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I. Copyright in Context
IP Clause of the Constitution, Art I, 8 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
o Copyright has a purpose to promote the progress of Science
(knowledge and learning) and useful arts (technology).
o Copyright has a means exclusive rights for limited times
A. Purposes of Copyright
Economic Purpose Copyright as innovation policy
o Incentivize authors by giving exclusive rights. This makes it
worth their while to create.
o Without copyright, underproduction because intellectual goods
are easy non-rivalrous (easy to share) and non-excludable (hard
to fence).
People have incentive to copy because bear only marginal
costs of copying. Would thus be able to reproduce and
undercut the person who invested in creating.
o Solutions to underproduction
Public provision
Incentives
o Copyright creates legal power to exclude. Incentivizes by
assuring limited copying.
o If right are too extensive, then adds cost to society. Overproduce
at first and then underproduce because follow-on creation
restricted.
Speech Policy
o Giving incentives to create keeps government out of the business
of producing media.
o Founders preferred private production of expression so
government not in charge of the presses.
Natural Rights/Moral Rights
o Someone who invests effort in creating expression has natural
right and should be rewarded.
o Dominant view in Europe.
o Somewhat related to Lockean labor theory, but copyright law
does not look to how hard someone worked.
B. Hardy Thesis
Works need enough protection to make it worthwhile to produce.
o
o
o
o
4)
5)
6)
7)
A. Fixation
101
o
o
o
B. Originality
Not defined in the Copyright Act. Just use phrase original works of
authorship.
o This is both statutory and constitutional floor.
Require originality to justify granting rights. Otherwise copyist has
added nothing and not worth the cost of giving rights to incentivize the
copy.
Feist v. Rural
o Originality is the sine qua non of copyright
o Originality requires independent creation
o Originality requires at least some minimal degree of creativity
(not much more than independent creation). We argue about
how much.
Does not require novelty, ingenuity, aesthetic merit
1. Historical
Court requires less and less originality as art world become less and
less representational.
2. Modern Originality
Feist is the bottom line anything that marks a work as the product of
the authors original independent creation.
o Independent creation
o Some minimal level of creativity.
We argue about how much
Teeth to Feist?
o Checklist
o Filtering
o Intent
o Filter out objects from the real world to hone in on the tiny part
added by author?
o Go to intent? Slavishly copy was intent, not create art.
C. Idea/Expression
102(b) - Copyright does not extend to any idea, procedure, process,
system, method of operation, concept, principle, or discovery,
regardless of form in which described, explained, illustrated, or
embodied.
o We argue about whether its a system or not. Ambiguous.
Purposes of 102(b)
o 1) Distinction between copyright and patent
o 2) Distinction between copyright and public domain
Merger Doctrine
o Number of possible variations able to be used to express this
idea is so small that cant allow someone to copyright a
particular substantiation because then nobody else would be
able to express that idea at all.
o Second comer can duplicate in entirety, but must show the
necessity of merger.
Thin copyright
o Number of possible variation is small, but a little bigger than
merger. Only given if there are enough possible variations that
others will be able to express also. Limit the copyright to just the
words/images chosen to depict the expression. Copyright not
infringed as long as not virtually identical copy.
Scene a faire - incidents characters or settings which are as a practical
matter indispensible, or at least standard in the treatment of a given
topic. Thus, everybody should be able to use.
o Scene a faire as cultural method of operation?
o Scene a faire lack originality?
o Merger in scene a faire?
D. Derivative Works
Derivative works work based on one or more preexisting works, such
as a translation, musical arrangement, dramatization, fictionalization,
motion picture version, sound recording, art reproduction,
abridgement, condensation, or any form 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.
Derivative work copyright is only in the part added by the author of the
derivative work. Does not extend to the underlying material.
Derivative work protection does not extend to any material used
unlawfully (without permission or without some exception like fair use)
Two part test for derivative work copyright:
o 1) Original aspects must be more than merely trivial
o 2) Must not affect or enlarge scope of original copyright.
E. Compilations
Compilation a work formed by the collection and assembling of
preexisting materials or data that are selected, coordinated, or
arranged in such a way that the result as a whole constitutes an
original work.
o Can include a compilation of data.
Copyright in factual compilation is thin. Only in that
arrangement and selection. Others free to use the facts
without same selection and arrangement.
o Include collective works.
A collective work is a collection of things like newspapers or articles
that are independent works themselves.
v. Rural (p.101)(1991)
Feist copies listings from Rurals White Pages.
Court rejects sweat as enough to get you copyright.
Alphabetical listing is garden-variety selection, coordination, or
arrangement.
Alphabetical is a fact. Has a merger/necessity feel to it.
Mason v. Montgomery (p.108)
o Someone puts together survey maps to create new map.
Someone else puts them slightly differently.
o First guy map is copyrightable as a compilation and a PGS work.
o Originality in guy deciding what data to include in the map.
Roth Greeting Cards v. United Greeting Cards (p.106)
o Greeting cards took a bunch of copyrightable stuff (common and
ordinary words along with artwork that wasnt infringed).
o Considering text, arrangement of text, association of art and
text, the whole is original work of authorship copyrightable as
compilation.
o United Copied the total concept and feel of Roth.
Conceptual Separability
Kieselstein-Cord v. Accessories by Pearl (p.215)
o Kieselstein-Cord makes ornamental belt buckles that are
expensive. Someone knocked them off. KC sues for copyright
infringement.
o Court holds the design of the belt buckles are copyrightable.
Conceptually separable.
o Dissent can see the buckle without fancy stuff, but cant see
fancy stuff without buckle. Not separable. This against Bleistein
because privileging high art.
Carol Barnhart Inc. v. Economy Cover Corp. (p.218)
o Mannequin torsos. They get used in other things like art
installations also.
o No PGS copyright in the mannequin torsos. The aesthetic
features are part of the utilitarian. Nothing there that isnt
functional.
Distinguish from ornamental part of the belt buckle.
o Ordinary observer wouldnt conceive of them as anything but
mannequin.
o Dissent we can think of these as mannequins sometimes, art
other times. Test should be whether the concept of the
utilitarian function can be displaced in mind by some other
concept. Thats what it means to be conceptually separable.
Majority just dont physical separability.
Dont discrim against the avant garde.
Brandir v. Cascade (p.221)
o Bicycle rack made of bent metal tubing.
o Intentionalism - No copyright because form influenced by
function. Made changes to make more functional.
o This is uncopyrightable industrial design.
KieselsteinCord:
Primary
function/elite
judgment
Barnhart
Majority:
Ord. use by
avg.
observer.
Barnhart dissent:
Mind of
beholder/displace
ment
Brandir:
Intentionalis
m
Test
Belt
Buckles
Torsos
Bike Rack
Institutiona
lism
Copyright
Maybe,
depending
on who is
institution
But, nobody
just
displayed the
torsos as art.
They thought
it was raw
material.
Maybe,
depending
on who is
in. These
were
industrial
design
awards, not
art awards.
Formalis
m
Maybe
depends
on who is
ordinary.
No
Copyright
Audience
Response
Copyright
Intentionali
sm
Copyright
Copyright
Intention to
create
sculpture?
Were actions
entwined
with
utilitarian
choices?
No
Copyright.
Ordinary
use is a
bike rack.
No
copyright.
Copyright
No
Copyright.
Influenced
by function.
G. Architectural Works
Plans were always protected as PGS works
Buildings themselves protected starting in 1990. Can get protection
for unauthorized building.
Copyright in the overall form and the arrangement and composition of
the spaces.
o Similar to a compilation.
H. Computer Software
Code protected as a literary work
o Source code looks like language
o Object code is 10111010.
Software is odd because starts out looking like language and ends up
looking like a method of operation under 102(b).
Copyright extended because concern about underproduction of
intellectual good. Theres a big potential source of wealth out there.
Non-Literal Copying
Whelan v. Jaslow (p.246) (1986)
o Because protected as literary work, structure, sequence, and
organization are protected.
o Argue that overall purpose/function of a program is the idea and
everything not necessary to that idea is expression.
Here, Program to Support Dental Lab is the idea. All else
protected.
Because Jaslow copied structure, even though own code,
thats infringe.
o Immensely unpopular. Criticized for assuming that only one idea
in a computer program, when computer programs are actually
lots of subroutines with their own ideas.
Computer Associates v. Altai (p.244) (1992)
o Interoperability of programs. CA has program that makes their
code operable on mainframe computers. Altai copied some, then
find out and use reverse engineer clean room to make a program
with same function.
o If Whelan test, then the idea is a translation module and the rest
is expression and protected.
o Abstraction, Filtration, Comparison Test
1) Abstraction identify the different layers of a programs
structure and associate an idea to each layer. Start with
whole complex program and then replace lower levels with
functions and then abstract more and find where those fit
in and what function. Break down to get purpose of
subcomponents.
2) Filtration at each level filter out anything included that
is
Public domain
I. Characters
Characters can be copyrighted separately from the rest of a work.
o Type of copyright it springs from depends on the work. Could be
a literary character, could be a PGS, could be audiovisual, etc.
Two possible tests:
o 1) Story being told test (Sam Spade) character copyrighted if
he is the story being told. Difference between a character driven
story and a plot driven story.
Ex: Forrest Gump
o 2) Distinctively delineated test character copyrighted
depending on how precisely defined he is. Can also be applied to
non-central characters.
Can you have a character without context? The more distinctively
defined, the less context need.
We want copyrighted characters so people can license the characters
for toys and stuff.
o Promotes purposes of copyright because provides more
incentives to create because more revenue streams.
o But chills things like fan fiction.
Copyright in work not enough because a character can be taken
outside story or context of original work.
Concerns:
o If story being told test, you dont get to license the stormtrooper.
J. Databases
Databases economically valuable, but made up out of 102(b) info.
Copyright depends on selection and arrangement of facts. Must have
originality in that arrangement or selection.
o Must be original selection or arrangement.
This compilation copyright.
2. 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.
o Contributions must be independently copyrightable (Erickson).
o Must be an author/originator the master mind.
Author is more than just creative contribution.
o Must have intent by both parties to be joint authors.
Avoid transaction costs of requiring contracts and
unfairness in allocation by requiring this.
Two or more authors. They are co-owners of the copyright with equal
and undivided interest. Each author may exploit the work, subject to
obligation to account to co-authors.
o Cannot assign percentage of a work in joint authorship.
o All authors must agree on exclusive license.
B. Formalities
Pre-1976 Copyright had formalities attached:
o 1) Publication
o 2) Notice
o 3) Deposit
o 4) Registration
If you didnt do the formalities, you didnt get copyright. Needed to do
them at the time of publication also or else forfeit protection.
1. Publication
1909 Act Copyright becomes available at moment of publication.
Different types of publication developed so people arent caught by
trap of failing to do formalities:
o 1) General publication work made available to public at large
without regard to their identity or what they intended to do with
it. They are able to exercise dominion over it. Divests owner of
common law copyright.
Ex: Publisher prints 500 copies and sends to books store to
be sold
Occurs if distributed to public in manner that they can
exercise dominion and control or if displayed in manner to
permit unrestricted copying.
o 2) Limited publication distributed to a select group for limited
purpose without right to sell or duplicate or distribute.
Ex: You send 5 copies to colleagues of an unpublished work
for comment.
Technology changes put pressure on definition of publication.
o VCRs mean can control even broadcast.
o Broadcast as publication?
1976 move to fixation.
2. Notice
Strictly enforced under 1909 regime. Had to have the right mark and
the right symbols., names, and order or else copyright would be lost.
Liberalized in 1976 by giving opportunity to cure.
Abandoned in 1989 when accede to Berne.
3. Deposit
1909: Strict deposit requirements attached to general publication
4. Registration
1909 Act: Registration mandatory to renew or to file suit.
1976 Act: Registration mandatory to file suit, and to receive certain
remedies
o Registration seemed like a good way to encourage deposit and to
let people know who owns what.
Berne Implementation: Registration mandatory for U.S. owners to file
suit, and for all owners to receive costs and attorneys fees.
C. Duration
See slides and flow chart for Class 9. See also (p.153-158). Its more
complicated than this, but this is basics.
1. Works created after Jan 1 1978
Natural person: Life plus 70 years
Joint authors: Longest life plus 70 years
Works made for hire, anon works, pseudoanon: 120 years or 95 years
from publication, whichever expires first.
2. Created but unpublished and unregistered prior to Jan. 1, 1978
These were brought under Fed copyright for the first time 1/1/1978.
Could be 19th century letter, and if unpublished, then it now under Fed
Copyright.
Apply the same rules for works created after 1/1/1978, except felt it
wasnt equitable to have works enter into copyright and then
immediately leave copyright for works that are older.
o Copyright lasted at least until 12/31/2002 if would otherwise
have already expired.
o If published before 1/1/2003, copyright will last at least until
2047.
3. Works created and published or registered before 1/1/1978
If work in public domain before 1/1/1978, then they stay there.
If not, protection can last 95 years, but broken into:
o 28 year initial term
o 28 year renewal term
1. Renewal
Under 1909 Act, dual term system of copyright.
o Original term of 28 years with a second renewal term of 28
years.
o Renewal term has since been extended twice times so theres 28
year initial term, 28 year renewal, extended 19 years in 1976,
and another 20 years in 1998 for total 95 years
Renewal had to be filed in the final year of protection of original term.
Otherwise lose the renewal term.
Works published prior to 1964 required actual filing. If published after
1964, renewal is automatic.
When can author assign his renewal term?
o Miller Music Case 1960 court held that when an author dies
before renewal term arrives, any assignment he may have made
is a nullity and executor can do what he pleases.
o Fisher 1943 - An assignment of copyright rights in renewal term
by author is valid against the world if the author is alive.
If author dies before renewal term, the rights pass to his heirs by
statute. Cannot change where the rights go. (See p.176)
Standard practice was to have author promise the renewal term and
even have spouse and heirs promise their interests.
Stewart v. Abend (p.170)
o Woolrich writes story and publishes in 1942. Assigns movie
rights in 1945.
o Rear Window made in 1954, but Woolrich dies, so his promise to
transfer renewal term is invalid.
o Executor gets renewal term and sells to Abend.
o Under 1976 Act, can continue to use authorized derivative works
after termination.
o 1909 Act is opposite. Cant continue to use derivative works
authorized before renewal term.
Policy of wanting to give authors family second bite at the
apple.
2. Termination of transfers
New with 1976 Act. Give author or heirs power to terminate a
previously effected transfer of copyright ownership.
Two kinds of termination:
o 203 Termination for transfers after 1/1/78, even if involves a
pre-1978 work.
o 304(c)-(d) for transfers before 1/1/78.
Five year windows to terminate and have to notify at least 2 years
before termination effective and up to 10 years ahead of time.
Assignment of waiver of termination rights is expressly prohibited by
Congress. Contract provisions to contrary are invalid.
Ty v. GMA (p.320)
o Beanie Babies (Louie the Cow and Squealor the Pig) and some
Beanie Baby alikes. GMA admits to Louie, but denies copying
Squealor.
o Copying entails access, so if too works are so similar as to make
it highly probable that the later one is a copy, dont need to
address access separately because must have had access to the
original.
Can rebut inference of access with proof could not have
seen earlier work or of independent creation.
o GMAs pig is strikingly similar to TYs but not to public domain
(i.e. a real pig). GMA did not point to any other fictional pig that
it resembled.
Probably should have put some other fictional pigs in the
record because reality is it looks pretty generic.
B. Reproduction Right
Two types of copies:
o 1) Exact copies if access is clear, then pretty easy.
Infringement unless some kind of defense excuses the copying.
o 2) Non literal copies works that just too similar.
1. Non-Literal/Exact Copies
Substantial similarity did defendant take too much? Can take ideas,
but not expression.
o 2nd Circuit
Lay observer test: Did the defendant take so much of what
pleasing to lay ear that lay observer just says too much?
Would lay observer recognize alleged copy as having been
appropriated from copyrighted work?
Criticism: Is this liability just for cultural referencing?
Lots of potential liability there.
Fight out about jury instructions on idea/expression
and stuff.
More discerning observer test for when not totally original.
Some taken from public domain: Take lay observer and
have them remember that only parts of the work are
copyrighted. Compare only copyrighted elements and see
if the total concept and feel are similar? However, dont
dissect the work into basic shapes and colors.
Backlash because confusion in the test. How do you
be more discerning without dissecting? Isnt total
concept and feel just ignoring being discerning?
o 9th Circuit
Extrinsic/Intrinsic Test
Extrinsic objective comparison of expressive
elements filtering out stuff thats just idea or scene a
faire. Are there similarities?
o Less bite when not literary and judges feel
uncomfortable doing this on their own. In more
difficult categories, they throw to a jury for
second step.
o Can bring in experts to dissect. This means a
lot of litigation and cost, especially when not
literary.
Intrinsic ordinary observer, total concept and feel.
Basic Doctrine
Nichols v. Universal (p.326)
o Two works (a play and a movie) play off ethnic stereotypes of
30s.
o Non literal copying is protected characters and sequence are
the substance of a work.
o Abstractions Test
Abstraction upon any work, a great number of patterns of
increasing generality will fit as more and more incident left
out. There is a point where no longer protected because
just ideas.
o Here the characters are stock and the other similarities are
merely at idea level. Defendant did not take enough, if any.
2nd Cir
Arnstein v. Porter (330)
o Cole Porter had his stuff all on the radio and things. Arnstein was
a crank who sued lots of guys who alleged that people followed
him and copied his songs.
o Facts show Porter may have had access. Its strained, but court
doesnt dismiss.
o Court doesnt feel comfortable saying these arent similar or only
took ideas. But doesnt use experts.
o Test: Send it to the jury and ask whether defendant took from
plaintiffs work so much of what is pleasing to the ears of lay
listeners that they think defendants copying is
improper/wrongful appropriation.
Judges dont feel comfortable articulating differences, so
send it to the jury.
But how do juries know idea/expression?
9th Cir
Sid & Marty Krofft v. McDonalds (p.333)
o HR Pufnstuf says McDonalds infringed with McDonaldland and
Mayor McCheese.
o Extrinsic/Intrinsic Test must be substantial similarity of idea and
expression
Extrinsic are the ideas similar at level of abstraction?
Bring in experts to dissect
Doesnt do a lot of work filtering because people
dont sue if not similar idea.
Lawyers hate because its an invitation to fighting
and expense for no reason.
Intrinsic ordinary observer total concept and feel.
Similarity in protected expression?
Cavalier v. Random House (p.349)
o Childrens book with moon character sues Elmo and Ernie books.
2. Exact Copies
Exact copies infringe except to the extent there is an exception
justifying it.
o 117 Backup copies of computer programs, etc
o 107 Fair use
o 108 Library copies
o 121 copies for blind people
o 405(b) Innocent Infringers
Any person who innocently infringes a copyright in reliance
upon an authorized copy or phonorecord from which notice
was omitted, and which was publicly distributed by
authority of the copyright owner before the effective date
of the Berne Implentation Act of 1988 incurs no liability for
acts before notice if can prove misled by omission of
notice.
504(c)(2) Court has authority to mitigate damages to a nominal
amount if infringer can prove lack of awareness and no reason to
believe that his or her acts constituted infringement of copyright
Copies in RAM are copies and are infringement.
o Compare to EU Copyright Directive 2001 - temporary acts of
reproduction which are transient or incidental and integral and
essential to a technological process and whose sole process is to
enable transmission in a network or a lawful use which have no
economic impact are exempted from the reproduction right.
C. Distribution Right
106(3) right to distribute copies or phonorecords to the public by
sale or other transfer of ownership, or by rental, lease, or lending.
Historically wasnt a separate right. Was just included in the
publication right. Comes from the 1976 Act.
Issue is whether need to actual distribute or merely make available for
distribution to infringe.
o See class notes.
1. Performance
Columbia Pictures v. Redd Horne (p.428)
o VCR technology
o In-store rental with private viewing rooms violates public
performance right because guy at the counter sends the tape to
the room.
o First sale doesnt cover because just because it doesnt cover
public performance even if sold.
o Viewing room is a place open to the public, so meet definition 1
of publicly.
o Its a transmission from front desk to viewing room and its a
place in clause 1.
Transmission doesnt seem to have to be over public
airwaves. Would have to argue that its not received from
beyond the place where sent.
o Distinguish distribution and first because that sells one to one
whereas performance is one to many. These are very different
economically and may want to price and structure differently.
o In-store rental public performance because replacing theater?
Rental blurs distinction of one to one vs. one to many.
o Would have been good to promote progress and reduce
deadweight loss?
o But were troubled that Maxwells getting so much money off a
single copy of a video tape. Should gray area exploiter get
money or copyright owner?
2. Display
First Sale Doctrine 109(c) the owner of a particular copy lawfully
made can display the copy publicly either directly or by the projection
of no more than one image at a time to viewers present at the place
copy located.
Jen Martin sculpture on city land that gained some local notoriety but
how do we know when recognized statute under 106A(a)(3)(B)?
Who
handles?
Sound Recordings
Reproduction &
Distribution in
Phonorecords
106(1)/(3)
Subject to 115
mechanical license
Public Performance
Mechanicals by Harry
Fox
Blanket licenses at
rates set by Collective
Rights Organizations
(ASCAP, BMI, SESAC)
106(4)
106(6)
Subject 114
Who
handles?
Record labels
114
Over the air
digital no
license.
Non interactive
114(d) SoundExch.
Interactive:
Negotiated
Licenses with
labels
2.
Sampling
Sampling musical work treated generally as de minimis, no big deal.
Sampling sound recording you need a license or dont sample.
How do you separate performance from composition?
o
Girl Talk
o Might we say that this is given a completely different purpose, so
not derivative work and what we have is not the original work
but something else.
o This isnt diminishing the market.
o Still, go get licenses because its the risk averse thing to do.
B. Indirect Liability
Contributory Infringement - Liability if one materially contributes in
infringement
Vicarious Liability liability if you benefit from infringement and can
control.
Should we got after the least cost avoider and say that intermediary is
exactly who we should go after or else the internet will be a cesspool of
infringing material and will be no way to stop it?
But do we want to empower a bunch of censors?
1. Contributory Infringement
Liability if one materially assists in infringement
Three elements
o 1) Knowledge of the infringing activity
Actual knowledge, or
Also can infer knowledge from red flag facts
o 2) Induces, causes, or materially contributes to the infringement
Landlords renting a space in arms length transaction does
not count as contribution
Dance halls providing a venue rises to level of material
contribution
Gershwin concert booking and promotion contribution
even though not actually providing hall.
o 3) Predicate act of direct infringement by a third party
Knowledge
o Make knowledge an issue by informing the defendant, but thats
not enough in itself. Mere unsupported allegation doesnt
establish knowledge.
If defendant cannot reasonably verify a claim of
infringement because of possible fair use, lack of copyright
notices, lack of documentation from plaintiff, then no
knowledge and no contributory liability.
o Must have knowledge before provide the infringing service or
else it would have been too late for them to do anything about it.
o Time frame can be expanded if retain control.
o This brings time all the way up to right now though if could do
something about it.
Substantial participation
o Providing facilities for automatic distribution is substantial
participation.
Netcom (p.483)
o The contributory liability case turns on whether they had
knowledge.
Substantial participation by providing facility for auto
distrib.
Cherry Auction (p.480)
o Cherry Auction operates a swap meet and rents space to vendors
with booths. Auction provides parking, advertising, and retains
right to exclude vendors for any reason.
o Support here is enough for contributory infringement.
2. Vicarious Liability
Three requirements:
o 1) Right and ability to control the infringing conduct
Doctrine unclear about how much control needed
o 2) Direct financial benefit from the infringement
Causation style but for the infringement, wouldnt have
gotten benefit.
If infringement a draw, then thats enough to be a
benefit
Accounting style taking a cut of every infringing
transaction.
o 3) Predicate act of direct infringement subject to U.S. copyright
courts.
Culpable intent
Effort to satisfy known demand for infringement
Absence of design efforts to diminish infringement
Marketing strategy and business model
o 2) Induce, Cause, or Material contribution to Infringement
o 3) Predicate act of direct infringement
Circuit Splits
o Contributory Liability and Sony Rule
9th substantial can be a wide variety of things. Doesnt
say what.
7th says need actual uses and some amount of them.
o Vicarious liability
7th says no vicarious liability because no principal agent
relation and right to terminate is not right to control.
9th Circuit says vicarious liability available.
Sony may be limited in the networked world, because have more
knowledge and hard to say that dont have culpable intent when create
something you know will satisfy demand for infringement. That may
mean it doesnt really mean much anymore.
c. Is
C. Criminal Liability
Baseline difference between civil and criminal infringement is mens
rea. Must establish willful infringement.
Willfully infringes AND one of the following:
o Comml advantage or private financial gain, including barter
File sharing is barter to support a criminal prosecution
o Distribution or reproduction of one or more copy of one or more
works with retail value of greater than or equal $1000 within 180
days.
Think about retail value of movie, music, or video game
and how easy it would be to reach the $1000 threshold.
This exposes a lot of people to at least misdemeanor
liability
o ART Act knowingly making available on public network a work
being prepared for commercial distribution
Most DAs dont pay attention to this. They have murders to prosecute.
VI. Remedies
Injunctive relief
Seizure, Impoundment, Destruction
Monetary relief
o Actual damages and lost profits; or
o Statutory Damages
Costs and Attorneys fees only available if timely registered copyright.
Three year civil statute of limitations.
A. Injunctive Relief
Four Factors:
o Irreparable Injury
o Monetary remedies inadequate to compensate
o Balance of equities
o No harm to public interest
Before eBay v. MercExchange (2006), a patent case, courts just
automatically enjoined. Presumed irreparable harm and could easily
prove inadequacy of monetary remedies at permanent stage. At
prelim stage, looked to likelihood of success on merits.
Before eBay, in special circumstances where great public injury
would be worked by an injunction, the courts could award damages
rather than injunction.
o Abend v. MCA (Supp.488)
Now, courts crank through the four factors, but uncertainty.
o Some still presume irreparable harm. Others require plaintiff to
show in some way.
o 2nd Circuit is openly against eBay. 9th Circuit struggling with it.
2nd Circuit thinks especially should be more lenient at prelim injunction
stage.
o But many copyright cases over at prelim injunction.
o If fewer permanent injunctions, makes less sense to restrain at
prelim and do prior restraint.
Pre eBay
Abend v. MCA (Supp.488)
o Rear Window Case. It would cause injustice to enjoin the
continued use of the film and great public harm.
Film owners wouldnt get benefit of all the expression they
put in the film.
Public loses a great movie.
o Special circumstances mean court awards damages rather than
enjoin
Post eBay
B. Monetary Remedies
1. Actual Damages + Profits
Burden shifting procedure
o Copyright owner proves infringers gross revenue
o Infringer proves deductible expense and profits attributable to
other factors
Infringer should make some attempt to do his own attribution so it
doesnt look ridiculous. Unstated burden that have to connect profits
to infringement.
Infringement that is qualitatively very small portion of the product is
increasingly common. Its really hard to extract a uniform set of
principles for how you do the pro-rating and the attribution.
o It seems ridiculous to say logo gets all the money or none of the
money. It seems ridiculous that the 6 second sample gets all the
money from the song.
C. Statutory Damages
At any time in suit can elect statutory damages rather than actual
damages + profits.
o $750-$30,000 as court considers just
o Up to $150,000 if willful
No guide to the judges discretion as to how much it should be. Courts
just pick a number.
One award per work infringed.
o If one work infringed 100,000 times, one award.
o If five works infringed twice, five awards.
o What about unlicensed Star Wars toys of 5 characters? Is that 5
infringements of 1 work or 5 infringements of 5 works?
Online infringement is so enormous seems impossible to ever by paid.
cases, provided that the reproduction (2) does not conflict with normal
exploitation of the work and (3) does not unreasonably prejudice the
legitimate interests of the author (TRIPS Art. 13 uses same test, but for all
of the exclusive copyright rights)
U.S. fair use test four factors:
o 1)Purpose and character of the use
Transformative?
Purposes such as comment, criticism, teaching, news
reporting, scholarship, research.
Parody
o 2) Nature of the copyrighted work
Unpublished is not a bar to fair use by itself.
Creative work more protection.
o 3) Amount and substantiality of portion used (in relation to
copyrighted work as a whole)
Depends on context. Harper & Row used 300 words of
200,000 and it wasnt fair use.
o 4) Effect of the use upon the potential market for, or value of, the
copyrighted work
Factors 1 and 4 related if transformative or a market you cant claim like
comment or criticism, then cant supplant the market. If not, then merely
supersedes and probably not fair use.
o But if establish a market do we suddenly care about that market?
Can violate both reproduction and derivative work rights in attempting fair
use.
C. Technical interchange
Sega v. Accolade (9th Cir. 1992) where reverse engineering is only way
to access ideas and functional elements (incl. functional requirement
for compatibility), it is a fair use
o 1st factor D did not seek to avoid performing its own creative
work, did not seek to avoid paying a customarily charged fee, and
did not simply copy Ps code; may consider public benefit
resulting from particular use notwithstanding commercial gain by
infringer
o 2nd factor since unprotected aspects of Ps work cannot be
examined w/o copying, work is afforded a lower degree of
protection than more traditional works
o 3rd factor where ultimate use of copying is limited, this factor is
of little weight
o 4th factor distinction b/w copying in order to make independent
creative expression possible, and simple exploitation of anothers
creative effort; here, D did not copy any element that determines
softwares commercial success
Sony Computer Entertainment v. Connectix (9th Cir. 2000) fair use
o 1st factor commercial use of copyrighted material was
intermediate, thus only indirect or derivative; system is
modestly transformative as it allows use of games in new
environment
o 2nd factor BIOS contains unprotected aspects that cannot be
examined w/o copying, and is thus far from core of intended
copyright protection
o 3rd factor for intermediate infringement where final product
does not contain infringing material, this factor is of little weight
o 4th factor allegedly infringing program is transformative and
acts as legitimate competitor, not merely transplanting
copyrighted work
EU Software Directive Art. 6 authorization of rightsholder not required to
copy code if this is necessary to achieve interoperability; any contractual
provisions to the contrary are null and void
Perfect 10 v. Amazon.com (9th Cir. 2007) follows Kelly v. Arriba Soft,
where providing thumbnails in search results found to be fair use based
on transformative nature of search engines and benefit to public, and
b/c use of thumbnails did not harm photographers market for his images
o 1st factor use of thumbnails highly transformative (serves
different function from original); provides social benefit
AMS
o
o
o
B. Collective Works
D. Contracts v. Licenses
1. First Sale
First sale doctrine allows owners of a copy to sell or dispose. Question
about whether an owner or a licensee turns on whether a contract or a
license.
o If there is written agreement not to resell, are you in breach of
contract or infringing?
Vernor follow Wise. If right to repossess, then license. If not,
contract.
Potentially software just different and we think should restrict
redistribution.
Vernor v. Autodesk
o Autodesk sells AutoCAD with promise not to resell. One of the
people sells to goes rogue and resells to others.
o Two chains of precedent:
MAI Formalism Does contract language impose
restrictions on use and redistribution? Look to the
o
o
UMG
o
o
Jacobsen (Contracts Supp. 38) says to look at the language and see if
the challenged provisions are necessary to perpetrate the purpose of
the agreement.
Contract requires
o Consideration
o Manifested assent
Mere license just permission for act that would infringe.
X. Technological Protection
Technology as cure for market failure make the market smart enough
hand you can cure market failure so people can actually get licenses.
If digital locks and keys are possible, have to recognize that breaking
locks is also possible.
o Wanted protection for technological protection built into the law.
WIPO Copyright Treaty Art 11 - It is vague and open-ended. Requires
adequate legal protection and effective remedies against
circumvention of tech measures used in connection with exercise of
authors rights.
o There are exceptions allowed within the anti-circumvention
framework. It understands that there are uses permitted by law.
o Directs member states only to support rightsholders in
technological protection only to the extent they are protecting
their rights and that they are preventing conduct that is unlawful.
Not a license to use tech to do whatever they want.
A. U.S. gets the DMCA (1201)
Individual acts of
circumvention
Manufacturing or
offering devices that
circumvent
Access Protection
Measures
Prohibited:
1201(a)(1)
Prohibited:
1201(a)(2)
Rights protection
measures
Not prohibited
Prohibited:
1201(b)
XI. Preemption
Express preemption you look in statute and it has a preemption
clause.
o 301 of Copyright Act
Implied presence of express preemption doesnt mean no implied
preemptive effects as well. Conflict implied preemption says although
a state may be permitted to act in a field, it cant do something that
poses an obstacle to the purpose of the federal legislation in the field.
This comes up frequently.
A. Express Preemption
Elements:
o 1) State law covers subject matter within the general scope of
copyright
o 2) State cause of action is equivalent to one of the exclusive
rights of a copyright owner.
Extra elements approach if more elements to the cause
of action, then its not preempted
Broad approach: If functionally can violate the state law
just by doing a 106 right, then its the same.
Harper and Row, Video Pipeline these are examples of the broader
interpretive stance toward the equivalency requirement.
B. Implied Preemption
Universe of intellectual works divided into:
o Copyrighted/Patented
o Public Domain
o Areas left unattended by Congress that they havent considered
where states can do what they please.
o Areas that states can regulate as long as its sieve like trade
secret
Contracts and EULAs not impliedly preempted?
o Yeah, we contract about lots of things, but doesnt the map mean
we have to worry about contracts that end up binding everybody
who has access to a work.
o Especially when its about 102(b) material being locked up.
C. Constitutional Preemption
Commerce Clause doesnt seem to put any limits on Congress. Seems
like they could avoid limits of IP Clause by going under Commerce
Clause.
But S.Ct. has said there can be limits on Commerce Clause from other
clauses of the Constitution
Congress cannot create property like rights in IP under the Commerce
Clause.