Copyright Outline

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.

Works get protection in multiple ways. Protection pie with different

slices.
o Law
o Contract
o State of the copying art
o Copy protection technology
If rights holders dont feel enough protection with law, will turn to other
means to protect.
Gaps occur as things change. The question is whether we should fill
the gaps or deliberately leave to encourage public access.

C. Problems of Copyright Today

Access
o Deadweight loss the difference between the marginal costs of
copying and the efficient price that allows you to continue your
business. With this difference, also lose readers who would pay
marginal price, but not the efficient price.
Disserves purposes of copyright because purpose is spread
knowledge
o Deal with access issues with exceptions like ability to resell.
Technological and Institutional Change
Scope what does copyright protect in a copyrighted work?
o Fact/Idea vs. Fiction/Expression. Gray areas in between.
Follow-on Creation
Global Context U.S. attempts to fit its unique copyright tradition into
the new international copyright regime.
o Berne Convention
o TRIPS Agreement
o WIPO Treaties
II. Copyrightable Subject Matter
102(a) Copyright protection subsists in original works of authorship
fixed in any tangible medium of expression from which they can be
perceived, reproduced, or otherwise communicated, either directly or
with the aid of a machine or a device.
102(b) In no case does copyright protection extend to any idea,
procedure, process, system, method of operation, concept, principle, or
discovery
o We argue about whether something is a system or not.
Ambiguous.
1976 Copyright Act protects:
o 1) Literary Works
o 2) Musical Works, including accompanying words
o 3) Dramatic Works, including accompanying music

o
o
o
o

4)
5)
6)
7)

Pantomimes and Choreographic Works

Pictorial, Graphic, and Sculptural Works (PGS Works)
Motion Pictures and other Audiovisual Works
Sound Recordings

A. Fixation
101
o
o
o

- Fixed in a tangible medium of expression when:

1) Embodied in a copy or phonorecord
2) By or under authority of an author
3) Sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more
than transitory duration.
Williams v. Artic - Doesnt need to be all of these. Can be
just perceived or communicated without being
reproducible.
A work consisting of sounds, images, or both being transmitted is fixed
if a fixation of the work is being simultaneously with its transmission.
Can be fixed in any medium of expression, now known or later
developed.
Constitutional writing demands Fixation. Constitutional requirement.
Pre-1976 needed to be published to get copyright. Thus, necessarily
fixed.
Williams v. Artic (p.42)
o Artic copies Williams Defender arcade game. They argue the
images produced by the game are not eligible for copyright
protection because not fixed.
Argue not fixed because they move and change.
o Court holds this is fixed because
Theres a material object
Enough repetition to say that there is stability of
perception.
o Discussion
Audiovisual display in WoW sufficiently stable to be
copyrighted because can be perceived and/or
communicated. Dont need
MAI v. Peak (p.51)
o Every time you load a computer program into RAM you are
creating a fixed copy because it can perceived and reproduced
through using the program.
Cartoon Network v. CSC Holdings (Supp. 351)
o 1.2 seconds is too transitory to count as fixed.

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.

Burrow-Giles v. Sarony (p.59)(1884)

o Posed photograph of Oscar Wilde. Sarony sues when lithographic
company copies it and sells it.
o Litho company said photography not a writing, so cant get
protection. Just capture reality.
o Author is he to whom anything owes it origin. Its originator.
o Writing is not a literal thing. Copyright extends to charts and
maps.
o Originality - photographs can be representations of original
intellectual conceptions of the author.
This photograph was posed/staged. It represents the result
of something originated in the mind of Sarony. Consciously
added by the author.
Bleistein v. Donaldson (p.62)(1903)
o Work is a series of circus posters produced by chromolithography.
o Defendant admits to copying, but says cant give protection to
this.
o Originality means a personal reaction to an individual upon
nature.
Different than intellectual conception because that seems
to require more thought ahead of time.
o Bleistein Nondiscrimation Principle its important for judges to
be agnostic as to what is and is not art.
Otherwise we create risk that avant garde art would not be
appreciated and not be protected.

Or perhaps work appealing to the less educated would not

be respected enough.
Marketplace of ideas works should be able to find an
audience without judges judging on it.
Alfred Bell v. Catalda (p.67)(1951)
o Copy of a fine art piece. Trace photograph of original with hand
tool onto copper plate. Goal of reproduce as accurate as
possible.
o All originality requires is more than merely trivial variation to get
own copyright.
o Bad eyesight, defective musculature, shock caused by a clap of
thunder may yield sufficiently distinguishable variation.

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

Mannion v. Coors (Supp. 353) Go through a checklist of types of

originality
o Photo of KG. A similar photo for a Coors Ad with a different
person.
o Photographs can be original in three ways:
1) Original in creating the subject
2) Original in timing
3) Original in rendition (angle of shot, light and shade,
exposure, etc.)
o Discussion
When Ansel Adams takes a photo, its original in rendition
and timing. He gets thin copyright. People cant copy his
particular photo. But if they go independently take their
own very similar photo, thats fine.
If originality in timing enough, then all photos are
copyrightable.
Meshwerks v. Toyota (Supp. 357)
o 3D Model of Toyota Car by Meshworks. Meshworks claims
copyright in the model.

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?

Baker v. Selden (p.73)(1879)

o Selden creates a new accounting text with an explanatory essay
explaining double-entry accounting and some forms with which
to practice it.
o Baker sets up as a competitor to Selden. They compete to sell
forms to different county govs.
o Selden sues for copyright infringement of the forms, alleging too
similar. Loses.
o Possible holdings:
1) Forms not copyrightable at all. They are a system.

2) Forms would be copyrightable, but the system cant be

used without the forms, so the forms and the idea of the
system merge.
ADA v. Delta (p.86): Not a system unless constrained by natural or
mathematical law.
o Is a taxonomy copyrightable? Yes.
o Just because useful does not mean not copyrightable.
o There are huge variations in how you classify objects, facts. So
no merger.
o Easterbrook interp of Baker in this:
Baker says systems arent copyrightable. Taxonomy isnt a
system.
Forms are potentially copyrightable, but because Selden
expression merged with the idea, then no copyright. Here
there is variation possible, so not a situation where merger
comes into play.
o Easterbrook says not a system because wholly creation of human
imagination unlike something like math and bookkeeping. Unless
constrained by natural or mathematical law, not a system.
Hoehling v. Universal (p.80)
o Guy creates theory about how Hindenburg destroyed.
o Another guy comes along and uses theory and makes a movie.
o Facts and historical theories cannot by copyrighted. They are
discoveries previously existed in the world and cannot be
owned by the first person to discover them.
o Scene a faire in things like German beer hall. Stock scenes that
are part of the whole concept of the setting.

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.

Courts are very concerned about a derivative work

copyright not limiting the scope of the original copyright.
Changes/Additions that are only functional/mechanical dont count
Photograph of a 2D artwork not subject to its own derivative work
copyright.

L. Batlin & Son v. Snyder (p.91)

o Public domain metal Uncle Sam bank. Snyder created a plastic
version. Batlin creates a metal replica of the original. Snyder
sues.
o Court holds that while there are differences, Snyder didnt add
enough to give him a copyright.
o Functional changes are dictated by functional principles, natural
law, which copyright should not be concerned with. The changes
added by Snyder were simply dictated by the needs of the
medium.
o Distinguishes from copy of Rodin Hand of God primarily on the
skill required. Intense skill can make up for originality to better
incentivize production.
ERG v. Genesis (p.94)
o 3D inflatable costumes of copyrighted characters.
o Changes are merely functional and dont count.
o Concern about copyright in the costume limiting the original
copyrights in the characters.
Pickett v. Prince (p.98)
o Guitar in shape of Prince symbol. No derivative work copyright in
the original aspects.
o All there was was something pervaded by the original copyright.
Couldnt

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.

Although facts are not copyrightable, compilations of facts can be.

Copyright if choices in selection or arrangement entail a minimal
degree of originality.
Compilations are a kind of derivative work.
Feist
o
o
o

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.

F. Pictorial, Graphic, or Sculptural Works

Includes both 2D and 3D works
o Does not include fashion
Useful articles only PGS to the extent design incorporates PGS features
that can be separately and are capable of existing independently of
utilitarian aspects.
o Useful article define as an article having an intrinsic utilitarian
function that is not merely to portray the appearance of the
article or convey information.
o Can either be physically or conceptually separable.
o Want to include some industrial design, but not all.
Different tests for conceptual separability. Use all of them for the best
of your client:
o Institutional response
o Ordinary observer response
o Mind of the beholder/can aesthetic temporarily displace function
in mind?
o Intentionalism
Physical Separability

Mazer v. Stein (p.212)

o Sculpture of Balinese dancers manufactures with intent to use as
lamp base.
o Just because mass produced, utilitarian, commercial doesnt
mean not copyrightable post-Bleistein.
o Physically separable. Take out the lamp and you just have
sculpture.

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.

Because literary work, copyright extends to non-literal elements of a

program, including structure.
For non literal copying, abstraction-filtration-comparison test:
Apple v. Franklin (p.238) (1983)
o Franklin copied Apple OS from object code and loaded into Apple
clones.
o Stands for fact that computer programs are copyrightable and
cant just say 102(b) excludes an entire program.
Both source and object code protected.
Franklin had argued that OS is a method or process under
102(b). Court says code used to implement a process but
is not the process.

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

Dictated by efficiency (these have merged with idea).

Elements dictated by external factors like
o Mechanical needs of computer, interoperability
requirements, widely accepted programming
practices.
o Things like this start out as copyrighted, but as
become standard, they pass out of copyright.
3) The core left is what is expression and protected
o Structure is usually dictated by efficiency and external factors, so
generally not copyrighted.
o Problem in that two different experts may come up with different
flow charts about how a program structured.
Softel v. Dragon (p.251) (1997)
o Structure is compilation of uncopyrighted elements. Copyright in
the arrangement.
Lotus Development v. Borland (p.255)
o Borland emulates Lotus menu tree in its spreadsheet.
o This is literal copying. Court says Altai for nonliteral.
o Commands are methods of operation. The method of using the
program.

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.

o If distinctively delineated, you start letting a lot of things in.

MGM v. American Honda (p.280)

o James Bond a-like in Honda commercial. Is James Bond
copyrightable?
o Story being told? Is James Bond the story being told in the
Forrest Gump sense?
o Distinctively Delineated?
Visually, hes just a tuxedo. Lots of actors have played
him.
Attributes do they give distinctiveness? Theyre pretty
much the same of any action hero.
Chad Vader
o Darth Vader distinct visually and thats big for distinctively
delineated.
o Context less important because rest of the character so defined.
o Darth not the story being told in first trilogy.
Titan Sports v. TBS (p.284)
o Razor Ramon and Diesel are pretty generic grimy wrestler guys
yet copyrighted because distinctively delineated test is very
lenient.

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.

BellSouth v. Donnelly (p.292)

o Yellow pages copied. Does it infringe the compilation copyright?
o Geographic scope and closing date is not original. Headings are
functional and common practice.
o Arrangement is entirely typical, practically inevitable.
CCC Information v. Maclean (p.296)
o Logical arrangement can be original. Originality in breaking
down by regions, adjusting for mileage, optional features, etc.
o Problem because an arrangement is an idea.
o Ideas infused with judgment/selection are protectable in
compilation.
CDN v. Kapes (p.300)
o Kapes uses CDN wholesale prices as base for his retail prices.
o The wholesale prices themselves are copyrighted because they
are creative. They are not facts discoverable.

o A judgment infused idea is expressive.

Matthew Bender v. West Publishing (p.301)
o Matthew Bender is upstart that wants to publish more cases than
West, but include West pagination.
o West argues that people can recreate our arrangement if you
include the numbers.
o Court says no original expression. A book needs pagination and
thats completely unoriginal. Its dictated by the functional need
of the book.

III. Acquiring, Keeping, and Recovering Copyright

A. Authorship
Determination of initial authorship is extremely important because
affects:
o Who can transfer
o Who can terminate transfer
o Who must renew pre 1978 works
Romantic authorship vs. Incentives approach about who putting up
economic risk.
1. Individual Work
Author is the one who conceives of the operation and exercises artistic
control, despite whoever does the actual physical work.

Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic (p.111)

o Guy who conceives and directs Titanic film is the author, not the
camera people who actually filmed underwater.

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.

o Any author can grant a nonexclusive license.

If interdependent, but separable, depends on time whether joint
authors.
o If lyrics written, then music, thats two copyrights. If written
together, thats one joint work.
Erickson v. Trinity Theater (113)
o A member of the theater created a number of plays for the
theater. Some of the actors made some changes/suggestions
and the theater tries to claim as author.
o Reject de minimis test which said final product just had to be
copyrightable.
o Accept Goldstein Copyrightablility Test contributions must be
independently copyrightable.
Here, just staging directions or dialogue suggested. Just
ideas, not expression.
Must be more than a word or a line.
Aalmuhammad v. Lee (114)
o Aalmuhammad hired as Muslim expert of Spike Lees Malcom X
movie. He made some revisions to the script and wrote some
dialogue. Sues to be a joint author.
o Aalmuhammad work was independently copyrightable, but not
enough.
o Must be an author to be a joint author. An author no only
makes copyrightable contribution, but is an originator.
o Must prove intent of both parties to be joint authors.
Look at who has decision making authority, how parties bill
themselves, other evidence.
o We care less about the romantic genius Aalmuhammad because
were assigning right to a very complicated work and we dont
want makeup guy to be an author on a movie. We cant assign
percentage ownership.
o Care about the auteur who directed this giant movie and
executed his vision. Moral rights style.

3. Work Made for Hire

Employer for whom the work prepared is considered the author.
101 - A work made for hire is:
o 1) a work prepared by an employee within scope of his
employment; or
o 2) a work specially ordered or commissioned if: (from
independent contractor)
1) Belongs to one of 9 enumerated classes and
1. Contribution to a collective work

2. Part of motion picture/other audiovisual work

3. Translation
4. Supplementary work
5. Compilation
6. Instructional text
7. Test
8. Answer material for test
9. Atlas
2) Both parties sign something agreeing that work for hire
If a work is not on the list, you can make contract calling it a work for
hire, but it doesnt mean anything.

a. 101(1) Prepared by an employee within scope of his employment

Whether someone an employee determined by common law of agency
o Fourteen factor test from 2nd Restatement is adopted, but five
factors most important:
1) Hiring partys right to control manner/means of creation
2) Skill required
3) Whether hiring party has right to assign additional work
4) Provision of employee benefits
5) Tax treatment of hired party
Scope of employment also determined by common law of agency:
o Work of the kind the employee is employed to perform
o Occurring substantially within the authorized time and space of
the employment
o Actuated at least in part by a purpose to serve the master.
This is the part hat gets litigated.

CCNV v. Reid (p.119)

o CCNV commissions sculpture and they want to take it on tour.
Artist wont give it back.
o CCNV owns the physical copy for certain, but want to be able to
duplicate and stuff.
o Scope of employment determined by common law of agency.

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.

o These traps for the unwary led to abandonment of many

formalities in 1976 Act.
o Intl IP regime forbids subjecting enjoyment of any rights to any
formality
1976: Copyright subsists upon fixation without regard to formalities.
Look up formalities problems. Dont do from head.

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.

Estate of MLK v. CBS (p.144)

o Estate of MLK claims copyright in I Have a Dream Speech when
CBS wants to include in documentary.
o Distribution to the media for comment is only limited publication.

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

1976: Deposit requirements attached to gen publication, but

opportunity to cure and some special exemptions. Failure only
punishable by fine, rather than lose copyright.
o Must deposit two copies of the best edition of a published work
with the Copyright Office.
Still mandatory but penalty for failure is trivial.
Deposit is required to register.

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

o 19 year extension from 1976

o 20 year Sonny Bono extension 1998
We cant just say a 95 year term because pre-1964 works dont get the
full 95 years unless renewals filed
In order to get the last 20 years, the works still had to be under
copyright in 1998 (i.e. after 1922
If before 1922, then definitely in public domain.
Three critical dates:
o 1/1/1923: Anything published before is definitely public domain
o 1/1/1978: Effective date of the 1976 Act
o 2/28/1989: Effective date of the Berne Implementation Act
Foreign restoration: for works apparently in the public domain for
noncompliance with formalities, copyright may have been restored if
the any author was a national of a country that is today a member of
Berne or WTO and:
o The works is still in protection in country of origin
o The owner has complied with U.S. rules for foreign owner to
reclaim U.S. copyright.
o Calculate duration as if copyright not lost.
o Reliance parties get some protection 12 months of immunity for
them to wind down affairs once a foreign owner files notice to
reclaim.
Eldred v. Ashcroft (p.159)
o Congress can extend existing Copyright terms.

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.

203 Termination (Post-78 transfer)

o Who can transfer?
Author and majority of statutory successors
o Which transfers can be transferred?
Only inter vivos transfers by the author
o When can termination occur?
5 year window beginning 35 years from the date of the
grant, not the year which is how copyright duration
calculated
o How is termination effected?
Written notice 2-10 years before effective date.
304(c)-(d) Termination (Pre-78 transfer)
o Who can terminate a transfer?

Transfer by author author and majority of successors can

terminate
Transfer by successor majority of successor only can
terminate
o Which transfers can be terminated?
Inter vivos transfers conveying interest in renewal term
o When can termination occur?
Two five year windows
304(c) 5 year window starting 56 years from start
of copyright, not from date of transfer
304(d) (if 304(c) right not exercised & and window
expired pre-1998) five year window starting 75
years from start of copyright
o How is termination effected?
Written notice 2-10 years before effective date.

IV. The Statutory Rights of Copyright Owners

106 Rights of Copyright Owners
o Reproduction
o Derivative works
o Distribution
o Public performance
o Public display
A. Infringement
Prima facie case of infringement:
o 1) Show ownership of a valid copyright
Registration is not required in U.S., but it is required to
bring suit for infringement by U.S. copyright owners.
Registration gives advantage to foreign owners also though
because registration creates presumption of ownership of
valid copyright.
If Copyright Office denies your registration, you can still file
infringement suit, but the denial will come up in court.
o 2) Unauthorized exercise of a 106 right
2a) Copying in fact - Whichever right infringed, need to
show that defendant actually copied rather than
independently created.
Direct evidence
Circumstantial evidence of access + similarity allows
you to infer copying in fact.
2b) Improper appropriation in a way violating a 106 right.
1. Copying in Fact

Basically trying to determine if copied or independently created.

o Including unconscious copying like recognizing how everybody
builds on each other. Remember, this doesnt mean
infringement yet. Would still need to violate a 106 right. If
reproduction right, then would need to prove substantial
similarity that the defendant took too much (i.e. more than
ideas). Can take ideas, just not more than that.
If no direct evidence of copying, then turn to circumstantial evidence.
o Evidence of access the plaintiffs work
Reasonable opportunity/possibility of defendant viewing
the plaintiffs work.
Either prove a particular chain of events between plaintiffs
work and defendants access to that work
Or plaintiff work be widely disseminated.
Widely disseminated may mean unconscious
copying.
o Degree of similarity between the two works.
Can have expert testimony.
The more strikingly similar to plaintiff, the more we can infer access.
o Can rebut inference of access with proof could not have seen
earlier work or of independent creation.
In digital world with worldwide distribution, harder and harder to
disprove access.
Hard to know whats idea and whats expression in things like music.
Establish procedures to prevent access to avoid it. Document
independent creation.
George Harrison
o Found to have infringed a song by the Chiffons from 1963.
o Unconscious copying we have to accept that unconscious
copying is enough or else we would have a series of I didnt
realize defenses.
Three Boys Music v. Michael Bolton (p.315)
o Reasonable to believe access to a widely disseminated song that
was played on radio in a particular genre, even though obscure
now, when the defendants were avid fans of the genre as teens.
Selle v. Gibb (p.318)
o Plaintiff played song two or three times live in Chicago and sent
tape and music to eleven recording and publishing companies.
o BeeGees dont read or write music. Work tape of them actually
creating the song.
o The more strikingly similar, can more readily infer access.
o Not unique enough to be impossible to independently create and
thus infer access.

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?

o Dissection not relevant to substantial similarity analysis.

Which conflicts with Nichols and its abstraction idea.
Steinberg v. Columbia (p.336)
o No plagiarist can excuse the wrong by showing how much he did
not pirate.
o Movie poster for Moscow on the Hudson alleged to infringe
Steinbergs copyright in New Yorker cover.
o Admission of copying, but infringement? Or just take idea?
o Test: Would average lay observer recognize the alleged copy as
having been appropriated from the copyrighted work?
o Idea of the myopic view of the world cant be held liable for.
o Style doing much of the work for similarity here.
o Dont need to be identical to be substantially similar.
Boisson v. Banian (p.341)
o Quilts
o Ordinary observer needs to be more discerning in circumstances
where take from public domain. Recognize that only some parts
of a copyrighted work are actually protected by copyright.
But dont break down the work into components because
at that point nothing copyrightable (Ex: Shapes, colors,
letters, symbols).
o Total concept and feel similar?
o Similarity in color, patterns, arrangement, shape of letters show
illegal copying even to more discerning observer.
Mannion v. Coors (Supp. 393)
o Idea/Expression breaks down even in visual art. What is the idea
behind a particular photograph?

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.

o Extrinsic objective comparison of expressive elements. Filter

out the ideas. Is there similarity between protected parts?
Judicial slicing and dicing about what is basic idea, scene a
faire when it comes to literary work.
Visual Art less slicing and dicing. Court sends to the jury.
Swirsky v. Carey (p.354)
o Example of dissection of non literary work. This is music and we
have a battle of experts about what is just idea and should be
filtered and what is expression and be compared.

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. Making Available Enough to Count as Distribution?

Capitol Records v. Jammie Thomas (Distribution Supp. 4)
o Making available for distribution is not enough to implicate
distribution right. Must actually distribute to infringe.
Nobody put offer into the distribution. Why would we put
to offer in by implication given that right to distribute came
out of the right to publish?
Argument that Congress used offer in several other areas,
which implies that they knew how to include offer. This is
unambiguous that it does not include offer. No need to
speculate about what Congress says was implicit about the
scope of this right.
506(a)(1)(c) allows criminal prosecution for making
available on computer network pre-registered works
prepared for commercial distrib.
o Not ambiguous enough to use Charming Betsy canon.
o Reject Hotaling. But can use making available as circumstantial
evidence of actual distribution.
Hotaling v. Church of Jesus Christ of Latter-Day Saints (Distribution
Supp. 7)
o Library made copy and put on shelf.
o Court held its distribution whenever the defendant has
completed all the steps necessary for distribution to the public.
WIPO Copyright Treaty
o Art 6: Authors of literary and artistic works enjoy exclusive right
of authorizing making available to the public of the original and
copies of works through sale or other transfer. (Agreed
statement says copies means fixed tangible copies. Does this
include digital?)
o Art 8: Authors enjoy exclusive right of authorizing communication
to the public of their works including making available in such a
way public may access. (Agreed statement: mere provision of
physical facilities for enabling of making communication is not
making the communication.)
o Charming Betsy Canon ambiguous statutes should be
construed to avoid unreasonable interference with the law of
nations.
2. Statutory Limitations First Sale
First Sale Doctrine codified at 109(a). Originally a judicial doctrine.
Owner of a particular copy of a copyrighted work can sell or otherwise
dispose of the possession of the copy.
o Record Rental and Computer Program rental is excepted from
first sale.

o TRIPS allows member states option to give authors the right to

prohibit rental of movies.
As more things move to digital media, where easy to copy, should we
limit first sale doctrine? No first sale for digital files?
Bobbs-Merrill v. Strauss (p.369)
o Does greater right to dispose include lesser right of controlling
how others dispose once its sold?
o Copyright statute, while protecting copyright owner in right to
multiply and sell, does not create right to impose by notice a
limitation at which the book shall be sold at retail by future
purchasers with whom there is no privity of contract.

3. Statutory Limitations Libraries

108 Libraries can make reproductions and distribute for limited
purposes.
Libraries are a way of reducing deadweight cost.
4. Grey Markets and Importation
602 gives right to prevent unauthorized importation of copies of a
copyrighted work into the U.S as part of distribution right.
o Copyrights can be divided geographically and this prevents
German copyright holder from printing cheaply and selling in
U.S., undercutting U.S. copyrightholder.
602 is limited by first sale which applies to works lawfully made under
U.S. copyright law.
o Thus, if made in U.S., sold abroad, can first sale it back to U.S.
o But foreign works dont get first sale
Grey markets efficient because more consumers at lower prices? Or
inefficient because copyright is territorial and price discrimination is
good?

Quality King v. Lanza (p.378)

o Lanza price discriminates between domestic and foreign market,
selling for higher price in U.S. Quality King buys abroad and
reimports to U.S.
o Lanza says that if you subject to right to sue for unauthorized
importation to the first sale doctrine, it makes 602(a)
superfluous because you can already keep piratical copies out of
the country 602(b) and if 602(a) is subject to limitations of first
sale, then it only applies to piratical copies and would be
superfluous.
Court says no for three reasons

1) Under 602(a) you get a private right of action, not

just the customs service. So you could sue privately
2) You could sue a bailee or licensee
3) 602(a) not superfluous because allows to keep out
copies lawfully made under title of another country
because first sale only covers things lawfully made
under US title.
Omega v. Costco (Supp. 410)
o Omega manufactures watches abroad and includes a
copyrighted logo so it could keep shipments out of U.S.
o Costco went abroad and bought a bunch of low priced watches
and sold at Costco.

D. Derivative Work Right

106(2) right to prepare derivative works based on the copyrighted
work
o Overlaps reproduction right to an extent.
o A derivative work need not even be fixed Ex: Prepare a ballet
from a story.
o Derivative work right is not affected by first sale doctrine
o Extent is debatable. Different theories.
Derivative work a work based on another work that transforms,
recasts, adapts, or elaborates on the original work.
o Just because based on something else does not mean derivative
work. Must transform, recast, adapt in an original work of
authorship.
Policy justification for derivative work right encourages more
investment in creative work because it creates another revenue
stream.
Derivative work must be fixed in order to receive copyright protection,
but not to infringe. (Lewis Galoob v. Nintendo). But form pretty much
same as fixed.
o Derivative work cant be purely evanescent.

Variety of routes to get to deriv work infringement with varying ideas

about how far the derivative work right extends:
o Substantial similarity of expression (Quan/Qual)(Castle Rock)
o Market substitute v. complement/other (Goldstein)
o Representation v. repurposing (WB v. RDR)
o Moral natural right to control.
o Productive use (creating more of something) vs. consumptive use
(for every new work, have to use one of the old work)
o User autonomy?

Castle Rock v. Carol (Deriv. Supp. 2)

o The Seinfeld Aptitude Test trivia book.
o Reject total concept and feel test for derivative works. Unhelpful
when comparing different genres, different media.
o Test: Quantitative/Qualitative Test
Quantitative must use more than de minimis amount of
the copyrighted work
Qualitative used expression, not ideas.
o Because shift to a different format, also look to see if fill a market
copyright owner would in general develop. Market effects.
WB v. RDR (Deriv. Supp. 5)
o Harry Potter Lexicon website turned into book.
o Deriv Work statute meant to protect a new mode of presentation
that still represents the original work of authorship. Harry Potter
guide gives the original work a new purpose that does not
represent the original work. Its a new work of authorship.
o Reproduction right is still infringed though.
Beanie Baby Guide is not a derivative work because guides do not
recast, transform, or adapt the things to which they are guides.
ART Tile Cases (p.396, 398)
o Paste artists work onto a tile and sell tiles.
o 9th Circuit The statutory definition is broad and includes all form
recasted. There is a first sale right, but that doesnt include the
right to make a derivative work with that copy. Just pasting the
art reproduction on tiles is a deriv work
o 7th Circuit 9th Circuit is dumb. If we take that seriously, then
museums infringe copyright every time they change frame on a
painting. Thats not the kind of recasting or transformation
meant to protect.
Lewis Galoob v. Nintendo (p.401)
o Game genie creating derivative works in the Nintendo graphics?
o A derivative work must incorporate a protected work in some
form, but need not be fixed to infringe.
Form pretty much same as fixed though.
o Not a derivative work because not in a form.
MicroStar v. FormGen (p.403)
o Duke Nukem 3D had level creator. MicroStar downloads a bunch
of user levels and sells on CD.
o Form requirement met because the user levels exist in the code
which describe in exact detail the display to be generated.
o Derivative work because its a kind of sequel. Infringing on the
story.

E. Public Performance and Public Display Right

106(4) Literary, musical, dramatic, choreagraphic, pantomines,

motion picture and other audiovisual right to perform publicly
o Perform to render either directly or by means of any device or
process
106(5) literary, musical, dramatic, choreographic, pantomines,
pictorial, graphic, or sculptural, including individ image of a motion
picture have right to display the work publicly.
o Display to show directly or by means of any device or process
o This has PGS added to it from 106(4)
Neither has sound recordings.
To display or perform publicly means:
o 1) Place open to the public or place open to substantial number
of persons outside family and social acquaintances
Depends on kind of place
o 2) Transmission or other remote commission can be public by
sending to a clause 1 place
sending to the public by means of a device
Does not need to be commercial to be public.

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?

Distinction between In-Store and Hotel In Room Rental?

Cartoon Network v. CSC (Supp. 413)
o Started a broadcast public performance and able to convert to a
copy stored for you personally. Remote DVR.
DVRs substitute for rented or purchased copies on distrib
side.
DVRs substitute for video on demand on public
performance side.
nd
o The 2 Circuit says the difference between Maxwells and here is
that there it was the same copy shown repeatedly and here its
10,000 different dedicated copies shown at totally disconnected
times to 10,000 people. 10,000 performance, but not public.

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.

Faith Ringgold Church Picnic Story Quilt v. BET (p.432)

o Quilt is hung on the wall in the background of a TV show for a
total of 26.5 seconds.
o BET bought a copy, but cant use 109(c) because the people
seeing it arent located at the location of the copy. Its on lots of
TVs.
o Not de minimis because can recognize and can see in entirety.
26 seconds is enough.
o Clear images for movies and tv.
Perfect 10 v. Amazon (Supp. 419)
o Lawsuit against Google for image search engine.
o Google violates display right for showing thumbnails which they
host.
o Directing to full size image and framing does not violate display
right.
o There are three options for how to find infringe public display
right:
1) Plain language of the statute
Cant be liable for displaying a copy if you never
possess that copy
This avoids the policy question about how search
engines show people stuff and often with a frame.
2) Incorporation Test

If you think statutory language not so plain, if you

focus on what is perceived, what is perceived is the
copyrighted image.
Did content get incorporated into anything Google
created?
o Look to what perceived and it looks like Google
did it, so find infringement.
3) Server Test
Did content ever reside on Googles servers?

3. Limitations on Public Performance and Display Rights

See 110
F. Moral Rights
Come from French view of authorship and incorporated into Berne
Berne Art 6 bis 1 Independent of copyright, author has right to:
o Author has right to claim authorship to the work (paternity or
attribution)
o Author has right to object to any distortion, mutilation,
modification, or derogatory action which would prejudice his
honor or reputation (right to integrity of the work).
French also have right to object to malicious criticism. This
may be incorporated to an extent
o Right to publish or withhold or even take back.
1. VARA
U.S. attempts Berne compliance with VARA - 106A for works of visual
art.
o Rights
Right to attribution
Right to remove name in event of distortion or mutilation
Right to prevent intentional distortion, mutilation,
modification, that would prejudice honor or reputation.
Right to prevent any destruction of works of recognized
stature, including by neglect.
o Works of visual art defined narrowly to certain categories with
runs of 200 copies or fewer.
Ghost of Bleistein discrimination?
Congress wants to only protect stuff thats personal.
U.S. doesnt like moral rights, so made it very narrow.

Annie Lee stationary on tiles (ART Tiles) not a run of 200.

CCNV v. Reid sculpture not intentional distortion or damage to take
on the road. Would have to prove it prejudiced his reputation.

Jen Martin sculpture on city land that gained some local notoriety but
how do we know when recognized statute under 106A(a)(3)(B)?

2. Other Laws that allow U.S. Compliance with Berne

Derivative Work Right protecting integrity
o Gilliam v. ABC (p.409)
ABC made big edits to Monty Python shows. This is an
unauthorized preparation of a derivative work.
BBC had copyright in the program, Pythons in the script.
BBCs is a derivative copyright and they only get what was
added above and beyond script.
BBCs contract with Pythons said nothing about editing
after filming. A great deal turns on whether the limited
license to BBC includes right to edit.
Court implies no that it does not based on other
language about MP approval of changes.
Without that language, would turn to common
practice and in the U.S. we assume give up that
right.
Basically got moral protection because put it in the
contract that it was keeping that right.
Lanham Act protecting attribution?
o Gilliam v. ABC
Truncation a misrepresentation of MP. Confusion stemming
from false representation in commerce.
o Dastar v. Fox (p.423)
Dastar take videotapes from P.D. based on book still in
copyright, edits them, and resells as their own without any
reference to prior work.
S.Ct. rejects Lanham Act claim from Fox, the orig owner of
what now in P.D. cant use Lanham to create a mutant
copyright that limits public ability to use expired
copyrighted work.
Gilliam may still be good law for works still in copyright.
G. Copyright in the Music Industry
1. Who gets what rights?
Musical works = music and lyrics
Sound recordings = actual sound
115 mechanical license authorizes anybody who wants to do so to
record and distribute a copy of a musical work so long as they notify
the author and pay a low compulsory fee.
o Authorizes covers

o 115(a)(2) allows change to conform to style or interp, but not

to change basic melody or fundamental character of the work.
Reproduction and Distribution
o Musical Works
Limits with mechanical license
Anything other than mechanical license, have to negotiate
with a publisher.
o Sound Recordings
Limited to the actual recorded sounds
Go to record labels
Public Performance
o Musical works
Collective Rights Orgs collect to allow performance of the
work.
o Sound Recordings
Created in the 1990s and only for digital.
Three tiers of 114
110(5)(A) and (5)(B) give exemptions for homestyle public
performance and small business.

Musical Works (music

and lyrics)

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)

Other licenses (synch

license, derivative
works, etc.) from
music publishers
106(1)/(3)
Subject to 114(b)
limiting to exact
sounds only

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

Newton v. Diamond (p.450)

o James Newton composed in 1978 and recorded Choir in 1979.
o Beastie Boys sampled three notes and looped it over and over
o Clearly recognizeable in the background if you know it.
o Beasties had gotten license for the recording, but not the
underlying work.
o When you subtract performance, use of the composition was de
minimis. Not too much take quantitative nor qualitative.
Emphasis on qualitative.
Bridgeport v. Dimension (p.455)
o George Clinton song composed and recorded. Another song
samples 3 notes, loops, and plays five times.
o Barely comprehensible in the background even if youre looking
for it. Its really soft in the background and overlaid by a lot
more.
o Rappers had gotten license for the underlying composition, but
not for the recording.
o Need a license for that sound recording.
o 114(b) limits derivative work right of sound recording copyright
to those involving the actual sounds. From this, the court
reasons that when you take any sounds, youre in the derivative
work right of the sound recording.
o The court is not persuaded at all about the chilling effects on
sampling because found so little to admire in the practice.

Why dont they just recreate in the studio? Why do they

take? Lets have a nice orderly market.

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.

3. Other licensed uses

Ringtone a mechanical reproduction. Just go to Harry Fox. Can
perform publicly because of 110. Sound recording need license from
label to reproduce and distribute.
Rock Band/Karaoke not just mechanical because also displaying
lyrics. Need license to display lyrics. Youre making it interactive, so
not mechanical also.
Digital music delivery covered by 115.
Pandora or Yahoo Music enormous amount depends on whether you
qualify as noninteractive or not. If non-interactive, SoundExchange
licenses. If not, then have to individually negotiate.
V. The Different Faces of Infringement
Direct infringement and intermediary infringement
Different kinds of liability lets you distinguish between different levels
of culpability
A. Direct Infringement
Strict liability for violating a 106 right
There must be volitional conduct to be a direct infringer.
o Volitional conduct cannot be setting up an automatic process
that results in infringement
o This means that ISPs are not direct infringers when copies are
made on behalf of users as it passes through their network.

Religious Technology Center v. Netcom (p.473)

o Guy posts Scientology stuff to usenet forum. Usenet forum
connects through Netcom ISP.
o 9th Cir cant be the case that Netcom is a direct infringer of
copyright by copying, because all they did was set up a system
that automatically copied. Thats not enough to constitute
copyright infringement.
A regular bookstore:
o The bookstore manager selecting books is a volitional act.
Amazon.com

o They sell everything. No volitional act?

LoopNet
o Web 2.0 where people post stuff, it is reviewed, and then put on
site.
o We want to incentivize companies to be proactive and monitor
sites for copyrighted material. Perverse incentive if someone
who does monitor and misses is liable, but no liability if dont
monitor at all.
o Court says this isnt volitional conduct because was concerned
about losing distinction between types of liability.
o Web 2.0 judges play fast and loose with volition.
Cablevision Remote DVR (Supp. 429)
o CN argued that Cablevision should be liable because it made the
copies.
o Volitional act requirement allowed to court to say only the user
commits direct infringement. Cablevision just set up an
automatic system to allow copying.
o Turn to indirect liability.

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.

Direct Financial Benefit Cases

o Sharpiro - % of commissions

o Gershwin promotion & management fees

o Fonovisa admissions fees, concessions, parking fees with
infringement as a draw is enough of a direct benefit.
o Netcom fixed internet access fees not direct enough of a
benefit
Internet access more varied than going to swap meet?
Right and ability to control cases
o Shapiro ability to police a physical booths conduct in your
store.
o Gershwin artist planning co that planned and managed what
would play.
o Fonovisa right to terminate vendors is enough to establish
control.
o Netcom right to terminate contracts
o P10 cases just because Google has ad relations, cant control
what they do.
o P10 v. Visa just because Visa can stop transaction they think
illegal, doesnt give right police conduct
Is arms length contract enough to establish control?
o If we say as to vicarious liability it is inapplicable in arms length
contracts because it doesnt give right to control conduct, that
will preclude most of the cases it will be brought.

3. Liability for Device Manufacturers?

Go after equipment manufacturers?
o Do equipment manufacturers really have any right to control use
after you buy? Vicarious liability doesnt work.
o Doctrinal problem Sony Rule clear immunity from liability.
o Political problem: Powerful lobbies opposed to liability
Sony Rule no contributory infringement liability for sale of an article
capable of substantial non-infringing use.
o Dispute between whether substantial means qualitatively
substantial or quantitatively substantial.
5 Justice Majority say quality
4 Justice Dissent says quantity
Contributory Liability for Device Manufacturers
o 1) Knowledge
Actual Knowledge
Constructive/Imputed Knowledge
If there are no SNIUs, we can impute knowledge of
infringement.
If can show SNIUs, the notwithstanding knowledge in
the abstract that there will probably be infringement,
actual knowledge not imputed.

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.

Sony v. Universal (p.488)

o VCR had SNIU because some copying is fair use and other is not
objected to.
Napster (p.489) 9th Cir
o We believe in Sony and there are SNIUs here. Cant impute
knowledge.
o Can still get knowledge the old fashioned way. Once Napster had
been notified of specific infringement, it could be held
contributorily liable.
Absent specific information which identifies infringing
activity, a computer system operator cannot be held liable
merely for structure of the system.
o Can be found vicariously liable because direct financial benefit.
Aimster (p.489) 7th Cir
o Piggyback P2P on AIM. No central directory and automatic
encryption.
o Centralized database. Encryption is willful blindness and cant be
used to avoid contributory liability.
o Aimster with burden to show SNIUs. And have to show some
estimate of their magnitude.
Quantitative version of substantial.
Sony more difficult to assert.
o Even if SNIUs, would have to show disproportionately costly to
eliminate or reduce infringement.

MGM v. Grokster (p. 490)

o Capable of SNIU.
o Here there is no centralized database in real time.
Contrib: There is no actual knowledge of infringing uses.
Vicarious: No ability to control the use of the software.
o If you act with specific intent to cause infringement, its a
separate question from Sony rule.
o Contributory liability can follow culpable intent. How do we know
when someone is a bad actor? They give us three categories:
Effort to satisfy known demand for infringement
Absence of design efforts to diminish infringement
Marketing strategy and business model
o All three present here.

4. Online Service Provider Liability

a. Problems
Go after network intermediaries?
o Doctrinal problem we have no idea what legal landscape as far
as indirect liability is.
Contributory liability
Most online intermediaries dont tend to start with
knowledge with respect to a specific act. To extent
that do have knowledge, there is a question about
extent they can do something about it like take
something off line.
Vicarious liability
Amount of control?
How much financial benefit?
o Political problem powerful lobby opposed to liability. AOL,
Verizon, Comcast are big. You wont walk over them. They want
to roll out service with fewest legal responsibilities.
o Cant get whatever you want in Congress, which is what
copyright industry was used to, and not clear what courts would
do.
b. 512 Safe Harbors
512 is a legislated compromise between access providers and content
providers
o Internet access providers are given some safe harbors
o Content providers are given some cooperation with enforcement.
Four safe harbors in 512:
o (a) Transitory digital network communications when the
intermediary is simply a conduit between A and B and no other
relation to A or B. Role only to forward the bits.

o (b) System caching

o (c) Information residing on systems or networks at direction of
users
o (d) Information location tools
512(i) General requirements to qualify for all safe harbors:
o Comply with standard technical measures
o Policy of terminating accounts of repeat infringers.
OSP = online service provider. This includes both access providers and
internet service providers like Google or Yahoo.
If you comply (this is voluntary), there is a defense to monetary liability
if you are in a safe harbor.
o This is not an immunity from injunctive relief, however.

i. Safe Harbor (b) Caching

Requirements are technical
Loss of safe harbor if:
o Failure to comply with reasonable rules re: refreshing/updating of
cached material set by the originating site.
o Interference with presentation of content
o Failure to honor password/payment conditions of original site
o Failure to disable access via cache once take down by originating
site is confirmed.
These are easy. There has been little litigation.
ii. Safe Harbors (c-d)
Loss of safe harbor if any of:
o Fail to disable access to material if OSP has knowledge of
infringement (this is basically contributory infringement)
Actual knowledge
Knowledge triggered by red flags
Knowledge triggered by proper notice
This comes from Netcom and then codified
o OSP receives financial benefit directly attributable to
infringement and has the right and opportunity to control it; or
This preserves vicarious liability
Benefit directly attributable to infringe is different than
direct financial benefit. Were unsure of meaning.
o Defective procedures for receiving/processing take down notices
The safe harbors dont protect from contributory or vicarious liability.
Whats the benefit?
o Notice and takedown regime. As long as you have that notice
and takedown process works, youre good.

Viacom v. YouTube (Supp. 440)

o Viacom complaint 1: YouTube directly infringes copyrighted works

Two potential safe harbors
C Not liable for infringement by reason of storage
at direction of a user
D Not liable for infringement by reason of provider
referring or linking users to an online location
containing infringing material.
Direct infringement claim is that YouTube is doing so much
that we dont have any of the simple conduct of a safe
harbor.
But need volitional conduct for direct infringement
(Netcom).
o Viacom complaint 2: YouTube ineligible for safe harbors under
512(i)
o Viacom complaint 3: YouTube ineligible for (c) or (d) because
direct financial benefit and ability to control (Vicarious Liability).
Ad revenue directly attributable to infringing works
Infringing works are a draw.
Has
o Viacom Complaint 4: Contributory Infringement
Claim actual knowledge or at least red flag knowledge
o Under Grokster culpable intent test
iii. Notice and Takedown
Upon notification, OSP must respond expeditiously.
o OSP must act in good faith and take reasonable steps to
promptly respond.
Subscriber can send counter notification
OSP must then replace the material in 10-14 days, unless after
notifying copyright owner, the Copyright owner files a federal court
action. Then OSP does not repost.
Why is notice and takedown good if youre a telco/OSP?
o It puts initial onus on the copyright owner. They have to detect
infringement themselves.
o All OSP has to worry about is answer their mail and follow the
process.
o Follow the process and youre off the hook.
What does copyright owner get?
o A copyright owner can push as far as they want to push it. They
can be as vigilant as they want to be about their material. They
can keep stuff off the web.
What do users get? Are there safeguards against abuse?
o Technical requirements of notification

Under penalty of perjury is a statement of authority to act

on behalf of copyright owner
o Penalty for content owners who knowingly and materially
misrepresent that material is infringing
Liability for damages, including costs and attorneys fees
Cant get statutory damages which makes it difficult
Failure to consider may be relevant to knowing
misrepresentation
o Statute allows users only two things for counter notification
that the thing was tagged by mistake or that it was misidentified.
Does not say fair use.
Try to read fair use into mistake? Depend on if you mean
mistake of law or mistake of fact.
30% of takedown notices are spurious.

c. Is

there a better way?

Go against users?
Persuasion?
A legislated safe harbor for Web 2.0? Unlikely.
Industry best practices agreement?
Partnerships with revenue-sharing and monetization?
Termination of user accounts?
o 512 requires a policy of terminating repeat infringers to qualify
for safe harbor.
o Three strikes better than lawsuits?
What about due process?

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

Phelps & Associates (Supp. 489)

o Guy builds house with copyrighted plans. Plaintiffs seek $ and
injunction.
o Burden on plaintiff to show the four factors.
o But court still seems to presume irreparable harm.
o Focus on balance of equities and harm to public interest in
denying injunction.
Courts reluctant to burden property.
MGM v. Grokster (Supp. 492)
o Burden of proof for irreparable harm now on plaintiffs. No longer
presumed.
o Mere likelihood that will continue to infringe does not make harm
irreparable.

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.

Frank Music Corp v. MGM (p.777)

o Infringing music review at casino.
o Damages include portion of all casinos revenue attributable to
the draw of the infringing material.
Accountant style attributable. Line-item.
Bouchat v. Baltimore Ravens
o Infringement of Ravens logo guy submitted.
o Proved all their revenue on merchandise, but didnt attribute.
o Jury gives nothing.
Bridgeport Music v. Justin Combs
o One track on 17 song album infringes with a 6 second sample
that was one of 6 samples.
o Plaintiff got 1/17th album profits. Why not 1/6th of 1/17th?

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.

Why statutory damages?

o Concern that there were cases of infringement where you
couldnt prove damages or profit because defendant so shady
no books or perhaps no damages, but we dont want to create
incentive to infringe.

VII. Fair Use 107

The all purpose exception to copyright. Adaptable, so great pressure
on it in times of technological change.
Four fair use factors:
o 1) Purpose and Character of the Use, including whether such is of
a commercial nature or is for non profit educational purposes
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 the portion used in relation to
the 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 on the potential market for or value of the
copyrighted work
These are non-exclusive. Can consider other things.
Factors 2 + 3 dont do much work.
Commerciality doesnt really matter.
Parody = a work that uses an earlier work to mock or poke fun of the
earlier work itself.
VII. FAIR USE (17 U.S.C. 107)
Berne Art. 9(2) uses three-step test permits member countries to place
additional limitations on reproduction rights in (1) certain special

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.

A. Theories of Fair Use

Implied consent implied consent of copyright owner to reasonable
and customary uses.
Customary use theory can use within customary norms
Market Failure theory
o Fair use should be allowed when market flaws prevent
consensual exchanges from occurring; market failures for
copyrighted works: market barriers, externalities, antidissemination motives
o Wendy Gordon proposed three-part test for when to label use
as fair:
Market failure is present
Transfer of the use to defendant is socially desirable
Fair use ruling would not cause substantial injury to
incentives of copyright owner
Market substitute v. complement
Representation v. repurpose
o Transformative use = no market protection.

B. What purposes fair use?

1. Cultural interchange
Fair Use illustrated in the preamble are those that further the
development of a common culture
Permit court to avoid rigid copyright when it would stifle the creativity
meant to promote.

Harper & Row v. Nation Enterprises (1985) use of unpublished work

tends to negate fair use defense; fact that subject matter is a matter of
public importance is unimportant (not fair use). Fair use traditionally
based on implied consent to reasonable and customary uses, which is less
likely when dealing with unpublished.
o 1st factor fair use presupposes good faith and fair dealing.
Profit/Nonprofit does use stand to profit from exploitation
without paying the customary price
Intended effect of supplanting copyright holders right to
publish
o 2nd factor more creative/non-fiction works entitled to greater
protection
o 3rd factor need to consider amount used both quantitatively and
qualitatively; taking the heart of a work cuts against fair use
o 4th factor most important element; must look at harm to
market both for original and derivative works; to negate fair use,
need only show that challenged use, if widespread, would adversely
affect a potential market for copyrighted work
Campbell v. Acuff-Rose (1994) fair use is affirmative defense; parody
is different from satire in that it comments on the original authors work
from which it must borrow (fair use)
o 1st factor inquire whether new work merely supersedes the
object/supplants the original or is transformative (adds something
new, with further purpose or different character, altering the original
with new expression, meaning, or message)
Parody is transformative and needs to reference
Satire has to justify why it referenced.
o 2nd factor some works closer to core of intended copyright
protection than others (not very helpful in parody context, since
parodies almost invariably copy expressive works)
o 3rd factor look at both quantity and quality/importance; context is
everything. Was the amount taken reasonable in relation to the
purpose of the use?
o 4th factor parody often will not affect market for original by acting
as substitute; also need to look at potential market harm to

potential derivative works (e.g. non-parody rap versions);

Substitutes are bad.
New Era Publications v. Carol Publishing (1990) first and fourth factors
most important (fair use)
o 1st factor biographies (esp. if critical) generally considered fair
use (need quotations to critique original work)
o 4th factor more likely to support fair use if works being quoted are
published; unfavorable biography not likely to harm market for
favorable/authorized biography
Nunez v. Caribbean Intl News (1st Cir. 2000) focuses mostly on first and
fourth factors (fair use)
o 1st factor good faith use of photos for a further purpose is
transformative; also, difficulty of reporting news w/o printing the
photos cuts in favor of fair use (trumps commercial use)
o 3rd factor using any less than full photo would have made picture
useless to the story
o 4th factor need to consider all potential markets (e.g. potential
market of sale of photos to newspapers); however, no evidence that
such a potential market ever existed here
Castle Rock v. Carol Publishing (2d Cir. 1998) Seinfeld Aptitude Test (not
fair use)
o 1st factor commercial aspect of use not that important; critical
inquiry is whether use is transformative (although here,
transformative value is slim to non-existent)
o 4th factor alleged infringing work here substitutes for derivative
market that original copyright holder would in general develop or
license others to develop
o Must also consider free speech and public interest considerations
(not relevant here)
Ty v. Publications Intl (7th Cir. 2002) distinction between
complementary and substitutional copying (former is fair use; latter is
not) (here, Beanie Baby collectors guide is fair use)
Bill Graham Archives v. Dorling Kindersley (2d Cir. 2006) Grateful Dead
book (fair use)
o 1st factor photos used here as historical artifacts, a purpose
separate and distinct from the original artistic and promotional
purpose; can also consider how much copyrighted work forms of
allegedly infringing work in first factor (but not third)
o 2nd factor may be of limited usefulness when use is
transformative
o 4th factor willingness to pay license fee for use of images does
not establish that such use is not fair; since use here is
transformative, no market harm due to loss of license fees

C. Technical interchange

Achieving interoperability requires copying protected elements. If

cannot examine unprotected aspects (the functional elements required
for compatibility), then less copyright protection and more fair use.
o Otherwise copyright would give a monopoly on functional.

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

o 3rd factor entire photograph needed in light of purpose of search

engine; little weight
o 4th factor although market harm usually presumed when use is for
commercial gain, this presumption does not arise when work is
transformative
Sony v. Universal (1984) in act for contributory infringement against
seller of copying equipment, copyright holder may only prevail if relief
sought affects only his programs, or unless he speaks for virtually all
copyright holders with an interest in the outcome
o Challenge to noncommercial use of copyrighted work requires
proof either that particular use is harmful or that, should it become
widespread, it would adversely affect the potential market for the
copyrighted work
o Dissent: fair use should only be recognized for productive uses
(those resulting in some added benefit to the public beyond that
produced by the first authors use).
Am. Geophysical Union v. Texaco (2d Cir. 1995) not fair use to photocopy
scientific journal articles
o 1st factor photocopying is not a transformative use; not
reasonable and customary, since there is an easy way to get
photocopy license (through Copyright Clearance Center (CCC))
o 3rd factor each article constitutes discrete original work of
authorship with independent copyright
o 4th factor no market for individual journal articles, but there is a
market for photocopy licenses
Princeton University Press v. Michigan Document Services (6th Cir. 1996)
course packs; no fair use
o Burden of proof as to market effect rests with copyright holder if
challenged use is noncommercial and alleged infringer if use is
commercial; strength of this presumption varies according to
context in which it arises (disappears where challenged use is
transformative)
Legislative history to 1976 Act incl. Classroom Guidelines (not law, but
good guidance); allows multiple copies for classroom use, provided that:
o Copying meets test of brevity (1,000 words for course packs)
o Copying meets test of spontaneity (inspiration and decision to
use the work and the moment of its use for maximum teaching
effectiveness [must be] so close in time that it would be
unreasonable to expect a timely reply to a request for permission)
o No more than nine instances of multiple copying take place during
a term, and only limited number of copies made from works of any
one author or any one collective work
o Each copy contains notice of copyright
o Copying does not substitute for purchase of books, publishers
reprints, or periodicals

o Students not charged more than actual cost of copying

A&M Records v. Napster (9th Cir. 2001) repeated and exploitative
copying may constitute commercial use, even if copies not offered for
sale; sampling (try-before-buy) remains commercial use even if some
users eventually purchase the music; lack of harm to established
market cannot deprive copyright owner of right to develop alternative
markets for work

VIII. Ordering Copyright Markets

201(d) Divisibility principle you can slice and dice copyrights any
way you see fit.
A. Modes of Transfer
204 Statute of frauds transfer of ownership requires a writing signed
by the transferor.
101 Transfer of ownership defined as any assignment, mortgage,
exclusive license, conveyance, alienation, or hypothecation of a
copyright of any of the exclusive rights of a copyright
o Does not include nonexclusive licenses.
205 Recordation and priority rules when two competing transfers
o Permissive, not mandatory to record transfer.
o But it helps in you claim to have recorded it.
Any transferee of one of the exclusive rights can sue for infringement
of that right.
If there is no writing, courts can imply a nonexclusive license if:
o 1) Licensee must request that the materials be created, so that
created on initiative of would be licensee
o 2) Creator acts on the request and delivers the work
o 3) Did the overall conduct manifest creator intent to have
recipient continue to use the work?
Objective intent from conduct
o Creator keeps copyright, but licensee gets nonexclusive license.
o AMS v. Gagnon

AMS
o
o
o

v. Gagnon (Contract Supp. 4)

Gagnon creates stuff for AMS. They paid him for it. No writing.
Court implies non exclusive license.
Better to have Gagnon with exclusive and require AMS to pay for
exclusivity with negotiation? Theyve already paid for it though.
o Software cant be work for hire. We get a lot of implied license
cases as a result.

B. Collective Works

201(c) publishers of collective works get three privileges to

reproduce and distribute the individual works that make up the
collective work
o As part of that particular collective work
o As part of a revision of that collective work
But cant revise that particular article.
To determine if something is a revision of a collective work,
the issue is whether the individual work is perceived by
user as a separate item or part of the revised work. (NYT v.
Tasini). Database not a revision. Has to look like the
original.
Keep continuity of indexing?
o As part of any later collective work in the same series.

NY Times v. Tasini (Contracts Supp. 11)

o Prospectively NY Times just will add a clause to their freelance
contracts about adding to database.
o But historically, what happens? The historical record may be
incomplete, but authors ask what happened to copyright owners
welfare?
o What happened was NY Times said Well take down all your
articles and youll be obscure or have to find someone else to
publish unless you sign your rights away for no money.

C. New Uses, Old Language

2nd Cir - Contracts should be read to include new uses if words broad
enough and foreseeable in contracting.
o Courts concerned about anti-progressive incentives for licensees
th
9 Cir - Grant should be read in light of copyright act purpose to grant
authors valuable, enforceable rights as incentive to literary production.
o More narrow reading of contract language.
More important question is for people drafting contracts thinking about
uses 40 to 50 years down the road.
o Seems like good idea to speak specifically of the 106 rights
youre including in the grant.
o Just cant tell what the new thing is 30-40 years from now.

Boosey & Hawkes v. Disney (2nd Cir) (Contracts Supp. 18)

o They paid Stravinski $6000 to use Rite of Spring for Fantasia in
1939.
o The video market comes along. Publishers wanted a cut.
o Granting clause: to record in any manner, medium, or form, and
to license the performance of the musical composition.

The music may be used in one motion picture throughout

length.
Grant limited to the use of the musical composition in
synch or timed relation with the motion picture.
o License the performance of when you distribute copies on
video cassette, youre distributing copies and people will play in
their homes. Is that a performance able to license? Its a private
performance, so no. Dont need license to do that. Thus, when it
talks about licensing performance, they were talking about movie
theater only. Not include home video.
o They lose though. Overriding reason is court concern about not
creating anti-progressive incentives.
o Home video foreseeable and the words broad enough to include.
Cohen v. Paramount
o There was a license and court says that license from 1960s to
use musical score didnt include home video and Paramount had
to go back and renegotiate.
o Grant should be read in light of copyright act purpose to grant
authors valuable, enforceable rights as incentive to literary
production.
Random House v. Rosetta (Contracts Supp. 21)
o Ebooks are they books?
o District court doesnt seem concerned about antiprogressive
incentive for licensees. They say that book publishers are in no
better position to exploit than a high tech startup.

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

agreement and theyre not owners, theyre licensees.

117 only for owners.
Wise Holistic Approach Does copyright owner have the
right to regain possession? Can still put restrictions on use
and transfer ownership.
Because if CTA wasnt an owner, then they couldnt make Vernor
an owner and only owners get 109(a) first sale. This happens
even though no privity of contract.
Court goes with Wise. Because CTA was an owner, they could
resell, despite restrictions. Just breaks contract.
Recordings v. Augusto (Contracts Supp. 41)
Bobbs-Merill says couldnt limit first sale with a note because no
privity of contract
EULA you have someone clicking I accept. Arguably have
privity of contract wit every user who clicks accept.
Consideration is buying the software. Assent is clicking
yes.
Party would then be bound by license.
But under Wise, the important thing would be if could repossess.
But that leads to formalism, the antithesis of Wise.

2. Fair Use/Reverse Engineering

If EULA restricts reverse engineer?
o This would be valid regardless of whether owner or licensee.
Hes accepted the EULA. Use can be restricted for both owners
and licensees.
Vernor: Use can be restricted by contract while the copies
are sold.
MAI: Does contract languages impose restrictions on use
and redistribution? License.
Why does this restriction carry through even though a transfer of
ownership unlike redistrib/resale?
o Because there is just a stronger presumption against alienation.
109(a) tugs at our heartstrings because we dont like restraints
on alienation.
o We dont feel the same way about fair use which is internal to
copyright
3. Covenant v. Condition
Is EULA a scope defining condition of license? Infringement damages
available.
o By accepting EULA, treated as waiver of fair use.
If only a covenant, then its breach of contract. Only contract damages
available.

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.

a. Open Source: Contracts or Licenses?

Open Source you need it to be condition (license) because otherwise
you cant get the purpose of the agreement which was to get the
binding open source ecology.
Open Source or CC works are usually downloaded free and there is no
requirement to click and accept anything. People ask Where is the
contract?
o You can respond by saying its a license, so you dont need to
require people to manifest assent. You just say You can do this
and I wont sue for infringe.
But what happens when you now want to enforce your restriction? Say
the restriction you want to enforce is a grant to copy subject to
requirement of attribution. Do we want to say this a mere license?
o When you seek to impose extra stuff beyond copyright, dont you
need to find a contract? How would you find a contract?
Ex: Share-alike thats an affirmative obligation on
someone to license their further work under the same
license. That seems contract like.
Ex: Attribution is usually not required by copyright.
The Jacobsen court says there is consideration in open source software
just because no money doesnt mean no consideration. There is
consideration to the copyright owner in the growth of reputation and
stuff.
o But thats a really odd idea of consideration.
o Furthermore, where is the assent?
E. Misuse
There is a real sense that courts are really eager to acknowledge
misuse exists, but extraordinarily reluctant to give the defendant the
benefit of the doctrine.
1) Misuse when copyright holder has engaged in some form of anticompetitive behavior.
o Ex: Leverage copyright to restrict criticism of self.
2) Public Policy approach - Misuse when Copyright owner uses
Copyright to reach beyond copyright monopoly to underlying idea.
Unduly restrictive licensing agreements.

Napster (Contracts Supp. 48)

Video Pipeline (Contracts Supp. 44)

IX. Publishing and Google Books

Basic provisions
o Massive one time payment to pay for access that has already
happened
o Model to establish book rights registry and revenue going
forward
o Two kinds of revenue based access:
Institutional users get subscription models
Consumers get access to certain content based on
advertising revenue alone. Full text access paid for on a
per work basis.
o Limited provision of free public access.
o Opt-out system for those authors who dont want to be included.
o Unclaimed works fiduciary to manage claims for orphaned works
(this is new to the revised settlement.
A. Orphaned Works
First settlement treated orphaned work owners the same as other
rightsholders.
o This is one of the big reasons for criticism.
o Publishers and others felt that you might not get adequate
protection for orphaned work authors if lumped with others
because then they arent really represented.
As a response, a new entity created within the book rights registry, but
separate = the unclaimed works fiduciary.
o Run by people who arent publishers.
o They represent/administer the rights in orphaned works
1) Repository for monies from Google to registry for access
to orphaned works. These are then available when authors
come forward.
2) They can use some proportion of money to try and
locate orphaned work owners
3) Can start to distribute money unclaimed to literacy
based charities in the countries covered by the settlement
agreement.
Orphaned Works owners lose ability to opt-out of being included. Can
only say dont want display.
B. Better settlement or legislation?
Settlement is harder to modify than legislation.

Representativeness of the class?

Fair use?
User privacy?

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)

1201(a)(2) and (b) prohibit manufacture, import, offer to public,

provide, or otherwise traffic in any technology, product, service,
device, component, or part that
o Is primarily designed for the purpose of circumvention (a)(2)
access protection measures and (b) rights protection measures
o Has only limited commercially significant purpose or use other
than to circumvent a technological measure that effectively
controls access to a work protected under this title; or
o Is marketed with knowledge for use in circumvention.
Sony Rule does not apply. Just have to hit one of the prongs.
Access protection meant to be to stop stuff like You didnt pay for this
and have gained access. But courts have understood to mean also

includes measures that prevent technical access where you have

permission to use the object and view it, but the tech scheme blocks.
o The way technical protection measures work, theyre pretty
much always both access and rights protection wrapped up in
one.
Organizations say Dont you also need to create a shelter for
manufacturing also so that people who want to make fair use but
arent themselves skilled hackers have a way to circumvention?
o The industry folks say thats too much because if you allow
trafficking in the devices, then it will be open to everyone,
including those who arent just making fair use.
Rights protection for individuals supposed to leave room for individuals
to make fair use by circumventing but between access protection
technical definition and not having technical know-how, it makes it
very difficult.
There are statutory exceptions, but theyre minor and dont allow much
sharing.
Universal City Studios v. Reimerdes (609)
o Defendant is publisher of 2600: The Hacker Quarterly. Hes
being sued for posting DeCSS that removes the CSS protection
on DVDs. Claim is that DeCSS is to make DVD compatible with
Linux.
o Access protection or rights protection? Judge says access
protection.
The way you get access to a DVD is a compliant player.
The way you get a complaint player is that the
manufacturer got a license from DVD CCA.
CSS is copy protection, but cant access without having it.
Thus, technically access protection also.
o Access meaning preventing people who have not paid for it from
not seeing it. This is not what CSS does for most users. They
pay their $15 and they get to see their movie.
o However, for access to the content it is absolutely essential that
you have a compliant player. Thats how you get technical
access even if you have physical access.
o No exception to the DMCA for fair use. If you circumvent and
then make fair use, you didnt infringe, but you did violate DMCA
circumvention. Two different causes of action.

B. 1201 outside the digital realm

Manufacturers of all sorts of things started claiming DMCA stuff.
We have two types of access:
o Ability to make use of the program

o Ability to obtain and view the copyrighted expression in the

work
CSS controlled both types of access.
o Lexmark controlled only the first kind.
o Chamberlain controls both kinds.
Chamberlain says that access must relate to protect a right of
copyright owners. 1201(a)(2) has to be tied only to conduct that
would facilitate stuff that act would otherwise protect. This is not
access in a manner that infringes.
Difference between access and use, but Congress called them one
and the same.
Chamberlain v. Skylink (Fed Cir.) (p.627)
o Garage door openers which use a rotating code. Skylink sells
a universal transmitter.
o DMCA protects access in relation to copyright infringement.
Not use. It cant be that 1201(a)(2) prevents devices that
access in a way allowed by copyright law. That would be
creating unlimited property right in the garage door machine,
not just a liability rule.
But this blurs 1201(a) and (b) If even if you show
violation of access control, have to show would facilitate
infringe rights, then it sounds a lot like 1201(b).
o Theres a difference between products that enable copying
and those that enable legitimate use of copyrighted software.
o Skylinks garage door opener imperils no rights of a copyright
owner. Its just using the copyrighted program.
o Chamberlain elements must prove for violation of 1201(a)(2):
1) Ownership of a valid copyright
2) Effectively controlled by a tech measure
3) That third parties can now access
4) Without authorization
5) In a manner that facilitates infringement of a right
protected by the act
6) Because of what defendant did (primarily produced,
limited comml use, marketed).
Lexmark v. Static (6th Cir) (p.634)
o The Lexmark Toner Program controls access to printer
program in one way it makes the program work technically
but it does not control access in another way to read the
code.
o Court holds that to effectively control access must control
access in both ways.

C. 1202 Copyright Management Information

1202 protects copyright management information and prohibits
removal.
1202(c) defines CMI broadly to incl. identifying info about author,
work, copyright owner, terms and conditions of use of work, and in
some cases the performer, writer, or director
What 1202(c) seems to give so broadly is taken away by (a) and (b).
There are mens rea requirements!
o Prohibits intentionally altering or removing CMI
o Distributing Knowing that CMI removed
o Distributing Knowing that removal or alter will induce enable or
conceal an infringement.

IQ Group v. Wiesener (Supp. 461)

o Court says they think that CMI is not just any old link. Have to be
part of an automated copyright management system.
McClatchy v. AP (Supp. 465)
o Non digital CMI is protected
Kelly v. Arriba Soft first two mens reas may have been met, but no
way for Arriba Soft to know would facilitate infringement.

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.

o Both cases the plaintiffs assert a bunch of state claims. The

court asks for each one whether its really just a creative
recasting of a copyright claim.
NBA v. Motorola (691)
o Hot News Misappropriation survives express preemption. Not
equivalent because more elements that are extra from copyright.
o Court rejects partial preemption theory. As long as the work is
part of the general subject matter of copyright, protection
extends to everything in the work, including facts, for prong one.
Contracts and EULAs not expressly preempted?
o 1) Look to the nature of the act constituting breach. If the act is
something that copyright act already prohibits, like copying, then
preempted. If not, not preempted.
Reverse engineering copying is the act, but copying
pursuant to a privilege. Not preempted because copyright
act doesnt prohibit reverse engineering.
o 2) Look to extra elements. Here there are the extra elements of
any contract consideration and assent. Not preempted.
o 3) ProCD the world is divided into two kinds of rights. Rights
against the world are property rights, rights from contracts are
just between parties, so if dont have right against the world, not
preempted.

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.

Sears and Compco (651)

o Stood for rule where universe of intellectual goods defined as
protected by patent/copyright or public domain.
o States went wrong by allowing general competition law to
prevent copying from the public domain. Only fed gov can take
stuff out of the public domain.
o States could require labeling and stuff, but cant prevent making
copies of stuff in public domain.

Goldstein v. California (653)

o Prosecution for record piracy under California law. Before federal
protection extended to sound recordings. No preemption
o Fed Law doesnt occupy the field. There were things of local
importance that just needed local protection.
Court reasoned that in the category of sound recordings
Congress had drawn no balance and thus state free to act.
o Court says no conflict because Congress hasnt considered sound
recordings and so hasnt been drawn into the copyright balance.
o Recognize that technological advance will result in new
intellectual products that are constitutionally writing. If we
immediately thrust these into federal protected or public domain,
that could be hazardous.
o Congress, although empowered to legislate at the
constitutionally ceiling and cover everything that is possible as a
constitutional Writing, it has chosen not to do so. There is gap
between statute and constitution. In that gap there is some
room for movement and states can play in there.
Kewanee (p.657)
o Involves trade secrecy some chemical company develops some
crystal catalyzers and a competitor gets a hold of them in some
way that violates trade secrecy.
o Trade secrecy still allows independent creation and reverse
engineering. It only forbids copying through some bad way. If
access by fair and honest means, youre fine.
o Patent is a barrier. Trade secret is a sieve. Its permissible.
o Thus the trade secret has not been removed from public domain.
Its just protected from bad behavior by competitors.
o Assume that this is good because keeps dubious patentability
out and real patented things will still get patent in order to get
full protection from reverse engineer and stuff.
But there are some things that havent been able to
reverse engineer.
Bonito Boats (660)

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.