copyright law attack f13

7/26/2019 Copyright law attack F13

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Copyright Attack Guide F 13

ALWAYS USE THE STATUTEStanding in court Copyright is statutory, no common law copyright (Wheaton v. Peters)

o Constitution Art. 1 8, cl. 8o Federal statutes

17 USC

DMCA AHRA VARA

o State statutes Express preemption under Copyright Act 301 and VARA - 301equivalent to a copyright

act claim and within 102

Some courts say that if an act violates 106, the other, related (contract) claim is

preempted

Other courts say the existence of a contract renders an action for breach qualitativelydifferent from one of copyright, so no federal preemption

Bowers (Fed. Cir.)under 1

st

cir law the copyright act doesnt preemptor narrow thescope of the contract claim; 301 doesnt require preemption where the state claimrequires an extra elements beyond copying or violation of the rights in 106

o International treaties Berne TRIPs WIPO NAFTA

501(b)legal or beneficial owners of copyright or licensed TV broadcasters

o Florlee (2nd)Licensees in a formal exclusive written agreement with a licensor who has standing

under 501

Must arise under an act relating to copyrightarise under if (1) the complaint is for a remedy granted in theact and (2) the complaint asserts a claim requiring construction of the act (Basset (2nd))

411Registration or preregistration is required before a civil suit may be filedo Registration408

Application409 37 CFR 202.3 Family Entertainment and Copyright Act of 2005 408(f)(2)

Abbreviated preregistration for a class of works deemed to have a history ofinfringement prior to authorized commercial distribution (motion pictures, soundrecordings, software)

Must file real registration within three months from publication or one month from

learning of an infringemento Formalities

Berne prohibits formalities from affecting substantive rights but there are still incentives tocomply

Publication

MLK (11th): general publication if

o Tangible copies distributed to the general public as allows them to exercisecontrol over the work

o Displaying in a manner as to permit unrestricted copying


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Public Affairs Ass (DC Cir)distribution to news media is only a

limited publication

Getaped.com (SDNY)web pages are published when they go live Notice

Because notice is not required any longer, the default status of a work is that it hascopyright protectionabandonment can only occur as a result of intentionalrelinquishment by owner

Must be affixed to cover for claims of innocent infringement 401-5

Registration Still required to commence an infringement action, but not necessary for copyright to

vesto Three months from publishing to register and remain eligible for statutory

damages and attorneys fees Deposit

o Duration Works published before 1/1/78 304

1909publication with notice = 28 + 28 (renewal must be filed during first term)

1976added 19 years (so either 47 years or 75 years depending on whether it wasrenewed)

1992automatic renewal, didnt re-protect works in the public domain

1998 CTEAadded 20 years to the renewal term (so with a renewal its 95 years) Works created but unpublished before 1/1/78 303

1976 act granted unpublished works copyright protection

Cant expire before 12/31/02 Works created on or after 1/1/78 302

Single authorlife +70

Joint authorslife of last surviving author +70

Anonymous or work for hire120 from creation of 95 from publication, whichevercomes first

Renewals Stewart v. Abend (SC)renewal term as a second chance for the author to control

their work; control reverts to the author or his successors when renewal comes upo Author must renew licensed after the renewal term for them to stand

o Miller Music (SC)when an author dies before renewal, his executor is entitled to the renewal rightseven if the author previously assigned his rights to another party

507civil must be brought within 3 years of cause, criminal within 5

Who is the owner? 201 201(a)ownership vests initially in the author of the work

o Sole authorship

Lindsey Titanic case (SDNY) had ahigh degree of control over the film operation suchthat the final product duplicated his conceptions and visions; standard of authorship is controlin the conception of the work (under Burrow-Giles)

The people filming were his instrumentalities, it was his worko Joint authorship

101definition: work prepared by multiple authors with the intention that theircontributions be merged into inseparable or interdependent parts of a unitary whole

Intent and knowledge of merging at the time the writing is done (fixation) Erickson (7

th)two tests to evaluate the contributions of authors claiming joint ownership


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Nimmers de minimus testrequires that the combined efforts be copyrightable (notused)

Copyrightable subject matter testeach authors contribution must be copyrightable

(to qualify as an author, one must supply more than mere direction or ideas) Almuhhammed (9

th)for a work to be a joint work there must be

A copyrightable work (copyrightable subject matter test from Erickson)

Two or more authors (masterminds behind the woko Author = originator, the person superintending the arrangement, more than

mere creative contributiono Factors to determine authorship

Whether the party exercises control (decision making authority) Objective manifestation of intent to be coauthors (billing, contracts) Whether the audiences appeal of the work turns on both contributions

such that the share of each in its success cant be appraised

Any objective manifestations of the intention that the works be merged

Joint owners are tenants in commonundivided share of copyright, each can exercise the

exclusive rights of the copyrighted work without permission, each can issue nonexclusivelicenses without permission, duty to account to others for profits

Requires permission of all coauthors for an exclusive license

Work for hire 201(b)o Agency relationship multifactor tests:

Employees (CCNV case):

Right to control the work

Skill required

Source of instrumentalities and tools

Location of work

Duration of relationship

Right to assign additional projects

Hired partys discretion

Method of payment Role in hiring and paying assistants

Regular course of employers business

Payment of employee benefits

Tax treatment

Independent contractors:

Specifically ordered or commissioned

Within an enumerated categoryo Collective worko Motion pictureo Translationso

Supplementary worko Compilationo Test and answers for a testo Atlas

Any written agreementso CCNV (SC)four interpretations of employee:

When the hiring party retains the right to control the product When the hiring party can control with respect to creation of the work Common law agency meaning


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Use thisenhance predictability

See factors aboveo Aymes (2

nd)dont have to give all the factors equal weight: five that matter

the most are (1) riht to control manner and means of creation, (2) skillrequired, (3) employee benefits, (4) tax treatment, (5) hiring partys right to

assign additional projects Formal, salaried employee

o Roeslin (DDC)within the scope of employment if (Restatement (2) of Agency 228 test):

Within the kind he is employed to perform Occurs substantially within the authorized space or time limits Actuated by a purpose to serve the master

Is it valid, copyrightable subject matter? 102 Fixed in a tangible medium of expression 101

o Cartoon Network (2nd)two requirements: (1) embodied in a medium such that it can be perceived

and (2) remain in that medium for more than a transitory durationo Copies/phonorecords 101

Material objects in which a work is fixed from which is can be perceived or communicatedo [P]erceived, reproduced, or communicated for a period of more than transitory duration

White Smith Pub (SC)must be intelligible to a human reader (piano player roll is notcopyrightable)

Williams Electronics(3rd)fixation is met when a work is sufficiently stable to permit it tobe perceived for a period of time, video game displays are fixed

MAI Sys (9th)copying occurred when s OS was transferred to a permanent storage

device, RAM is fixed sufficient to constitute copyingo Fixation can be made simultaneously with transmission by a recording 101

Broadcasts are fixed if a recording is made simultaneously with transmission (transmissionalone fixation)

o Chapman Kelley v. Chicago Park (7th)VARA claim; to be fixed a work must be a product of

human authorship not the forces of nature; plants are not fixed

Original works of authorship 102(a)o Nimmer: some minimal degree of creativity, low threshold of creativity

Chapman Kelleynovelty is too high of a bar for originality; must only be independentlycreated by the author

Burrow-Giles (SC)before adding photos to the copyright statute, photos are copyrightablebecause they are orchestrated and designed; originality only requires minimal creativity

Bleistein (SC)original = owes its origin to the author, no large novelty required Alfred Bell (2

nd)recreations in different mediums may have protectable elements depending

on originality; we dont protect works just because youworked really hard on themo Feist (SC)facts are not copyrightable because they arent original; compilations of facts are

For compilations to be protected, but exhibit some degree of originality/creativity in

selection, coordination, or arrangement Facts dont owe their origin to authorship; distinction between creation and discovery Standard = independent creation + modicum of creativity

o Merkos (2nd): translation process requires scholarly judgment; English translation of Hebrew prayer

is copyrightableo CCC Information Services (2

nd)prediction of future car prices required judgment and expertise

such that the resulting data is sufficiently original Two categories of ideas: publicly useful hard facts and those infused with opinion (here, its

the latter)


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o Parsing out original elements Meshwerks (10

th)- filter out nonprotectable elements to determine what copyrightable

expression remains; digital models here are nothing more than copies of s cars, so theyre

not copyrightable

Ets-Hokin v. Skyy (9th)- s photos didnt infringe on s vodka bottle because the

bottle cant be copyrighted Mannion (SDNY)nature and extent of copyright depends on what makes the photo original;

photographs may be original in three aspects

Renditionlighting, depiction, exposure, etc. (copyright in the image) Timing (copyright in the image)

Creation of the subject (copyright in the subject of the image)

o Rogers v. Koons (2nd)s attempt to replicate a photo in a sculpture

constitutes infringement; the photo was original in rendition and creation ofthe subject

o Gross v. Seligman (2nd)copyright in the photo was infringed by another

photographer using the same model in an identical pose With sound recording/phonorecords where only one is licensed, look to the differences

between the two

Idea/expression distinction 102(b)

o

Baker v. Selden (SC) - book explaining a system is copyrightable, system itself is not 37 CFR 202.1(c)blank forms (time cards, for recording info) are not copyrightable as they

dont convey information ADA v. Delta Dental(7th)taxonomies and how-to systems are not necessarily systems

underBaker; 102(b) precludes ADA from suing a dentist who uses the system but not fromsuing someone from copyright and distributing the system

Classification is a creative endeavor

Southco (3rd)part numbers are not original if they are dictated by the rules of a system

o Merger doctrineif only a one or a limited number of ways exist to express an idea, the idea andexpression merge into an uncopyrightable whole

Morrissey v. P&G (1

st)instructions for sweepstakes arent copyrightable

Some courts view merger as a defense to infringement (1stCir.) and some view it as makingcopyright thinner so that infringement only occurs with an exact replica (9thCir.,JohnsonControls, 2

ndCir. Hoehling)

More broad the idea, the less likely youll find mergero Scenes a faire doctrinebars protection for preordained elements such as character types or settings

which are indispensible or standard in the treatment of a topico Hoehling (2

nd)the scope of protection for historical accounts extends only to the expression of

facts/ideas and not to the fact/ideas themselves Myers v. Mail Express (SDNY)no copyright in order of presentation of facts Rosemont (2

nd)an author may make sifgnificant use of a prior work so long as he doesnt

bodily appropriate the expression of another; want to encourage public dissemination of

historical and biographical works (Nimmer) Compilations and derivative works 103

o Parsing out the copyrightable material

No copyright over unlawfully used matter Only copyright to material contributed by the author

o Derivative works L. Batlin v. Snyder (2

nd)author must contribute substantial (not trivial) originality beyond

the preexisting work

See originality analysis


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Gerlack-Barlowdistinguishable variation of something in the public domain maysupport a copyright

Nimmer: reproduction must contain original contributions beyond the underlying

work of art and must be more than a copy Ent. Research Group (9

th)courts should look to the impact that the derivative work will

have on the copyrights of the underlying work; difference here extend only to functionalconsiderations so a copyright in the secondary work would impinge on the rights of theoriginal works owner

Dorantest: if the form of the derivative work and the underlying work are different,the derivative work is original enough to be copyrightable (in this case, the originalwork was in the public domain so there was no market for the underlying work toconsider)

Durham Ind. (2nd)two prong test to determine whether a work is copyrightable as a

derivative work:o Original aspects of the derivative work must be more than trivialo Original aspects of the derivative work must reflects the degree to which is

relief on preexisting material and must not affect the scope of copyrightprotection in the original material

o Compilations

Feistp. 4 Use of the disjunctive or in the definition of compilation original expression cab be

found in the selection regardless of coordination or arrangement (or in the arrangementregardless of selection)

Feist(under originality p. 4) Roth Greeting Cards (9

th)total concept and feel may be copyrightable even if individual

elements are not original or were infringed

Dissent doesnt want the whole becoming more substantial than the sum of its parts Mason (5

th)the maps at issue, although representative of publicly available data, involvedsufficient discretion in interpretation and expression to be copyrightable; variations incompetitors maps are dispositive of the originality of arrangement, etc.

Architectural works see below p. 7Non-copyrightable subject matter and works which must be parsed

o Idea/expression or merger, see above p. 5o 37 CFR 202.1:

(a) names, titles, slogans, familiar symbols or designs, variations of typographicornamentation, letting, coloring, listing of ingredients or contents

(b) ideas, plans, methods, systems, devices (not their expression) (c) blank forms, time cards, graph paper, account books, bank checks, scorecards, etc. (d) common property information with no original authorship such as calendars, weight

charts, rulers, etc. (e) typeface as typeface

o

105no protection for government works Wheaton v. Peters (SC)court opinions are not copyrightable Veeck (5

th)when a state adopts a privately drafted code as law, the law is not copyrightable

o Useful article101 definition intrinsic utilitarian function Mazer v. Stein (SC)expression gets protection, not the useful part; separability If the item meets the definition of useful article, extra test of conceptual separability

Keiselstein-Cord (2nd)when a feature can be identified separately from and is

capable of existing independently of utilitarian aspects; ornamentation of the beltbuckle is copyrightable


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Carol Banhardt (2nd)the features claimed to be aesthetic in a torso mold for

showing shirts are intertwined with their utilitarian functiono Newman, dissentingrelevant beholder should be the ordinary reasonable

observer; the test should be whether the concept of the utilitarian function canbe displaces in the mind of the ordinary observer by the aesthetic concepts

Brandir (2nd)if form follows function, no protection

o Form follows function if design elements reflect a merger of aesthetic andfunctional considerations such that they are not conceptually separable

Esquire (DC Cir)the overall design or configuration of a utilitarian object is noteligible for copyright

Industrial design protection

Semiconductor Chip Protection Act of 1984 - 901

Vessel Hull Design Protection Act of 1998 - 1301 Computer programs

Apple Computer (SC)a computer program, object or source code, is a literary workand is protected form unauthorized copying

o Makes no difference whether the program tells the computer to do somethingor to interpret object code, no reason to protect instructions for an OS any lessthan for an application

o

The existence of other means of achieving the same result shows anidea/expression dichotomy such that there is no merger

Altai (2nd)To determine the protectable elements of a program

o Filter out the elements of a computer program which are necessarily incidentalto its function and thus are unprotectable

Whelanwhere there are multiple ways to achieve the desired result,this is evidence that the means chosen isnt necessary/entirely

functionalo Substantial similarity test for computer program structure

Abstractiondetermine to which sections protection should apply Filtrationlook to

Originality

Merger

Scenes a faire

Elements dictated by functionality, efficiency, compatibility,mechanical constraints, etc.

Comparison

Softel (2nd)nonliteral similarity of computer programs can constitute copyright

infringement ????

Lexmark (6th)a brief program is less likely to be copyrightable because it offers

fewer opportunities for original expression

Dunn & Bradstreet (3

rd

)in determining whether or not a programs elements aredictated by external factors like interoperability, a court must examine the programfrom the viewpoint of its creator not the infringer

Architectural works

Architectural Works Copyright Protection Act of 1990 (to comply with Berne): (1) anauthor of architectural plans can use them to register and protect against anotherbuilding the structure described and (2) protected buildings arent subject to

separability analysis

Nimmer: The term design of abuilding is intended both to describe the protectedwork of intellectual property (the design) and to distinguish that work from its


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material embodiment (the building) in order to remove any doubt that the legislationprotects artistic elements in constructed architectural works

Overall form as well as arrangement and composition of spaces and elements in thedesign but not individual standard features

o Nelson-Salabes (4th)the fact that component parts arent protectable doesnt

preclude the combination of them from being original and copyrightable

Look to whether there are original design elementso If so, whether those elements are functionally requiredo

If not, the work can still be protectable without regard to physical orconceptual separability ???

Characters

X One X (8th)characters can be copyrighted if they are sufficiently distinctive

o Copyright based on how the character is expression (consistent, wildlyidentifiable traits)

2ndCir test for charactersto get protection separate from the story, the character hasto constitute the story being told

MGM v. American Hondo (CD Cal)copyright in characters where consistent traitsacross all films

Databases

Required under TRIPs

See compilations section p. 6

Bellsouth (11th)

CCC Info (2nd)compilations of facts that also devise new and useful information are

protectable; the fact that arrangement of data responds logically to the needs of themarket doesnt negate originality so long as there is actual originality in thejudgments/expertise underlying the statement

What rights does the owner have? 106

o

Reproduction right (See similarity analysis below p. 12)o Distribution right

Thomas (D Minn)Making it available is not distribution, distribution requiresdissemination

109 First sale doctrineyou can resell the physical copy of a copyrighted work that you

lawfully own (Bobbs-Merril (SC))

Library limitation 602(a)(1)importation into the US without the authority of the copyright owner of a work

is an infringement

Quality King Dist. (SC): 602(a)(1)s reference to 106(3)s exclusivedistribution

right incorporates the later subsections limitations, including the first sale doctrine

Kirtsaeng (SC)first sale doctrine applies to copies of copyrighted works lawfullymade abroad and imported into the US

o Derivative works (see p. 5) Ty Inc (7

th)guides are not derivative works because they dont recast, transform, or adapt

the original work; a work is not simply derivative because its based on another work Mirage Editions (9

th)the first sale doctrine doesnt give the purchaser the right to create

derivative works; reframing cutouts from a coffee table book constitutes a recasting, makinganother version of the work (so, a derivative work)


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Lee (7th)framing or mounting a work for resale doesnt constitute a derivative work

(decline to follow the 9thcir.) Lewis Galoob (9

th)derivative works must incorporate a protected work in some concrete

form

Recast, transformed, or adapted

Must be fixed to be protected but not necessarily to infringe? Microstar (9

th)derivative work must incorporate the original work in some concrete or

permanent form???o

Public performance and display Redd Horne (3

rd)to perform a work is to show it in any sequence or make it audible

Publicly:

o Open to the publico Semi-publicdepends on the size and composition of the audience

Public performance does not constitute legal appropriate of a physical good under thefirst sale doctrine and so is a violation of copyright

Cartoon Network (2

nd)to determine whether a showing constitutes a public performance,

look to the potential audience of a given transmission Perfect 10 (9

th)two tests for what constitutes a public display on the internet

Server testdisplaying is the act of serving content over the web to the usersbrowser (this test is preferable)

Incorporation testdisplaying content into a web page that is then pulled up on abrowser (this test implicates search engines)

114sound recordings have a more limited right than musical works

For sound recordings, public performance is only violated if it occurs via digital

transmission where sales are affected

Three tiered system for categorizing digital transmissions from least to most likely toaffect sales

o Interactive transmissionat the full control of the copyright holder, requireslicense

o Noninteractive transmissioncan get a statutory license

Dont cause a receiver to change channels Dont pre-announce the broadcast of a song Include information about the recording if feasible Dont violate the sound recording performancecomplement

No more than 3 selections from one record with no more than 2consecutively nor more than 4 recordings by the same artist

o Fair use essentiallyExempt from any fee

Arista (2nd)if interactive, must license; if not interactive, statutory license

o Reflecting user input/preferences user control/interactivity

ASCAP (2nd)downloading doesnt constitute a public performance

o

Cellco Partnership (SDNY)downloading a or playing a ringtone isnt apublic performance and if it is its subject to 110(4)s limitation for nonprofitperformances

Bridgeport Music (6th)only the copyright holder can sample his own work

Transfers 204s

o Implied licenses and the scope of licenses, see below defenses to infringement p. 15/16o Sun Microsystems (9

th): a copyright owner who grants a nonexclusive license to use his material

waives his right to sue the licenses for copyright infringement and may sue only for breach ofcontract; however, if a license is limited in scope and the licensee acts outside the scope of thelicense, the licensor can bring an action for copyright infringement


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Gilliam (2

nd)unauthorized editing of the underlying work would constitute infringement of

the work similar to any other use of a work that exceeded the license grant by the proprietorof the copyright

Jacobsen (Fed. Cir.)The choice to exact consideration in the form of compliance withopen source requirements of disclosure and explanation of changes rather than a fee isentitled to as much legal recognition (there can be economic and reputational benefits)

Verner (9th)

o See renewals p. 2

Limitations (also defenses to infringement)o 106first sale doctrineo 107fair usecourts can decide whether an infringing activity should be within the right holders

rights Folsom (CCD Mass)a reviewer may cite largely from the original work if his purpose is

fair and reasonable criticism; if the purpose is to superseded the original work, then its

infringement

Look to (1) the nature and object of the selections made, (2) the value and quantity ofmaterials used, and (3) the degree in which the use will affect the sale or profits orsupersede the object of the original work

Harper & Row (SC)authors consent to a reasonable use of copyrighted works is implied

as a necessary incident of constitutional policy promotingprogress; the fact that a work isntpublished negates fair use

Fair use testo Purpose of the use (also look to intent, good faith)

More transformative the use, the less significant the other factors

(Acuff-Rose Music (SC)) Courts can consider any public benefit under this prong (Sega (9th))

The distinction between productive and unproductive uses ishelpful but not determinative (Sony v. Universal City (SC))

o Nature of the copyrighted work Scope of fair use is narrower with unpublished works

If the wants amonopoly over the functional code underlying thework (the stuff needed to make a program compatible with the system)they should get a patent (Sega (9

th))

Where the argues fair use of functional code segments, he must also

show the use of those code segments was necessary (Connectix (9th))o Amount and substantiality of the portion used

A taking may not be excused merely because its insubstantial with

respect to the infringing useo Effect on the marketmost important factor

If the market is usurped, all other factors are irrelevant (Sega (9

th))

If the fair use only makes the a legitimate competitor, working

against a market monopoly, probably fair use (Sega (9th)) Economic loss from legitimate competition doesnt court as negatively

affecting the market (Connectix (9th)) Increased sales of copyrighted material attributable to the unauthorized

use shouldnt deprive copyright holders of the right to license thematerial (Napster (9th))

Acuff-Rose Music (SC)- Threshold questions when fair use is raised in defense of a parody:is parodic characters reasonably perceived?


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The fact that copied material is the heart of the work doesnt preclude fair use inparody

Ty, Inc. (7

th): copying that is complimentary to the original wok is fair use, but substitutional

copying is not Chicago Board of Ed. v. Substance Inc (7

th): published tests specifically to destroy thepotential for reuse; this is decisive even if it isnt a market value

Sega (9th)where disassembly is the only way to access the ideas and functional elements

embodied in a copyrighted program, and where there is a legit reason to do that, its fair use

Arriba (SC)thumbnail images was fair use based on transformative nature of the searchengine (source information vs. artistic expression) and no harm to the market for the originalgood

Vanderhye (4th)turnitin uses papers to prevent plagiarism which is transformative

from the original use; fair use Court more likely to find fair use if its either (1) productive and adds something new that

benefits the public, or (2) reasonable and customaryo 108librarieso 110certain performances or displays (essentially education and non-profit)

Fairness in Music Licensing Act of 1998can play a radio or TV if

Its in a private home

No change is made to the transmission Its not further transmitted to the public

Small business exemptionless than 2k sq ft or 3750 sq ft for food

o 111secondary transmission by cable WPIX (2

nd)TV broadcast retransmission isnt eligible to rely on 111 compulsory license

for cable providerso 112o 114

(a)reproduction and derivative work rights of sound recordings do not encompass sound-a-likes

(d)o

115compulsory license for phonorecords Must have been publicly distributed already Statutory rate9.1 cents or 1.75 cents per minute, whichever is greater In the Matter of Mechanical & Digital Phonorecord Delivery Rate Adjustment (Copyright

Office 2006): ringtones qualify for statutory licenses and are not derivative works (andtherefore ineligible for the statutory rate) unless they amend the original work

Reproducing a work in an audiovisual context requires a synch license, not a compulsorymechanical license

Karaoke split

Leadsinger (9th): karaoke devices that display lyrics are not phonorecords, but are

audiovisual works excluded from 115s compulsorylicensing scheme

Priddis (D Utah): displaying lyrics doesnt amount to anaudiovisual work anddoesnt require a synch license

Compulsory license doesnt apply to web streaming

o 117limits for computer programso 118noncommercial broadcastingo 512safe harbors for online service providers

Viacom (2

nd)

512(c)(1)(A)safe harbor protection is only available is the service provier doesnthave actual knowledge of specific infringing material, isntaware of facts or


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circumstances from which infringement is apparent, or upon obtaining suchknowledge acts expeditiously to remove or disable access

512(c)(1)(B)service provider must have the right and ability to control theinfringing activity (requires something more than the ability to remove or blockaccess to materials)

512(m)willful blindness doctrine

Violation of rights (always cite to the statute that is alleged to be violated)

Infringement 501 (the infringement analysis is tied to the rights analysis under 106 and above)o SOS v. Payday (9

th)to prevail on a copyright infringement claim, must prove ownership of a

valid copyright and copying of a protectable expression beyond the scope of any licenseo Prima facie case of infringement:

(1) Ownership of a valid copyrights (ownership + valid copyright)

Registration before publication or within 5 years of publication (2) Violation of an exclusive right under 106

Must show that the obtained and used protected elements of the s expression, notjust coincidentally similar

Reproduce, derivative works, distribute, perform publicly, display publicly, digital

audio transmissiono Copying in fact (violation of the right to reproduce 106(1))

Two kinds of circumstantial evidence relevant to independent creation vs. copying in fact

Evidence suggesting access

The degree of similarity between the two works Three Boys Music (9

th)to show infringement (copying in fact), show

Direct evidence of copying, or

Proof of infringement by showingo Accessmore than a bare possibility, a reasonable opportunity

Presumption of access is work is widely disseminated Circumstantial evidence of reasonable access:

Chain of events between the works Presumption of access if work is widely disseminated

o Dillingham (SDNY)subconscious copying is stillcopying

o Substantial similarity between the works

(Once copying is shown, burden shifts to to show proof of independent creation) Selle v. Gibb (7

th)an important factor in analyzing the degree of similarity is the

uniqueness of the sections asserted to be similar; similarities should be sufficiently unique orcomplex as to make it unlikely they are both independent creations (three notes are notsufficiently unique or complex)

If two works are so strikingly similar as to make it highly probable that the latter is a

copy, the issue of access need not be addressed Ty (7

th)the inference of access following a finding of striking similarity can be rebutted by

proof disproving access or showing independent creationo Substantial similarity sufficient to show copying

2ndCir.

Nichols (2nd)cant just look to overall similarity; have to break down which

elements are similar and whether or not theyre copyrightableo Abstraction and filtration to remove uncopyrightable material before

investigating similarity


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Arnstein (2nd)in looking at similarities, look to

o The type of people to whom the work seems similaro The nature of the similaritiescopyrightable elementso The degree of similarity

Steinberg (SDNY)Substantial similarity = whether a lay observer would recognizethe alleged copy as having been appropriated from the copyrighted work (ordinaryobserver standard, may be found where a small portion of the work is substantiallysimilar)

Boisson (2nd)substantial similarity if the ordinary observer would be disposed toregard the items aesthetic appeal as the same

o Ideally should be an analysis of the total concept and feel of the works and anabstraction and filtration of the copied elements

o Cites toMannion (SDNY)Where the work incorporates both protectable andunprotectable elements, would a more discerning observer see them assubstantially similar or different

Runs the risk of filtering out elementary elements such as colors andshapes which may contribute to simlarity

9thCir.

Sid & Marty Krofft (9th)in an infringement action you have to determine whether

there has been a copying of the expression of the idea, not the idea itselfo Abstraction test inNicholso Extrinsic test to determine substantial similarity in ideas:

Type of art involved Materials used Subject matter Setting of the subject Expert testimony

o Intrinsic test to determine substantial similarity in expressionaverage lawobserver of the intended audience

Children are not to be discountedo

Use both extrinsic and intrinsic analysis!!o (Court found no reasonable observer would dissect the elements of the

commercial so much as would be necessary to find the two works arent

similar)

Cavalier v. Random House (9th)two tests for substantial similarity

o Extrinsic testobjective comparison of expressive elements (focus onarticulable similarities and filter out the unprotectable elements)

o Intrinsic testsubjective comparison of the total concept and feel from theperspective of a reasonable audience (also parse out unprotectable elements)

Swirsky (9th)

In derivative works casessee above p. 5/8

Castle Rock (2nd)substantial similarity of derivative works requires that copying byquantitatively and qualitatively sufficient to support action

o Qualitativecopying of expressive elementso Quantitativeamount of copying more than de minimuso (Total concept and feel isnt helpful in analyzing similarities between totally

different works)o Quantitatively enough (more than de minimus)

Newton v. Diamond (9th)assuming the sampled section was original, we have to see

whether it was actionable


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Fisher (9th)a use is de minimus only if the average audience wouldnt recognize the

appropriation

Look to the qualitative and quantitative significance of the copied portions

In the 6thCir., sampling requires a license under 114 (Bridgeport) Nimmer: if the similarity is only as to nonessential matters, then courts should find no

similarity

Fragmented literal similaritywhere a copies some portions exactly from a s

work without appropriating the works overall essence or structureo

Technology cases Altai (2

nd)three step idea/expression abstraction test (above under computer programs)

Once a court has sifted out all elements that are dictated by efficiency or external

factors are in the public domain or are just ideas, whats left is the protectable

expression

Then look to whether the copied any of those elements

Then look to the copied portions relative significance to the s program(experttestimony optional??)

Vicarious and contributory infringement and liability

o Vicarious liability Gershwin Pub (2

nd)even in the absence of an employee relationship, one may be

vicariously liable where (1) one has the right and ability to supervise the infringing activity(control) and (2) one has direct financial interest in the activity (financial benefit)

Perfect 10 (9th)control element requires the legal right to stop or limit the directly

infringing conduct as well as the practical ability to do soo Contributory infringement

Gerswin Pub (2nd)contributory infringement: one who (1) with knowledge of infringing

activity (2) induces, causes, or materially contributed to the infringement Perfect 10 (9

th)Napsterrefined test in the context of cyberspace: if a computer systems

operator learns of specific infringing material available on his system and fails to purge it, theoperator knows of and contributes to the infringement

Service providers knowing failure to prevent infringement can be the basis ofliability (intent may be imputed)

o Device manufacturers liability for inducing infringement Sony v. Universal City (SC)applied patent rationale to copyright contributory infringement;

someone who sells something suitable for a substantial non-infringing use is not liable forcontributory infringement

A&M (9th)absent specific information which identifies infringing activity, a computer

systems operator cant be held liable for contributory infringement merely because the

system allows for an exchange of copyrighted material

In re Aimster?? Grokster (SC)when an article is good for nothing but infringement, there is a presumed

intent to infringe

Sonybarred secondary liability based on imputing intent solely from design ordistribution of a product that is capable of substantial lawful use, even where there isa knowledge of the potential for unlawful usesafe harbor rule

Advertising an infringing use of instructing how to do so shows an affirmative intentthat the product be used to infringe even where substantial lawful uses existinducement rule

o One who distributed a device with the object of promoting its use to infringeis liable for the resulting infringement by third parties

Criminal infringement


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o 1976mens rea is willfully and for the purpose of commercial advantage or private financial gaino 1982two classes of felonies

Above 1k copies of phonorecords or 64 copies of motion pictures or audiovisual worksupto 5 years in prison and $250k

Above 100 sound recordings or 7 motion pictures or audiovisual worksup to 2 years and

$250ko Copyright Felony Act of 1992expanded felonies to all copyrightable workso TRIPs Art. 61criminal penalties to cases of at least willful piracy on a commercial scale

o

Moran (D Neb.)willfully = voluntary, intentional violation Nimmer: willful means the infringement was done with the knowledge that it was an

infringement

Rule doesnt require that the s belief that his conduct is lawful be reasonable, justthat it be truthful

o NET Act of 1997criminalized willful computer theft of copyrights works whether or not the derived a financial benefit

Financial gainreceipt or expectation of receipt of anything of value including the recept of

other copyrighted works (need not have a commercial motive)o Artists Rights and Theft Prevention Act of 2005

Felony to knowingly use an audiovisual device to make a copy of a copyrighted movie from

a performance of the work (like in a movie theater) Willful infringement amounts to a felony where distribution of the copyrighted material

occurs over a publicly accessible computer network when the film is intended forcommercial distribution where the person knew or should have known it was intended forcommercial distribution

o DMCAcriminal violation when a person sells a product primarily designs for the purpose ofcircumventing technological protection measures

o Determining the retail value of a work is relevant for meeting the threshold req for certain ciminalinfringements as well as to establish a felony:

4thcir says retail value = (1) price assigned to commodities for sale at the retail level at thetime of sales at issue, or (2) price of commodities determined by actual transactions between

willing buyers and sellers at the retail level Circumvention of technological protection under the DMCA 1201

o Reimerdes (SDNY affd 2nd)a measure effectively control access if it requires the application of

information or a process with the authority of the copyright owner to gain access

To find violation of 1201(a), must find

Protection sufficiently controls access to a work

s technology was created for the purpose of circumventing that control When considering the good faith research exception, look to

Whether the results are disseminated in a manner design to advance the state ofknowledge or just to infringe

Whether the person is engaged in a legit study

Whether the results are going to be communicated in a timely fashion to the copyrightowner

1202(f)Interoperability exception to the DMCA that allows you to develop and distribute

a program that doesnt infringe others copyright solely for the purpose of interoperabilitywith other programs

o Skylink Tech (Fed Cir)to show violation of 1201(a)(2) must show Ownership of valid copyrights Effectively controlled by a tech measure Which has been circumvented


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That third parties can now access Without authorization In a manner that infringes or facilitates infringement of a right protected by the Copyright

Act Because of a product that is either designed/made primarily for circumvention, made

available despite only limited legitimate uses, or marketed for use in circumventiono Lexmark (6

th)where a code can be accessed by purchasing a product, it is not an effective means

of controlling access to a program

o

1203 and 1204 establish civil and criminal penalties, respectively, for violation of 1201 Moral rights (see below p. 17)

Defenses Falls within a limitation on exclusive rights (see above, p. 10)

Licenseo Implied licenses

Gagnon (9

th)exclusive licenses must be in writing, but non-exclusive licenses need not be

and may be granted orally or my implication

Implied license is granted wheno

Licensee requests creation of the worko

Licensor make that particular work and delivers it to the licenseeo Licensor intend that the licensee copy and distribute the workat the time of

creation and delivery as manifested by conduct, look to: Whether parties were engaged in a short-term discrete transaction or

an ongoing relationship Whether the creator utilized unwritten contracts providing that works

only be used with creators future involvement or express permission Whether creators conduct indicated that use without his involvement

or consent was okayo Bartschlicensees may purpose any uses which may be reasonably said to fall within the medium

described in the license; new use must be foreseeable at the time of contractingo

Random House (SDNY, affd 2nd)a written contract is to be interpreted so as to give effect to theintention of the parties as expressed in the contract language as a whole; where the agreement saidprint, publish and sell in book form, it didnt include the right to publish as an e-book

Misuseo Fox Film v.Doyal (SC)author has the right to arbitrarily refuse to license his worko Video Pipeline (3

rd)court may withhold aid where the is asserting their right contrary to the

public interest and copyrights policy goals of encouraging disseminationof creations (doesntinvalidate copyright, just decline to protect right then)

Remedies

Injunctions 502o Four factors to consider (eBay)

Irreparable injury to Other remedies are inadequate to compensate for the injury (other remedies are preferred)

Showing the is likely to continue to infringe or induce infringement may suffice to

show this (Grokster (ND Cal)) Balance of the equities is in favor of the Public interest wouldnt be disserved

Impounding 503


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Damages and profits 504o Damages may be damages as a result of the infringement

TVT (SDNY)punitive damages arent banned in copyright cases where the is seeking

damages and has shown willful infringement before a juryo Profits are those attributable to the infringement beyond actual damages

Bouchat (4

th)to establish profit, must prove gross revenue and then must prove

deductible expenses and elements of profit attributable to other sources

Courts can deduct expenses where there is no conceivable connection between the

infringement and those revenues or despite a conceivable connection the offeredonly speculative evidence as to the causal link between the revenues and theinfringement

Mackie (9th)when asking for profits, must show causal link between the profits and the

infringement Hamil Ameica (2

nd)overhead expenses are deductible once a sufficient nexus has been

shown between the overhead and the sale of the infringing conduct; where there is willfulinfringement, courts should give s evidence here extra scrutiny

o Statutory damages 504(c) (instead of actual damages) Zomba (6

th)guideposts for deciding damages (in the 8thcir these factors determine punitive

damages, and not statutory damages (Thomas-Rasset))

Degree of reprehensibility of s conduct Disparity between harm or potential harm and punitive damages

Difference between this remedy and the civil remedies awarded in comparable cases

Shouldnt be so severe and oppressive as to be disproportionate to the offense and

obviously unreasonable (St. Louis IM&S Ry (SC))o Frank Music (9

th)Prejudgment interest may be awarded there it is required to adequately

compensate the s injury and prevent the from unjust enrichment

Costs and attorneys fees 505

Criminal sanctions 506 & 18 USC 2318, 2319, 2323

Policy Theories of IP rights

o Labor theoryyou have a right to your body, the labor of your body is yours Provisoleave enough of nature for everyone else In the US, labor isnt enough unless theres originality

o Personhood theoryto become self-actualized, you have to be able to control/own yourenvironment

Moral rights theory

Justificationso Utilitariannecessary to solve the public goods problem

Incentivize dissemination of creations

Nonexcludable goods subject to nonrivalrous consumption Public goods problemcreation costs high, dissemination costs low

Encourage investment in intangible assets Avoid monopolistic holdings

Balance between incentivizing creation and encouraging competitiono First Amendment theoryincentivize the kind of speech we valueo Moral rights of the author

Art. 6bis of the Berne Conventionauthor can object to distortion, mutilation ofmodification or derogatory action in relation to the work which would be prejudicial to hishonor or reputation


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Right of attributionto claim ownership, prevent use of his name in connection to awork he didnt create, prevent use of his name in the case of distortion, modification,etc.

Right to the works integrity

Right of divulgation or disclosureallows author to control the terms under whichhis work is disclosed to the public

Right to withdraw the work from circulation Droit de suiteright to proceeds from resale

CA Resale Royalties Act of 19765% gross resale price Gilliam (2

nd)unauthorized editing the program from its original version exceeded any

rights to broadcast given in the license an constitutes an infringement VARA of 1990 106A

Limited set of moral rights protections for visual art onlyo Attributiono Prevent distortion, mutilation or modification that would be prejudicial to the

authors reputationo For works of recognized stature, to prevent destruction

Pertains only to works in singly copies or in less than 200 copies signed andconsecutively numbered

Lilley v. Stout (DDC)a court should begin the VARA anlaysis by determiningwhether or not the work qualifies

o must show the work fits within qualifying visual artso Then must show

Intent only to exhibit at the time the work is produced/fixed Uniqueness Signing

Martin (7th)Two part test to determine whether a work is of recognized stature from

Carter (SDNY)based largely on the testimony of experts: (1) stature + (2) recognition

Mass. MOCA Found. (1

st)VARA protection applies to unfinished works which

would get protection when finished; VARA doesnt provide damages for pastattribution violations that no longer exist

Dastar (SC)???

Public domain is the rule, copyright is the exception

o Except following removal of the notice registration, copyright is the rule?

copyright law attack f13

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