by P
Interpretation of an agreement purporting to grant a cr license is a matter of state
contract law
o NY: interpret as to give effect to the intention of the parties as expressed
in the ks language consider the entire k and reconcile all parts to avoid
an inconsistency
Relying on the language of the license k and basic principles of interpretation
(Boosey and Bartsch), the grant to P doesnt include the right to publish the work
as an ebook
The grant of rights section has separate grant language to convey the rights to
publish book club editions, reprint editions, abridged forms, and editions in
Braille
o This language wouldnt be necessary if the phrase in book form
encompassed all types of books
The authors reserved a lot of rights to themselves by striking out k provisions
evidences an intent by the authors not to grant the publisher the broadest rights in
their works
Cant use the non-compete clause as evidence that the authors granted P broad,
exclusive rights in their works
o The grant of rights follows from the grant language alone

125
 o Remedy for breaching that clause would be a breach of k action against
the authors, not cr infringement against D
o Non-compete clauses in NY must be limited in scope to be enforceable
Boosey and Bartsch found that the new use was included within the grant
language. Here different because:
o Language conveying the rights in those cases was broader than here
o The new use in those cases fell squarely within the same medium as the
original grant
o In those cases, the licensees have actually created a new work based on the
material from the licensor the right to display that new work is
derivative of the right to create that work
Here, though the publishers participate in the editorial process,
they display the words written by the authors, not themselves
o Here, the policy rationale of encouraging development in new technology
is at least as well served by finding that the licensors (the authors) retain
these rights to their works

Copyright Litigation
Proper Court
Federal courts have exclusive subject matter jurisdiction over cr infringement
actions 28 USC 1338
In the vast majority of cases, the question of whether the asserted cause of action
arises under cr law will be clear and undisputed
o But sometimes the issue is unclear as to whether the action is one for
breach of contract, arising under state law

Bassett v. Mashantucket Pequot Tribe (2nd Cir. 2000)

Facts: P operates a business that produces films and television programs. It
entered into an agreement with D, a Native American tribe, for the development and
production of a film about the Pequot War for the Mashantucket Pequot Museum. The
agreement stipulated that P would hire and supervise the development a writing of a
screenplay, and that D would compensate P for development costs according to an agreed
schedule. Also, at such time that D approved the final draft of the screenplay, P would
have exclusive rights to product the film for exhibition at the Museum. P delivered a
script to D, who then terminated the agreement. D then filmed a motion picture and
allegedly intends to screen the film at the Museum. P sued D for cr infringement of the
script and for breaching the agreement.
Holding: Ps claim arises under the CR Act. For claims of infringement arising
from an alleged contractual breach, use the T.B. Harms test When a complaint alleges
a claim or seeks a remedy provided by the CR Act, federal jurisdiction is properly
invoked
T.B. Harms: A suit arises under the Copyright Act if:
o The complaint is for a remedy expressly granted by the Act or,

126
 Suit for infringement or for statutory royalties for record
reproduction
o The complaint asserts a claim requiring construction of the Act
Schoenberg v. Shapolsky Publishers: test for determining the existence of 1338
jurisdiction in cases alleging violations of the CR Act resulting from breach of
contract
o Whether the claim for cr remedies is merely incidental to a
determination of contract rights
If not incidental whether the complaint alleges a breach of a
condition to, or a covenant of, the k licensing or assigning the cr
If breach of condition alleged district court has subject
matter jurisdiction
If breach of contractual covenant whether the breach is
so material as to create a right of rescission in the grantor
o If yes arises under the CR Act
Schoenberg test is unworkable
o A P denied access to a federal forum on the theory that his cr claims are
incidental to a k dispute is absolutely denied the benefit of cr remedies
Undermines the Acts capacity to protect cr interests
o Vague
o Deviated from T.B. Harms, which relies on SC authority

127