Is the material copyrightable? §102: © subsists in original works of authorship, fixed in a tangible medium of expression. Authorship: o Must be human author: animals, complete mechanical processes th (security cameras) or natural processes don’t count ( Kelly Kelly 7 90) o Exists despite assistance of machinery (Sarony 28) o Exists regardless of merit ( Bleistein 34) o Exists even if author was not button pusher (Assuming high degree of control though) (Titanic Dist. 301) o Ownership of work distinguished between ownership of © Forward 1st 71) ( Forward Originality: Feist standard o Independently created—ie., from scratch. Must have added something of his own. Doesn’t require novelty, Feist SC 111; but see Facts are discovered and not © ( Feist Maclean Hunter 2nd 132 ) o Minimally creative—low standard; not everything that’s (Feist and Matthew Bender independently created gets protected. Feist nd 2 132 ) 2 famous examples: Sarony (28) and Zapruder, (also Alfred Bell ( 2nd53), Sebastion Int’nl 3d 88). Fixed: Sufficiently permanent or stable to be perceived reproduced or communicated for more than a transitory period. Perceived either directly or via a device. o Two types of objects: Copy: Any type besides phonorecord where work is fixed Phonorecord: embodies sounds o Work must be fixed by author or at her direction. If unfixed, audience can copy. o Must be sufficiently stable or permanent o Exception: Simultaneous transmission: if broadcast + being recorded. o Exception: §1101 Live musical performance (illegal to fix live musical performance) •
1) Is the Material Copyrightable Subject Matter? §102(a) What kind of work is it? •
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§102—Exclusion of ideas: Is this an unprotected idea? •
© is limited to means of expression st o Baker (100); Lotus method of operation (1 197) —where there’s only one or a few ways to express idea, it o Merger merges with expression. Morrisey (1 st 107). Determining threshold can be difficult (see, ADA protected (7th 145); Southco not protected because formulaic (3rd 146). Concern about company getting a de facto monopoly o Thin © --Where merger may be a problem, court can extend a thin © and protect it but only against verbatim copying. (Morrisey vs. Con’tl Casualty (2d 109)
Literary works: includes anything in words or symbols. Includes computer programs. o Non-fiction: facts and historical research not protected. th 268 ). Visual characters more o Fiction: character that are sufficiently fleshed out are © ( Gaimon 7 th likely to receive protection (even in 9 Cir. That requires a high showing for characters). Scenes a fair—Generalized, banal plot or story devices (ex., star-crossed lovers) o Computer Software: Lotus) User interface: Faces problems of originality and merger ( Lotus) Structural elements are problematic—may face merger issues. Pictorial, graphic, and sculptural works: includes paintings, sculptures, and diagrams. Common geometric shapes excluded. o Exception: Useful articles. Protection for 3D works does not extend to utilitarian aspects of the work. If a work as a whole is a useful article, protection only extends to design features if they can be: Separately identified Exist independently of utilitarian aspects Physical or conceptual separability (Mazer SC 223) o Definition of useful articles: Article having intrinsic utilitarian function that is not merely to convey information or portray appearance. Musical Works: Consists of notes and lyrics—fixed in a variety of ways (paper or phonorecord) Sound Recordings: A collection of sounds fixed in phonorecord. Newton 3rd 272) o 2 separate works ( Audiovisual: Intended to be shown by machine or device (ie., videogames and movies) Dramatic works: Any work intended to be performed as opposed to being narrated or described Compilations: Collections of either data or previously existing works. o If compilation is based on © works, compiler must get permission to get © in his compilation. If based on public domain or permission obtained, then Compilation author gets © in his contribution see Feist, Matthew Bender 2nd 132 , but (order, selection, ect), as long as its sufficiently original ( see nd Maclean 2 136 ). Note, though, the owner of the underlying work retains © in his work. th nd Bender ) said no. Cir. Split for law reports (8 said yes but 2 ( Bender Derivative Works: Based on an earlier work but it transforms it in some way. DW author can get © in DW if he gets permission to make the DW by the underlying work’s o author. He only gets protection in the the DW (ie., those original contributions). o Sufficiently changed— The The key issues here is how much change is necessary to achieve DW (Alva hand of God), however Battlin Battlin (2nd 169) suggests status? Standard is non-trivial variation Alva substantial variation. At the end of the day, there needs to be variation—some significant change. Federal government works: Works made by officers of the federal government do not have © protection and anyone may copy them freely.
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The author of the work owns the ©. The author is the person who conceives of the © expression and causes it to be fixed. o Note—Ownership of item is different than ownership of © Joint Works 201(a): Multitude of authors who collaborate. o In order to be a JW: Each party must contribute © expression to final product. Note idea/expression here—idea guy gets nothing. Each party must intend that the resulting work be a JW (Thomson v. Larson 2d 328). 7th Cir. Follows this (but 9th requires an imposition of one’s own mental conception…exercising decision making authority). o If JW = each co-author is free to exploit, subject to accounting o Each JW author owns an equal, undivided, fractional share o JW authors are free to make derivative works Work Made for Hire §201(b): Work is made for hire if: o Author (creator) is employee acting within scope of employment (CCNV SC 306). Look at law of agency. Discretion; tools; work part of hiring parties regular business; employee benefits; skill level; duration of relationship If employee, is it w/in scope? o Or, if: Written agreement + One of the types of contracted works listed in the statute: Part of collective work Part of motion picture, or other audiovisual work Translation Supplementary work (index, forward, chart, etc) Compilation Instructional text Test/answer Atlas o Hiring party may always demand assignment of ©--but subject to termination rights!! Divisible Ownership: Note, that each of the economic rights is divisible and each of them may be infinitely subdivided. non exclusive right holder (can’t sue) o Licensee— o Transfers of ownership must be in writing
How Long Does © Last? §302 •
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Renewals: Under 1976 Act © must be renewed. §304 •
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Post 1978: Life + 70 Years (§302) o JW: Life of last surviving author + 70 years o WMFH, Anonymous, pseudonymous: 95 years from publication OR 120 years from creation, whichever comes first Pre-1978: © Attached when published + notice o Never published (§303) : Life + 70 years. Or in the case of JW or Anonymous, same as above. Minimum period: until 2002 and until 2047 if published before 2002. st o Published before 1950: 95 years from 1 publication st 28 year o Between 1950-1977: At end of 1 term + 67 year second term = 95 years. o Before 1923: Public domain. No new public domain works until 2018.
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1 28 yr term + second 28 yr term. o Author could apply; if dead, spouse, children, or if none, executor. o Transfer of renewal: if transferred by the author, he must be alive at the time of renewal, otherwise invalid (unless next in line also transferred contingent right) Process of renewal: Prior to 1992, applicant had to file with © Office during last year of 1 st term. §305 (in ’92) eliminated this and now provides for automatic renewal for all remaining 1st term ©. st DW: for DW made pursuant to license in 1 nd term, and 2 term is renewed by family, then DW cannot continue to be exploited. But note, if family fails to renew (because its now automatic) then the DW author can continue to exploit.
Termination of Transfers: •
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Since ’76 Act doesn’t require renewals, authors deprived at “second bite.” Thus, it created provisions to allow transfers under certain circumstances. Note—A WMFH assignment is forever; they can’t terminate Transfer made AFTER Jan. 1, 1978 §203 o Termination by author only available if grant made by author. These grants may be terminated during a 5 year window beginning 35 years after grant and closing 50 years after. o Can be terminated by author, spouse, children (majority vote) o To cancel, must serve notice at least 2 but not more than 10 years before date of cancellation o Transferee may continue to exploit derivative work after termination. o JW: exercised by majority of authors o Agreements to contrary: cannot waive or K away right to terminate; new grant is valid only iuf made after the effective date of the termination (or if same grantee after notice) Transfer made BEFORE Jan. 1, 1978 §304 o Doesn’t matter who made grant. Term window opens 56 years after PUBLICATION and stays st open until 61 year. ( Siegel 2d 454). o Same DW rules; same notification rules Same rule for “agreements to the contrary” see o case s on p. 56 nd o Second bite: If © is still in 2 Renewal term on October 27, 1998, but termination right expired without taking action, then can terminate 75 years after publication for 5 years window.
2) Who Owns © and for How Long?
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3) Is there an infringement of rights
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What economic rights are afforded? §106— Provides that the © owner has the exclusive right to do these: Reproduction: Gives © owner the right to make copies or phonorecords and prevent others from doing so. This right is violated whenever someone “fixes” the work in a copy or phonorecord see Cartoon (provided its for more than a transitory duration— Network 2nd 546). Loading a work onto a computer is reproduction because it entails fixation in the hard drive (MAI) o Exceptions: This right is significantly limited by other provisions: Music Industry: Limitation on sound recordings §114 —sound recording © owner is only protected against verbatim copying or the recapture of the actual sounds in the sound recording. There is no de minims exception here, though. Any unauthorized sample = liability. Limitation on musical compositions §115 (compulsory license): Once the work has been recorded in a phonorecord and distributed to the public, anyone is able to reproduce it without permission (via a compulsory license). o Only applies to non-dramatic musical works (ie., ABKCO 2nd 638) no audiovisual— o Can reproduce and distribute but not perform o Can’t change basic melody (but pretty liberal here) o Can still seek voluntary license through Harry Fox. Home audio taping §1008: Non-commercial use of audio equipment to make musical recordings. Exemption from infringement of both musical work and sound recording. Note, though, computers are not home audio recording devices. Computer Exceptions: Not infringement if (§117): Lawful owner of a copy makes a copy if essential step to use Lawful owner makes reproduction for archival purposes Owner or lessee makes authorizes others to make copies for repair. Limitation on pictorial, graphic and sculptural works (ie., useful articles) §113): © owners in these works may not prevent others from reproducing, displaying, distributing useful article displayed. Libraries exception:§108 allows libraries to reproduce and distribute copyrighted works for non-commercial purposes (see page. 69) Specialized formats for blind or disabled (§121). •
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Prepare DW (adaptation right): Derivative work is based on a pre-existing work and one that has substantial variation from the original work. There is some overlap with reproduction right (exception in situation like Lee v. th Art (7 659) where there was no reproduction and only adaptation question; see Mirage v. Albuquerque (9th 660) o Look at economic impact of some future market! Game Genie Case o Adaptation right and computers— th ( 9 664): no infringement because there must be a fixed work to be DW (no fixation there); but see, Formgen ( 9th 664) where D’s map files were permanent and concrete. o Exceptions: Sound recordings §114: adaptation of sound recording only occurs where there is a mechanically recapturing of the sounds in the phonorecord and then some altering thereof. Computer Programs §117: Permits owner of authorized copy to make adaptation if done as an essential step in utilizing the program or is done for archival purposes. Right to Disseminate (Distribute) copies to public. Encompasses right to distribute copies, by sale, lease, rental, lending or any other form of exchange. digital copy in o No longer limited to material copy— hardrive suffices because material copy in the end. —Use where you can’t prove o Making available right? anyone actually got a copy. (yes: Hotaling (4th); Napster (9th ); London Sire; Playboy) In line-linking NOT distribution —because its not on their hardrive. o Exception: §109 First Sale Doctrine: Owner of a lawfully made copy is entitled to rent, dispose, sell copy without permission. BUT, if its NOT a lawful copy (ie., bootleg) then no right! Cannot rent phonorecords (sounds, see Brilliance Audio 6th 732) or computer programs. §109(b) Doesn’t apply to copies/phonorecords exported abroad. §602 Doesn’t apply to “non-owners” of copy (ie., licensees) ( see Vernor v. Autodesk 9th 716 vs. UMG Recordings 9th 726) o Transaction called a license o Does © owner significantly limit user’s ability to transfer o Does © owner impose notable use
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Public Performance: Recite, play, render, dance, or act directly or indirectly (through device/machine). Excludes: pictorial, graphic, sculptural works, sound recordings (don’t get performance right, only musical works), architectural works. o Performance must be “public” §101 Open to public or substantial # of persons outside normal circle of family/friends Transmission to (above) Transmission to individual members of public (ie., broadcast) Video rental store w/ viewing o booths= public performance (but not with hotel rooms). ( Aveco (3rd ) vs. Professional Real Estate-hotel (9th 758)). Also Cartoon Network2d o Exception Digital Streaming: §106(6) Sound recordings are protected; provides limited rights against public performance of sound recordings by digital transmission (internet streaming). More protection for sound recordings where interactive. Live performances: Now protected from unauthorized broadcasts, fixation and trafficking No Profit—§110(4): where no fees are paid (boom box on beach). Also, if fees that are paid go to charity. Also, exception for certain sized businesses. Other exceptions on p. 86 Public Display: Showing a copy either directly or by a device. Must be public. o In line-linking : no violation because server test—cmptr owner who stores image is displaying it. Perfect 10, 9th 785 o Exceptions: Doctrine of first sale (109): Lawfully made copies may be displayed either directly or thru 3 device. Home style receiver exception (
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DMCA Anti-Circumvention §1201-§1205 o Encourages © owner to engage in self-help measures to protect rights o Protects against unauthorized access and ensures control of works on the internet o Two types of controls: Circumvention of access controls §1201(a): people cannot circumvent access controls. Access controls are those that involve the application of information to gain access. Circumvent is to descramble, decrypt, avoid, bypass, remove, deactiviate or impair a technological measure w/out authority. Trafficking in circumvention devices or use controls §1201(b)(1): Those to control access. See Reimerdes (Dis. th 1112) and MDY v. Blizzard ( 9 1089) §1201(b)(2): Those to control use of one of the 106 rights. Real Netwroks v. Streambox (District court 1098), trafficking in tech. circumventing “copy” protection. o Note—no prevention of people from circumventing use controls th o Applies whether or not infringement takes place. See Lexmark (6 1104) /MDY vs. Chamberlain ( Fed. Cir. 1087) o Exceptions: Software developer reverse engineering to achieve interoperability Police Researchers Testing Moral Rights §106A: provides that in the case of works of visual art, the author (who may or may not be the © owner) enjoys the moral rights of attribution and integrity. Author has right to: o Claim authorship in the work o To prevent use of her name as the author of any work that she didn’t create o To prevent the use of her name as the author of her work if it’s been distorted, mutilated, or otherwise modified so that the use would be prejudicial to her honor or reputation o To prevent any intentional distortion, mutilation, or other modification of her work which would be prejudicial to her honor or reputation and o To prevent any intentional or grossly negligent destruction of the work.
Is there an infringement in one of these rights? •
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Direct infringement: It must appear that the work the defendant “infringed” was the copyrighted work . In order to show this, the plaintiff must demonstrate: : Copying can be o It was the copied work demonstrated by the below two factors. Note, look at all the material (both protectable and unprotectable) Direct evidence of copying (Admission, someone saw him, etc) Access plus probative similarity: Sliding scale here, the more probative similarity, the less th access need to be shown. (Ty Inc 7 569-Need more than probative similarity there it was no public domain that could be derived from). 2nd Circuit, probative similarity is enough. o And, that it is substantially similar: This only regards protectable expression; plaintiff must show that Defendant took sufficient amount of © expression that ordinary observer would view the two works as substantially similar. (See Horgan v. nd McMillan (2 655); Price v. Fox Ent’mt Group ( Dist. 561); Bright Tunes Music (Dist. 558) Circuit Splits: nd o 2 Circuit: Striking similarity alone may give rise to inference of copying absent evidence of access (Gaste v. Kaiserman and Repp v. Webber 568) th 7 Circuit: Ty Inc. don’t need access if o striking similarity + nothing in the public domain.
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4) Any Defenses?
Information Location Tools: Same as #3. Proper notice? o Written Notice with: Contact info of complaining party Identify infringing material sufficiently to locate State good faith belief that use is unauthorized State under penalty of perjury that its authorized to act Signed o Knowing misrepresentation could lead to damages for alleged infringer. See Lenz v. Universal Music (ND 1016) o
Fair Use? §107: Once P has made a prima facie showing of infringement, D may raise fair use defense. The fair use defense is a recognition that an airtight © regime would greatly suffocate free expression As a general matter, the use will be deemed fair when it promotes the purposes of copyright law (encouraging production and dissemination of works of authorship) wile not undercutting the author’s economic incentive to create and disseminate works. §107 provides a list of examples of fair use but they are not exclusive (ie., criticism, comment, news reporting, teaching, scholarship, or research), but it also lists 4 non-exclusive factors that courts must evaluate (note: no factor determinative): o Purpose/Character of use: Non-profit vs. profit use? User stands to profit economically from use, less fair Harper & Rowe 847 & Princeton University Press 6th 881. Transformative or reproductive? Transformative uses do not merely reproduce P’s work, but embellish it somehow. Ex., Parody (Cambell v. Acuff-Rose 807) or different purpose th ( Perfect 10 v. Amazon 9 785) Incidental use? Picked up in a news report, etc. Moral conduct? Equitable doctrine, so do not want to reward bad conduct. See Harper & Rowe. o Nature of © Work? Thick vs. thin ©? Factual works get less protection more likely fair use. For ex., Harper , where court said that reproducing some terms (like “smoking gun”) might be necessary in news report. Published or unpublished? Harper & Rowe: unpublished work more likely unfair because want to give author’s first crack @ publishing. o Amount and substantiality of portion used? The more you take the less likely it will be fair. Also, taking a small amount but the “heart” of the expression makes it less fair. See Perfect 10 case entire image was used, though. Question is always about whether the D copied more than was necessary to accomplish legitimate purpose. o Effect of the use upon the potential market for the © work? Consider whether the D’s use supplants or suppresses (more likely fair) the P’s market. Consider future markets (does D’s use affect P’s potential market) See Acuff-Rose (remanded because court did not consider P’s potential market of use in non-parody rap) Discuss the “if everybody did it” argument. D may not singularly affect P’s market but it would in the aggregate.
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Parody: must be parody of P’s work (it cannot be a general satire, or social comment) using P’s work as a vehicle. See Campbell & Cat in the Hat & the Wind Done Gone cases. Thus, in order to be fair use, the D must have necessarily o taken enough of P’s work to conjure the P’s work in the audience’s head (and may therefore have to take the work’s most memorable features). There is some tension with #3 in this regard. Educational copying: See p. 98 for factors of multiple copies for classroom use. Reverse Engineering: Where D has to reproduce P’s expression to get at unprotected ideas and D has a legitimate interest to those elements such infringement is fair. Sega Enterprises v. th Accolade, Inc. 9 870. There, court found the D’s need to to identify the elements necessary to achieve compatibility with P’s hardware to be a legitimate interest.
Is there a DMCA defense? The DMCA provides “safe harbors” for ISPs if (§512): o It designates agents to receive notice of claimed infringement— Ellison case o Adopt and inform users of policy to terminate users who are repeat infringers o Accommodate standard technical protection measures 4 safe-harbors: o Transmission and transient storage: only “providers of online services or network access (includes torrents), or the operator of facilities therefor” are included here. Safe if: Initiated by someone else Through an automatic process o System for caching: p. 106 o Storing materials for users (ie., Youtube): broader definition for ISP; here “any provider of online services.” Safe it: Doesn’t know or was aware of any facts from which infringement activity is apparent Notice comes from “proper” notice by the © holder or by red flags. Viacom Int’l v. YouTube SD 1008: Mere generalized knowledge is not enough. See p. 108 outline. Upon knowing takes it down Doesn’t receive financial benefits attributable to infringing activity (ie., has control over activity)
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5) Is there 3
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3 ways to show indirect © infringement liability: •
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Contributory Infringement: Like aiding and abetting; D must have knowledge of direct infringer’s conduct & must either induce the infringement or materially assist the infringement. o Exception: Substantial non-infringing uses— Sony Corp. v. Universal SC (constructive knowledge, but substantial non-infringing uses); A&M Records v. Napster (9th) different from Sony because the Napster had actual knowledge and failed to purge the infringing material from the system. o Exception: Safe Harbors in the DMCA Vicarious Liability: imposed when D doesn’t himself engage in infringement, but has a right of supervision and a financial interest in behavior of direct infringer. o Napster was vicariously liable as well because it had the right and ability to control users by blocking their access (also had a reservation of rights policy). Second, Napster received a direct financial benefit from the infringement because it drew additional users =direct financial benefit. Intentional Inducement: MGM v. Grockster , distributing a device with the clear object of promoting its use to infringe ©, as shown by clear expression or other affirmative steps taken to foster infringement = liable. Different from Napster because by the o time Grockster got actual knowledge of infringement they were unable to stop it. o Different from Sony because the Court explained that there they were unwilling to impute intent if the technology had substantial noninfringing uses. If the D falls within this theory, no need for Sony. In Grockster intent imputed because o 1) they were attempting to capture the Napster audience; 2) did not attempt to develop filtering tools; 3)revenues depended on ability to infringe
6) What are the Remedies? Remedies: Registration? Although registration is optional, it is a pre-requisite to filing an infringement suit (§408). o If registration is made w/in 5 yrs of publication prima facie evidence of © validity. o If registration is made before infringement, P is entitled to recover statutory damages and atty fees. §412 Exception: 3 mos grace period after publication (even if infringement happens immediately) Injunctions: §502. New Ebay preliminary injunction standard: P must demonstrate o Likelihood of success on merits or sufficiently serious questions going to merits, balance hardships tipping decidedly in P’s favor o Likely to suffer irreparable harm in the absence of an injunction o Balance hardship to P against hardships to D o Ensure the public interest will not be disserved by issuance of preliminary injunction. Money: 2 alternatives: §504 o Actual Damages: includes any profits realized in excess of actual damages. Statutory damages: $750- 30,000 o for each act of infringement. If willful, can be enhanced (150K) or lowered ($200). Remember, must have registered prior to infringement. Determining just amount: courts often consider actual damages and compare to other cases, and need for deterrence. Atty’s Fees: §505 allows for atty fees to prevailing party. th Gonzales (7 ) if stakes are low, o presume prevailing party gets fees. •
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7) Is there a state law COA? Pre-emption: §301 provides that state common-law © types of claims for fixed works of authorship would be prempted. Dual test for preemption: Both prongs must be satisfied in nd order to find pre-emption. Fly on the Wall (2 1185). o 1) Does the state cause of action protect matter that is within the subject matter of ©? Ideas, discoveries, facts = subject matter? NBA v. nd nd Motorola (2 ) and Fly on the Wall (2 ) say yes. But, could argued that because 102(b) removes ideas, procedures, from the subject matter, they should not be treated as within the subject matter of (c). o 2) Does the state cause of action provide rights that are “equivalent” to the specific §106 rights (or does it involve an “extra element)? Extra elements—needs to be some additional element which is not required for © infringement. Ex., Fly on the Wall case said “hot news” exception was not pre-empted because it required extra element of “free riding.” Also look at ‘purpose” (whether the extra element suggests a different purpose or vindicates a different interest; look at “scope vs. nature; and the “overall essence of the claim” (does it feel like a © claim?). K; Hot news = different elements. Bargained for exchange and free riding respectively. Pro CD v. Zeidenberg (7th) (finding that K exists from shrinkwrap/clickwrap license, BUT, is the K really an additional element? Is it a bargained for exchange? All users bound = more like a broad © property right. •
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