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        美國版權法原文(英文版)
        • 來源:
        • 知夫子
        • 2020-03-24
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        • (5393)
        摘要:美國版權法,是指美國在1776年獨立之后,對版權已開始靠各州的法律保護。1790年,美國頒布了第一部聯邦《版權法》。

          美國版權法,是指美國在1776年獨立之后,對版權已開始靠各州的法律保護。1790年,美國頒布了第一部聯邦《版權法》。美國版權法包括文學作品;音樂作品,包括任何附帶的文字;戲劇作品,包括任何附帶的音樂;啞劇和舞蹈作品;繪畫、美術和雕塑作品;電影和其他視聽作品;錄音;和建筑作品。以下就是小知整理的美國版權法原文英文版,喜歡的朋友還可以免費下載:

          Copyright Law

          Second Edition

          Robert A. Gorman

          Kenneth W. Gemmill Professor Emeritus

          University of Pennsylvania Law School

          Federal Judicial Center

          2006

          This Federal Judicial Center publication was undertaken in furtherance of the Center’s statutory mission to develop and conduct education programs for the judicial branch. The views expressed are those of the author and not necessarily those of the Federal Judicial Center.

          Dedication

          To the Honorable Edward R. Becker—

          a distinguished jurist

          in his case opinions and in chambers, an inspiring teacher

          an innovative judicial administrator

          piano player extraordinaire

          a generous friend

          Contents

          Bibliographic Note, vii

          Chapter 1: History and Background, 1

          The Copyright Statutes, 1

          British antecedents and the 1790 Act, 1

          The Copyright Act of 1909, 2

          The Copyright Act of 1976 and its frequent amendments, 3 Copyright as an Element of Intellectual Property Law, 5

          Patents, 6

          Trademarks, 7

          Copyright and property law, 8

          Copyright Office and Judicial Review, 10

          Chapter 2: The Subject Matter of Copyright, 13

          General Principles, 13

          Original authorship, 13

          Tangible medium of expression, 18

          Categories of works, 22

          The Distinction Between Idea and Expression, 23

          Copyrightability of computer materials, 29

          Compilations and Derivative Works, 32

          Compilations, 35

          Derivative works, 40

          Pictorial, Graphic, and Sculptural Works, 42

          Useful articles, 43

          Architectural works, 47

          Works of visual art, 48

          Pictorial and Literary Characters, 50

          Government Works, 52

          Chapter 3: Duration and Renewal, 55

          The Renewal Format, 56

          Derivative works prepared during the initial term, 60

          Duration of Copyright Under the 1976 Act, 62

          Table: Duration and Renewal: The Transition from the 1909 Act to the 1976 Act, 67

          iii

          Copyright Law

          Chapter 4: Ownership of Copyright, 69

          Initial Ownership of Copyright, 69

          Joint works, 69

          Works made for hire, 72

          Collective works, 75

          Transfer of Copyright Ownership, 76

          Termination of Transfers, 80

          Chapter 5: Copyright Formalities, 85

          Formalities Under the 1909 Copyright Act, 85

          “Publication,” 86

          Copyright Notice Under the 1976 Act, 89

          “Publication,” 90

          The notice requirement, 90

          Effect of noncompliance for 1978–1989 publications, 92 Deposit and Registration, 93

          Table: Formalities Under the 1909 Act and Under the 1976 Act

          Before and After Berne Convention Implementation Act, 97

          Chapter 6: Exclusive Rights of the Copyright Owner (herein of Infringement), 99

          The Right of Reproduction, 101

          Reproduction in copies or phonorecords, 101

          Proving copying and infringement, 102

          Idea versus expression, 106

          Reproduction of Music and Sound Recordings, 110

          Reproducing musical works in phonorecords, 111

          Reproducing sound recordings in phonorecords, 114

          The Right to Prepare Derivative Works, 116

          The Right of Public Distribution, 118

          First-sale doctrine, 119

          The Right of Public Performance, 121

          Performance, 122

          Public performance, 124

          Performing rights societies, 126

          The Right of Public Display, 127

          Visual Artists’ Rights, 129

          Secondary Liability: Contributory and Vicarious Infringement, 131

          iv

          Contents

          Chapter 7: Fair Use and Other Exemptions from the Exclusive Rights of the Copyright Owner, 139

          Fair Use, 139

          Statutory uses and factors, 141

          Supreme Court fair use jurisprudence, 143

          Fair use and the creation of new works, 148

          Fair use and new technologies of copying and dissemination, 151 Exemptions and Compulsory Licenses, 156

          Library copying, 156

          First-sale doctrine and direct displays, 157

          Educational, nonprofit and other performances and displays, 157 Cable television and other retransmissions, 161

          Musical compulsory licenses: recordings and jukeboxes, 162 Sound-recording performance and digital-transmission

          rights, 164

          Other exempted uses, 165

          Chapter 8: Enforcement of Copyright, 167

          Jurisdictional and Procedural Issues, 167

          Jurisdiction, 167

          Who may sue, 170

          Registration as a prerequisite to suit, 171

          Limitations on liability: statute of limitations and sovereign

          immunity, 172

          Remedies, 175

          Technological Protection Measures, 181

          Chapter 9: State Law and Its Preemption, 185

          State Anti-Copying Laws, 185

          Federal Preemption, 187

          Glossary, 197

          Table of Cases, 203

          Index, 217

          v

          Blank pages inserted to preserve pagination when printing double-sided copies.

          Bibliographic Note

          The purpose of this monograph is to serve as an introduction to, and a starting point for research about, the law of copyright. It cannot feasi-bly be minutely detailed in its text or heavily annotated in its footnotes. Fortunately, there are a number of longer works of high quality that can be recommended to serve those latter purposes. For over forty years, the masterful multi-volume treatise, constantly cited by the courts, has been that of the late Professor Melville Nimmer: Melville & David Nimmer, Nimmer on Copyright. It has now been joined by an equally outstanding multi-volume treatise by Professor Paul Goldstein, titled simply Copyright. Both works are regularly updated. A single-volume treatise that can be recommended, and that is somewhat more detailed than this monograph, is Understanding Copyright Law (4th ed. 2005), by Marshall Leaffer.

          There are two research services that provide current updates on copyright developments and decisions. These are published by Com-merce Clearing House and by the Bureau of National Affairs (BNA Patent, Trademark & Copyright Journal). The United States Patent Quar-terly also publishes advance sheets containing decisions in the fields of patents, trademarks, and copyright. The relatively few federal district court copyright decisions that are not published in the Federal Supple-ment can usually be found in full text in either the CCH or USPQ re-ports.

          The Copyright Office website contains a wealth of information about the substance and administration of the Copyright Act (http://www.copyright.gov). One can find there not only the text of the Act (not always up-to-the-minute, however), but also pending copy-right bills, the rules and regulations promulgated by the Copyright Office, news of the activities of the Office, its very useful reports and studies, speeches and statements by the Register of Copyrights, the various application forms, informational circulars, and access to regis-tration records.

          The law journal articles written about copyright have vastly prolif-erated over the past decade, and are published in general law reviews as well as in an increasing number of specialty journals devoted to

          vii

          Copyright Law

          intellectual property or to allied fields (such as computer law and en-tertainment law).

          Throughout this monograph, the provisions of the copyright stat-ute now in effect—the Copyright Act, most of the provisions of which went into effect on January 1, 1978—are referred to by their section numbers within title 17 of the U.S. Code. Pertinent definitions from section 101 of the Act are set forth in a glossary at the end of this monograph.

          Many courts and scholars have come to regard the report of the House Committee on the Judiciary, H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. (1976), as the most comprehensive, exhaustive, and authorita-tive legislative source of the history and purposes of the Copyright Act. This monograph makes frequent reference to this significant docu-ment, which is denoted simply as “House Report.”

          Excerpts from most of the cases discussed in this book, and from the House Report, can conveniently be found in Robert Gorman & Jane Ginsburg, Copyright: Cases and Materials (7th ed. 2006). The chapters in this monograph are organized to correspond with that book.

          The coverage of this monograph is complete as of May 1, 2006.

          viii

          Chapter 1

          History and Background

          Copyright is the body of law that deals with the ownership and use of works of literature, music and art. The basic purpose of copyright is to enrich our society’s wealth of culture and information. The means for doing so is to grant exclusive rights in the exploitation and marketing of a work as an incentive to those who create it. The Founding Fathers phrased this more elegantly—and provided the constitutional source for Congress’s power to enact copyright laws—in Article I, section 8, clause 8 of the Constitution: “The 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.” This provision is both a source of and a limitation on Congress’s power to enact copyright and patent statutes.

          The Copyright Statutes

          British antecedents and the 1790 Act

          Oddly, U.S. copyright law traces its source to British censorship laws of the sixteenth century. In 1556, the King granted to the Stationers’ Com-pany, made up of the leading publishers of London, a monopoly over book publication, so as better to control the publication of seditious or heretical works. Publishers were given an exclusive and perpetual right of publication of works that passed muster with the Government and the Church (by way of the Star Chamber); there was no intention to protect or reward authors. After nearly a century and a half, licensing laws were left to expire and publishers sprang up independent of the Stationers’ Company. The Company turned to Parliament for protec-tive legislation and in 1710 the Statute of Anne was enacted. The basic philosophy and contours of that statute have dominated the U.S. law of copyright for most of our history as a nation. Its purpose was stated to be “for the Encouragement of Learning,” which was threatened by the damage done to authors and their families by unauthorized copying of their books. This purpose was to be promoted by granting to authors

          1

          Copyright Law

          an exclusive right of publication to last for 21 years for existing works and for 14 years (subject to renewal by a living author for an additional 14 years) for works published in the future. A condition of copyright was the registration of the title at Stationers’ Hall and the deposit of nine copies at official libraries.

          The Statute of Anne, and the copyright laws later adopted in the former Colonies, set the stage for the Copyright and Patent Clause of the Constitution and for the enactment by the first Congress in 1790 of the first federal statutes governing copyrights and patents. In the hand-ful of major copyright revisions over the past 200 years, Congress has gradually increased the kinds of works that are eligible for copyright and the kinds of exclusive rights afforded to the copyright owner. Con-gress has also gradually extended the period of copyright protection and reduced the significance of compliance with statutory formalities. It should be noted that Copyright protection is not limited to works of “high culture,” and that its coverage embraces such mundane works as business directories and such technologically oriented works as com-puter programs.

          The Copyright Act of 1909

          The Copyright Act that dominated the twentieth century was enacted in 1909. Inartfully drafted and lacking important definitions—and enacted before the invention or widespread commercial use of the phono-graph, motion pictures, radio and television, the photocopy machine, the computer, and a wide array of communications media including, of course, the Internet—the 1909 Act was subjected to frequent ad hoc amendment and to unguided judicial interpretation.

          A principal feature of the 1909 Act was the preservation of state copyright protection (known as common-law copyright) for unpub-lished works; once a work was published by dissemination to the pub-lic, however, either federal copyright formalities were satisfied or the work fell into the public domain. If the familiar copyright notice was placed on all copies of a published work, federal copyright protection attached, exclusively enforced in federal courts (provided the copyright owner registered the work in the Copyright Office prior to commencing suit). Such federal copyright lasted for 28 years and was subject to re-

          2

          Chapter 1: History and Background

          newal upon timely registration for an additional 28 years. The most significant exclusive rights accorded to the copyright owner under the 1909 Act were those of printing or otherwise copying, of making adap-tations or versions, of selling, and of publicly performing (for musical compositions, publicly performing for profit).

          Although the 1909 Copyright Act is no longer in effect, it does gov-ern important aspects of transactions that took place between 1909 and 1978, and many of those transactions continue to be a source of litiga-tion today. Knowledge and application of the 1909 Act will therefore continue to be pertinent to resolve disputes concerning, for example, whether a work published prior to 1978 complied with statutory for-malities or was thrust into the public domain,1 and who is the owner of copyright when claims are traced back to transfers that took place while the 1909 Act was in effect.2

          The Copyright Act of 1976 and its frequent amendments

          After a major effort in the Copyright Office and the Congress to restudy and revise the law, an effort lasting more than 15 years, U.S. copyright law was drastically overhauled in the Copyright Act of 1976, which in most pertinent respects took effect on January 1, 1978. That statute abolished common-law copyright and made federal copyright exclu-sive from the moment a work is “created,” that is, “fixed in a tangible medium of expression,” whether in published or unpublished form. Works then in the first term or the renewal term of copyright under the 1909 Act had their term of protection potentially extended to 75 years. Works created on or after January 1, 1978, or first published thereafter, were to be protected for 50 years after the death of the author, and corporate works were to be protected for 75 years after publication. If a work was published after January 1, 1978, it was still required to bear a copyright notice, but failure to use the notice would be subject to cure

          

          1. E.g., Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211 (11th Cir.

          1999); Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc.,

          944 F.2d 1446 (9th Cir. 1991).

          2. Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contempo-rary Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (work made for hire); Forward v. Thorogood, 985 F.2d 604 (1st Cir. 1993) (transfer of physical object embodying musical work).

          3

          Copyright Law

          and would not necessarily thrust the work into the public domain. Congress has since eliminated the notice requirement altogether for works published after March 1, 1989. In 1998 20 more years were added to the term of copyright for all works still under copyright protection.

          The exclusive rights accorded the copyright owner under the 1976 Act are essentially the same as those given by the 1909 Act, with the addition of the right of “public display” to take account of transmis-sions by television and computer. A host of intricately delineated ex-emptions are incorporated in the 1976 Act, so that a variety of uses of copyright-protected works may be made, without securing the authori-zation of the copyright owner, for certain nonprofit, charitable and educational purposes. The well-known doctrine of fair use, judicially devised in the middle of the nineteenth century, was expressly incorpo-rated in the text of the statute.

          In almost every year after the Copyright Act was amended in 1989 to eliminate the requirement of placing a notice on all publicly distrib-uted copies, the statute has been amended further, principally in order to take account of new technological developments or to conform to the provisions of international treaties that have come increasingly to harmonize the copyright laws throughout the world. Only the most significant amendments are noted here.

          In 1990 Congress granted to visual artists certain limited rights of attribution and integrity in the original physical copies of their works; expanded the rights of architects in their plans and buildings; and granted commercial-rental rights covering computer programs (as it had done in 1984 for musical recordings). In 1992 the Act was amended to provide for automatic renewal of the copyright terms of pre-1978 works then in their first term of copyright; and to ensure compensation to recording companies and performers in connection with the sale of digital recording machines and media (the Digital Audio Home Recording Act, which also expressly immunized home recording for noncommercial purposes). In 1994, Congress restored copyright protection to non-U.S. works from treaty-signatory nations (the Berne Convention and the World Trade Organization) if those works were still protected in their “countries of origin” but had lost their U.S. protection because they had been published here without the

          4

          Chapter 1: History and Background

          notice required under the 1909 Act or had not been timely renewed under that Act. In 1995 and again in 1998, Congress extended to sound recordings the exclusive right of digital public performance (e.g., by being played over the Internet), resulting in the copyright owner’s full rights over interactive digital transmissions and a compulsory-license regime for most other digital transmissions. In 1998, as noted above, the term of copyright protection was extended from 75 years to 95 years (for corporate works and for works still protected under the 1909 Act), and from “life plus 50” to “life plus 70” for other works created or pub-lished after January 1, 1978. In 2003 the Supreme Court sustained this “Sonny Bono Copyright Term Extension Act” against constitutional attack.3 In 1998 Congress took a significant step beyond conventional copyright in the provisions of the Digital Millennium Copyright Act that prevent the circumvention of technological protections (such as digital encryption) of copyrighted works.

          Copyright as an Element of Intellectual Property Law

          The general domain of copyright law is often misunderstood. In par-ticular, its boundaries are often confused with those of the law of pat-ents and trademarks. These three fields are commonly grouped to-gether as “intellectual property,” but they are quite different in impor-tant respects, which are summarized here.

          The purpose of copyright and patent is to provide incentives to “promote the progress of science and useful arts” and the constitu-tional source of Congress’s power to legislate is the Copyright and Pat-ent Clause. The purpose of trademark law is to prevent confusion in the commercial marketplace—and thereby to ensure accurate informa-tion and the maintenance of quality of goods and services—and the constitutional source of Congress’s power to legislate is the Commerce Clause.

          

          3. Eldred v. Ashcroft, 537 U.S. 186 (2003).

          5

          Copyright Law

          Patents

          The law of patents4 embraces the subject matter of products and proc-esses. To be eligible for protection, an invention must be useful, and novel, and—even though it might not have been known before—also “nonobvious,” that is, not reasonably anticipatable by a person versed in the current state of the pertinent art. Before a patent is issued by the Patent and Trademark Office, the invention must be determined by an examiner, after a detailed search of prior art, to satisfy these three statutory conditions. Patent protection begins only when the Office issues the patent at the end of the examining process, and the patent lasts for 20 years as measured from the date on which the patent appli-cation was initially filed.

          The exclusive right granted by the patent law is much more power-ful than that accorded by copyright, in two important respects. Copy-right infringement requires that the work of the copyright owner have been copied, so independent origination of a similar or identical work is not an infringement; but patent infringement can arise even from a later independently created invention. Copyright gives the author ex-clusive rights to copy and otherwise exploit only the pattern of expres-sion in the copyrighted work and not the underlying ideas, concepts or systems; patents protect against replication of chemical or mechanical processes as usefully embodied. For example, copyright in a book that describes a newly invented medical device will afford protection only against those who copy or closely paraphrase the author’s prose depic-tion. It will not prevent another person from manufacturing, selling, or using the medical device; only a patent can provide that protection to the inventor.

          Similarly, copyright in a computer program protects only against copying or paraphrasing the sequence of commands (whether in “source code” intelligible to humans or in “object code” which di-rectly operates the computer). It does not prevent a person from repli-cating the process that the computer program implements, provided there is no copying of the program. Thus, a computer program might be designed to run certain tests and move certain machinery compo-

          

          4. 35 U.S.C. §§ 101 et seq.

          6

          Chapter 1: History and Background

          nents in the course of producing a particular product. Copyright will prevent another from copying the program, but anyone is free—even by means of decoding the program (which has been held to be a “fair use”)—to devise another method for running those tests and moving those components, perhaps manually or perhaps by devising another computer program that does not track the commands or structure of the first program. If, however, the production process (which incorpo-rates the computer program) is one that meets the requirements of novelty and nonobviousness under the patent law, a process patent can be issued. This patent will preclude others who seek to use or to mar-ket the protected process, even by means of a computer program of altogether different configuration—and, indeed, even though the later program is independently originated.

          In sum, copyright protection is much easier to secure and lasts much longer; patent protection is more powerful in curbing competi-tors. Both patent and copyright are enforced exclusively in the federal courts.5 Appeals in patent cases are centrally channeled to the Court of Appeals for the Federal Circuit,6 whereas the appellate channels in copyright cases are the usual, geographically dispersed ones.

          Trademarks

          The law of trademark protects words or pictures that identify the source of a product or service. Under state common law, a person commits the tort of unfair competition by “passing off” its product or service as that of another through deceptive or confusing use of words or pictures in identifying, advertising or packaging. The plaintiff must prove that its “mark” (or the shape or packaging of its product) has become “distinctive,” i.e., has come to be identified by the consuming public principally with that person as the source of the product, and that the defendant’s use of a similar mark on a similar product con-fuses a significant segment of the purchasing public. State and federal law permit owners of such marks to register them in a public record;

          

          5. 28 U.S.C. § 1338(a).

          6. See generally Herbert F. Schwartz, Patent Law and Practice (3d ed. Federal Judicial Center 2001).

          7

          Copyright Law

          such registration provides constructive notice and other advantages (typically evidentiary but some substantive). Suits under the federal Trademark Act (the Lanham Act)7 are brought in federal court, whereas suits to enforce state common-law or statutory trademark rights may be brought in state courts. In either forum, the fundamental issues are the same: identification by the public of the mark with the plaintiff as the source (known as secondary meaning), and confusing use of the mark by the defendant on similar products or services.

          Trademark rights generally begin when the mark is used in com-merce (although a 1988 amendment of the Lanham Act made it possi-ble to register a mark in the Patent and Trademark Office when there is merely “intent to use,” subject to other conditions); they last so long as the mark is used and retains its secondary meaning. Some graphic works, or words in conjunction with graphic works, that function as trademarks are also eligible for copyright protection, although many are not protectible for reasons that will be discussed in the next chap-ter. The figure of Mickey Mouse is a particularly well-known example of an image that is protectible both by copyright and by trademark (as a symbol identifying Disney products and entertainment services). Copyright protection begins earlier, when a work is fixed in tangible form, and can be enforced against copiers even without proof of the plaintiff’s use in commerce or of secondary meaning and confusion. Trademark protection is available for a longer period of time (poten-tially forever) and even against persons whose confusingly similar mark has been adopted independently and without copying from the plain-tiff.

          Copyright and property law

          It is, finally, useful to draw a distinction between copyright law and the body of law that regulates the ownership of tangible personal property. Copyright is a form of “intangible” property. The subject of copy-right—the words of a poem or the notes of a song—can exist in the mind of the poet or composer, or can be communicated orally, with-out being embodied in any tangible medium. Even when thus embod-

          

          7. 15 U.S.C. §§ 1051 et seq.

          8

          Chapter 1: History and Background

          ied, it is possible for persons to recite a poem, sing a song, perform a play, or view a painting without having physical possession of the original physical embodiment of the creative work. (The painting can be viewed by means of a reproduction or a television transmission.) The Copyright Act attempts to draw a clear distinction between the literary, musical or artistic “work” that is protected against unauthor-ized exploitation in various forms, and the physical object in which that work is embodied by the author. It is possible to be the owner of one without being the owner of the other.

          Although, for example, earlier copyright statutes referred to a “book” as the focus of copyright protection, the 1976 Act makes it clear that protection is for the “literary work” (i.e., the sequence of words or symbols) regardless whether the tangible medium in which that work is embodied is a book, a magnetic audiotape or a computer disk. A sculptor may create a bronze statue and sell it to another, who may in turn keep others from touching it and can place it on the back porch or in the basement; but the buyer does not have the right, accorded by copyright, to make and sell photographs or three-dimensional replicas of the statue. Those latter rights are held initially by the sculptor (as “author” of the sculptural work, under section 201(a) of the Act) and they may be retained by the sculptor despite the transfer of ownership of the physical object to another.

          Section 202 of the Copyright Act expressly provides for the separa-tion of copyright and chattel ownership, and sets forth default rules in the event of transfers:

          Ownership of a copyright, or of any of the exclusive rights under a copy-right, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

          There is, then, a presumption that the exclusive rights that make up the copyright are not transferred when the physical object—the manu-script, the canvas, the sculpture—is transferred. To have an effective

          9

          Copyright Law

          transfer of the copyright, section 204(a) of the Copyright Act requires that there be “an instrument of conveyance, or a note or memorandum of the transfer, . . . in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” In sum, copyright is transferable intangible property, but an effective voluntary transfer requires clear and signed written evidence, and will not be inferred from an outright sale of the tangible object in which the work is fixed. All of the conventional state rules of chattel ownership are applicable with regard to that object, and are almost without exception not dis-placed by the federal Copyright Act.

          Copyright Office and Judicial Review

          Much of the work that is done in the administration of the Copyright Act is in the hands of the Copyright Office and its head, the Register of Copyrights. The Office, inter alia, handles applications for copyright registration, records transfers and other documents relating to copy-right, and issues regulations (in volume 37 of the Code of Federal Regulations) about such matters as ineligibility for copyright, setting and distributing fees under the various statutory compulsory-license provisions, and the mechanics of registration and deposit.

          Unlike most other federal administrative agencies, which are housed within the executive branch, the Copyright Office lies techni-cally within the Library of Congress and is thus an arm of the legislative branch; the Register is appointed by the Librarian of Congress. None-theless, the Office operates very much as a typical federal administra-tive agency, most clearly in its promulgation of regulations that are designed to implement the Copyright Act. Section 702 of the Act ex-pressly grants that power to the Register, and other provisions of Chap-ter 7 give the Register wide-ranging powers to run the Copyright Office and to be the voice of the U.S. Government in copyright matters.

          An important provision in the Copyright Act with respect to the federal courts is section 701(e), which provides that (with very limited exceptions) “[A]ll actions taken by the Register of Copyrights under this title are subject to the provisions of the Administrative Procedure Act of June 11, 1946 . . . .” As with respect to judicial review of admin-

          10

          Chapter 1: History and Background

          istrative agencies generally under the APA, courts give considerable deference to the regulations and other decisions and practices of the Copyright Office. Perhaps the most pertinent provision of the APA is 5 U.S.C. § 706(2)(A), which provides: “The reviewing court shall . . .

          hold unlawful and set aside agency action, findings and conclusions found to be . . . arbitrary, capricious, an abuse of discretion, or other-wise not in accordance with law . . . .”

          Thus, when the Register of Copyrights declines to register a sub-mitted work, because the material deposited does not constitute copy-rightable subject matter or because the claim is invalid for any other reason, this decision is subject to review in a federal court through application of the lenient “abuse of discretion” standard, a concession to the vast number of applications passed upon by the Copyright Of-fice.8 When, however, the Office registers a work, and the defendant in an infringement action asserts that the copyright is invalid, the courts treat this not as a direct and deferential review of the agency, but as a matter of law which is for the court to determine de novo.9 This ap-proach is buttressed by section 410(c) of the Copyright Act, which pro-vides that a registration certificate issued within five years of first publi-cation of a work (or before its publication) “shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” In other words, although the registration is helpful as an evidentiary matter in the presentation of the plaintiff’s case, it merely shifts the burden to the party challenging the validity of the copyright, an issue that then falls to the court to decide on its own.

          On a wide range of issues, particularly when the application or interpretation of Copyright Office regulations or longstanding practices is called into play, courts quite uniformly give deference to the agency. This is generally viewed as dictated by the 1984 Supreme Court deci-sion in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc.10 Under the Chevron precedent, a court is to defer to an adminis-trative agency whose interpretation of an ambivalent legislative provi-

          

          8. Atari Games Corp. v. Oman, 979 F.2d 242 (D.C. Cir. 1992).

          9. OddzOn Prods., Inc. v. Oman, 924 F.2d 346 (D.C. Cir. 1991); Coach, Inc. v. Peters,

          386 F. Supp. 2d 495 (S.D.N.Y. 2005).

          10. 467 U.S. 837 (1984).

          11

          Copyright Law

          sion is “reasonable” or “permissible.”11 Courts have, for example, in-voked this standard in affirming the Register’s definition of terms within the complex statutory provisions delineating various compul-sory licenses.12 Even before the development of the Chevron standard, the Supreme Court had made it clear that courts should give weight to the statutory interpretation given by the Copyright Office, particularly when manifested in “contemporaneous and long continued construc-tion . . . by the agency charged to administer” the Act.13

          

          11. Satellite Broad. & Commc’ns Ass’n of Am. v. Oman, 17 F.3d 344 (11th Cir. 1994) (court must defer even though Copyright Office interpretation disagrees with court’s own earlier interpretation; regulations may be struck down only if they contradict “clear meaning” or “plain language” of the Copyright Act). Cf. Bonneville Int’l Corp. v. Peters, 347 F.3d 485, 490 n.9 (3d Cir. 2003) (disagreement whether to apply Chevron deference or so-called Skidmore deference).

          12. Cablevision Sys. Dev. Co. v. Motion Picture Ass’n of Am., Inc., 836 F.2d 599 (D.C. Cir. 1988) (deference to “reasonable” agency interpretation is dictated both because of agency’s expertise in dealing with a recurrent problem and because it is proper to allow agency to import policy choices when there is a statutory ambiguity).

          13. Mazer v. Stein, 347 U.S. 201 (1954). See also De Sylva v. Ballentine, 351 U.S. 570 (1956) (dictum). See Morris v. Business Concepts, Inc., 283 F.3d 502, 505–06 (2d Cir. 2002) (agency’s “specialized experience and broader investigations and information” warrant deference, even if Chevron standard does not apply (quoting United States v. Mead Corp., 533 U.S. 218, 220 (2001))).

          12

          Chapter 2

          The Subject Matter of Copyright

          General Principles

          Copyright extends to all varieties of literary, artistic and musical works. To be eligible for copyright protection, however, such works must satisfy additional criteria, which find their source in the constitutional provision empowering Congress to enact copyright legislation. Article I, section 8, clause 8 of the Constitution gives to Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their re-spective writings and discoveries.” Not only does this provision ensure that federal copyright may not be of perpetual duration, but it also requires that the congressional grant of copyright be to “authors” for their “writings.”

          United States copyright law has therefore always required that a work manifest “original authorship” in a special sense, to be discussed below, and that it be “fixed” in some tangible form. Indeed, precisely these constitutional requirements are reflected in the language of sec-tion 102(a) of the Copyright Act of 1976: “Copyright protection sub-sists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise commu-nicated, either directly or with the aid of a machine or device.”

          Original authorship

          The constitutional terms “author” and “writing” were given very broad interpretations by the first Congress, which in the first copyright statute, enacted in 1790, granted protection to “maps, charts and books.” Those two terms were also broadly construed by the Supreme Court in two seminal, and relatively early, decisions. In Burrow-Giles Litho-graphic Co. v. Sarony,14 decided in 1884, the Court was confronted with

          

          14. 111 U.S. 53 (1884).

          13

          Copyright Law

          a constitutional challenge to Congress’s inclusion of photographs in the Copyright Act. It was argued that the photographic process was a purely mechanical one requiring no authorship and that a photograph was not a “writing” as that term was conventionally understood. The Court, however, held that an author is anyone “to whom anything owes its origin,” and that a writing is any “production” of an author that includes “all forms of writing, printing, engraving, etching, &c., by which the ideas in the mind of the author are given visible expres-sion.”15 The Court noted that the photograph in litigation—a posed portrait of Oscar Wilde—exhibited “harmonious, characteristic, and graceful” placement of its subject and, rather than a purely mechanical reproduction, was “an original work of art, the product of plaintiff’s intellectual invention, of which plaintiff is the author.”16

          Justice Holmes expanded the concept of “authorship” even further in Bleistein v. Donaldson Lithographing Co.,17 in which the Supreme Court upheld copyright in a color poster drawing of circus performers. Even if the performers had been drawn from life while actually engaged in their circus endeavors, the posters would not for that reason fall outside copyright protection any more so than would a portrait painted by Velasquez or Whistler. “The copy is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man’s alone. That something he may copyright . . . .”18 Although it was argued that the poster should be disqualified from copyright because it was a mere advertisement and not a work of “fine art” (a phrase that was then in the Copyright Act), Holmes rejected this argument in an often-cited and important passage:

          A picture is none the less a picture and none the less a subject of copyright that it is used for an advertisement. . . .

          It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illus-

          

          15. Id. at 58.

          16. Id. at 60.

          17. 188 U.S. 239 (1903).

          18. Id. at 250.

          14

          Chapter 2: The Subject Matter of Copyright

          trations, outside of the narrowest and most obvious limits. At the one ex-treme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. . . . At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Yet if they command the interest of any public, they have a commercial value—it would be bold to say that they have not an aesthetic and educational value—and the taste of any public is not to be treated with contempt.19

          These cases, and many others decided at other times by other courts, firmly establish the principle that “authorship” and “original-ity,” although requirements for copyright protection, are readily found even in commonplace works of literature, art and music. “Originality” does not require that the work represent any kind of advance over the existing state of our culture; the patent requirements of “novelty” and “nonobviousness” are completely inapt in applying the law of copy-right. In another well-known judicial passage, Learned Hand stated:

          [A]nticipation as such cannot invalidate a copyright. Borrowed the work must indeed not be, for a plagiarist is not himself pro tanto an “author”; but if by some magic a man who had never known it were to compose anew Keats’s Ode on a Grecian Urn, he would be an “author,” and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats’s.20

          Indeed, even a copy of a work in the public domain—most obvi-ously, a handmade copy of an old master painting—may be eligible for copyright protection because, as Holmes noted in Bleistein, it is inevi-table that the copyist will bring some independent personality to his or her work. Copyright will be afforded if the copy is a “distinguishable variation,” that is, if the author has contributed something more than a “merely trivial variation,” something recognizably “his own.” “Origi-nality in this context ‘means little more than a prohibition of actual

          

          19. Id. at 250–51.

          20. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936). See also Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).

          15

          Copyright Law

          copying.’ No matter how poor artistically the ‘author’s’ addition, it is enough if it be his own.”21

          The principal source of legislative history for the 1976 Copyright Act, House Report No. 94-1476 (1976)—hereinafter referred to simply as the House Report—endorsed the expansive definition of the earlier cases. In discussing the phrase “original works of authorship” as it appears in section 102 of the Act, the House Report states that this undefined phrase “is intended to incorporate without change the stan-dard of originality established by the courts under the present [1909] copyright statute. This standard does not include requirements of nov-elty, ingenuity, or esthetic merit, and there is no intention to enlarge the standard of copyright protection to require them.”22

          Despite this broad disclaimer, the Supreme Court has made ex-plicit what was perhaps to be inferred from the earlier jurisprudence: that, in addition to the requirement of noncopying, there is a require-ment that a work show some modicum of creativity before it is eligible for copyright protection. This latter requirement was delineated and applied by the Supreme Court in its very significant decision in 1991 in Feist Publications, Inc. v. Rural Telephone Service Co.23 The issue there was whether a telephone company could claim a valid copyright in a white-page directory that listed names (accompanied by telephone number and town) in alphabetical order. The Court stated:

          Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.

          . . . To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade

          quite easily, as they possess some creative spark, “no matter how crude, humble or obvious” it might be.24

          The Court concluded that even though the plaintiff had engaged in useful efforts, and did not copy its directory from others, “[t]he end

          

          21. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951) (quoting Hoague-Sprague Corp. v. Frank C. Meyer, Inc., 31 F.2d 583, 586 (E.D.N.Y. 1929)).

          22. H.R. Rep. No. 94-1476, at 51 (1976).

          23. 499 U.S. 340, 346 (1991).

          24. Id. at 345 (emphasis added).

          16

          Chapter 2: The Subject Matter of Copyright

          product is a garden-variety white pages directory, devoid of even the slightest trace of creativity.”25 Alphabetical sequencing was found to be “time-honored,” “commonplace,” and indeed “practically inevita-ble.”26

          The requirement that a work, to manifest originality, must show some modicum of creativity, has been long reflected in regulations promulgated by the Copyright Office. 37 C.F.R. § 202.1(a) states:

          The following are examples of works not subject to copyright and appli-cations for registration of such works cannot be entertained: . . . Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or col-oring; mere listing of ingredients or contents.

          Short phrases and commonplace designs are thought to lack minimal creativity, or are likely to have been copied from others, or are too useful as literary or artistic “building blocks” for other works, so that they should be left free for others to use as well, without undue con-cern for inviting possible litigation.

          Not surprisingly, the decided cases manifest some difference of view as to whether the copyright claimant has manifested a “modicum of creativity” or whether the allegedly infringed materials are too short, familiar or commonplace.27 The more a phrase is generic or descrip-tive, or the more it gives instructions to accomplish a functional objec-tive, the more that courts are inclined not to permit copyright to inter-fere with others seeking to make practical use of the language. Courts have thus refused to extend copyright to such phrases as “apply hook to wall”28 and “priority message: contents require immediate atten-

          

          25. Id. at 362.

          26. Id. at 363.

          27. Compare Tin Pan Apple Inc. v. Miller Brewing Co., 30 U.S.P.Q.2d 1791 (S.D.N.Y. 1994) (“Hugga-Hugga” and “Brr” are “more complex than [a] single drum beat and . . . in that complexity lies, arguably at least, the fruit of creativity”), with Perma Greetings Inc. v. Russ Berrie & Co., 598 F. Supp. 445 (E.D. Mo. 1984) (“along the way take time to smell the flowers” not copyrightable).

          28. E.H. Tate Co. v. Jiffy Enters., Inc., 16 F.R.D. 571 (E.D. Pa. 1954). But see Abli Inc. v. Standard Brands Paint Co., 323 F. Supp. 1400 (C.D. Cal. 1970) (label with instructive phrases held copyrightable).

          17

          Copyright Law

          tion”;29 and so too for a propped-up cardboard star with a large circle in the middle intended for use as a picture frame.30 But many courts (perhaps with the admonition of Justice Holmes in mind) are reluctant, at least in the case of graphic works—and now, computerized audio-visual works—to find particular ones too trivial for protection.31

          Tangible medium of expression

          As already noted, the additional requirement in section 102 of the Copyright Act of 1976—that works to be protectible by copyright must be “fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or other-wise communicated, either directly or with the aid of a machine or device”—is derived from the constitutional requirement that Congress protect “writings,” as that word has been liberally construed. Only rarely has the vast enlargement of the word “writings” been questioned. Justice Douglas did so, in a 1954 concurring opinion,32 in which he stated that it was not obvious to him that “statuettes, book ends, clocks, lamps, door knockers, candlesticks, inkstands, chandeliers, piggy banks, sundials, salt and pepper shakers, fish bowls, casseroles, and ash trays,” all of which had been registered for copyright in the Copyright Office, are “writings” in the constitutional sense.33 Despite Justice Douglas’s doubts, there is no question that today these objects would be eligible matter for copyright protection, subject to certain limita-tions on the protectibility of shapes of useful articles.34 Moreover, the

          

          29. Magic Mktg. v. Mailing Servs., 634 F. Supp. 769 (W.D. Pa. 1986).

          30. Bailie v. Fisher, 258 F.2d 425 (D.C. Cir. 1958).

          31. See Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133 (2d Cir. 2004) (basic features of doll’s face); Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989) (remand to Register of Copyrights, who had refused to register video game with simple artwork); Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir. 1957) (upholding copyright in drawing of cakes on packages). But see John Muller & Co. v. N.Y. Arrows Soccer Team, 802 F.2d 989 (8th Cir. 1986) (soccer team logo, of arrows-within-arrows, lacking in original authorship).

          32. Mazer v. Stein, 347 U.S. 201 (1954).

          33. Id. at 221 (Douglas, J., concurring).

          34. See infra pages 43–47.

          18

          Chapter 2: The Subject Matter of Copyright

          Copyright Act has since been amended so as to embrace within copy-rightable subject matter such “writings” as architectural works, com-puter programs (even though intended to communicate only with a computer), and sound recordings (even though intended to communi-cate only to the human ear).

          The statutory requirement that a work be “fixed” is of great significance for the application of the statute within our federal system. Federal copyright attaches immediately upon a work’s “creation,” i.e., when it is “fixed” for the first time, with the authority of the author, in a form that is “sufficiently permanent or stable to permit it to be per-ceived, reproduced, or otherwise communicated for a period of more than transitory duration.”35 Before a work is “fixed,” states may grant the author protection against copying under their own statutory or common-law rules; an example would be an improvised comedic per-formance—or a “live” interview—being secretly taped by a member of the audience. But if, say, the comedic author has reduced his or her routine to writing, or captured it on an audiotape, the illicit recorder in the audience may be pursued only under the federal Copyright Act and only in a federal court.36

          The statute contemplates that a work may be fixed either in a “copy” or a “phonorecord.” The latter is defined in section 101 as a material object in which sounds (other than a motion picture sound-track) are fixed and from which they can then be communicated, either directly or with the aid of a machine. Examples of a “phonorecord” are a 33-rpm vinyl disk, an audiotape, a compact disk or a computer hard-drive on which music has been recorded. A “copy” is a material object (other than a phonorecord) in which a work is fixed and from which it can be communicated. In general, a copy communicates a work to the eye, while a phonorecord communicates a work to the ear. In various situations under the statute, the distinction will matter; but fixation in either kind of tangible object is sufficient to bring a work under the federal statute.

          Although the point of “creation” or “fixation” is ordinarily the focal point for dividing federal and state power to bar unauthorized

          

          35. Definitions of “created” and “fixed” in 17 U.S.C. § 101.

          36. 17 U.S.C. § 301.

          19

          Copyright Law

          copying, there is one significant exception. In 1994 Congress— implementing the treaty known as the Agreement on Trade Related Aspects of Intellectual Property (TRIPs)—enacted section 1101 of the Copyright Act, which protects against unauthorized fixing or broad-casting of “the sounds or sounds and images of a live musical perform-ance” (what has come to be known as “bootleg” recordings or broad-casts). Despite the protection being extended to “unfixed” perform-ances (of a musical and not a dramatic nature), and despite the lack of any express time limitation upon the enforcement of the provision, it has been upheld as an exercise of Congress’s Interstate Commerce power rather than its power under the Copyright Clause of the Consti-tution.37 A contentious debate continues as to whether Congress may avoid the limitations expressly set forth in the latter constitutional pro-vision by anchoring its powers instead under the Interstate Commerce Clause. In any event, section 1101(d) provides that state common-law or statutory rights and remedies directed against such “bootlegging” of live musical performances are not meant to be annulled.

          Under the definition of “fixed” in section 101 of the Act, a radio or television broadcast simultaneously recorded by the broadcaster is “fixed” and thus within the coverage of the Copyright Act. For exam-ple, a television program of a professional sports event—which em-bodies original authorship in its camera-work and its selection of which camera images to display to the home viewer—falls within the federal Act by virtue of its taping simultaneously with its “live” trans-mission. Unauthorized recording or public performance of such a broadcast by others may thus constitute a federal copyright infringe-ment.

          The most significant issues arising in recent years regarding the “fixed in any tangible medium of expression” requirement have con-cerned new technologies. In the 1980s, a number of cases addressed challenges to the “fixed” nature of video games, typically as on view in game arcades but also as played on game consoles for home viewing. Defendants argued that the constantly changing images on the video

          

          37. United States v. Moghadam, 175 F.3d 1269 (11th Cir. 1999); Kiss Catalog, Ltd. v.

          Passport Int’l Prods., Inc., 405 F. Supp. 2d 1169 (C.D. Cal. 2005). Contra United States v.

          Martignon, 346 F. Supp. 2d 413 (S.D.N.Y. 2004) (appeal pending).

          20

          Chapter 2: The Subject Matter of Copyright

          game screen, subject to seemingly endless varieties of manipulation by the human user, rendered them “unfixed” and therefore freely subject to copying under federal law. The courts, however, consistently held to the contrary. As one court found, “[T]here is always a repetitive se-quence of a substantial portion of the sights and sounds of the game, and many aspects of the display remain constant from game to game regardless of how the player operates the controls.”38

          More significantly, courts also rejected the argument that the pro-gram that creates screen displays (an application program) or that di-rectly operates a computer (an operating-system program) is ineligible for copyright protection because it is embodied in a disk or in com-puter hardware that cannot be directly deciphered by a human. As to video games, it was held that “The printed circuit boards are tangible objects from which the audiovisual works may be perceived for a pe-riod of time more than transitory. The fact that the audiovisual works cannot be viewed without a machine does not mean the works are not fixed.”39

          It was a natural step, but an important one, to hold that computer programs more generally—whether application programs or operating-system programs—are “literary works” (works “expressed in words, numbers, or other verbal or numerical symbols or indicia”) that are eligible for federal copyright protection once they are “fixed” in com-puter hardware, such as semiconductor chips.40 The fact that some such programs are designed to interact with the computer and not directly to generate human-readable screen displays does not negate compliance with either the “original authorship” requirement or the “fixed in a tangible medium” requirement of section 102(a) of the Act.

          A question that remained after the decisions in the 1980s regarding the storage of computer programs within hardware components was whether a work becomes protected by federal copyright when it is en-tered into a computer’s temporary memory, or random access memory (RAM), which is lost when the computer is shut down. A passage in the

          

          38. Williams Elecs., Inc. v. Artic Int’l, Inc., 685 F.2d 870 (3d Cir. 1982).

          39. Midway Mfg. Co. v. Dirkschneider, 543 F. Supp. 466 (D. Neb. 1981). See also Stern Elecs., Inc. v. Kaufman, 669 F.2d 852 (2d Cir. 1982).

          40. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983).

          21

          Copyright Law

          1976 House Report had stated that there was no “fixation” when there was an “evanescent or transient reproduction” on a television tube or in the “memory” of a computer. But more thoroughly explicated pas-sages in the report of the congressionally created Commission on New Technological Uses of Copyrighted Works (CONTU) led to a 1980 amendment of section 117 of the Copyright Act which manifested an intention to treat such a temporary reproduction of a computer pro-gram, as is done simply by turning on the computer, as the making of a “copy” (section 117(a)(1)); and a further amendment of that section in 1998 did the same (section 117(c)). (Those amendments accorded ex-emptions for such copying when unauthorized, if for the expected use of purchased programs or in connection with the “maintenance or repair” of the computer.) Courts, too, have equated temporary storage of a digitally expressed work with the creation of fixed copies. Several decisions concerning liability for communication of works over digital networks have held not only that the storage of works on a webpage produces a “copy” residing on the server that hosts the webpage, but that making the work available to users to download from the webpage is a distribution of copies to the users’ computers.41 It would follow that when, instead, the transient copy is made by the copyright owner, there is a “fixing” of the work that brings it within the reach of federal copyright.

          Categories of works

          After setting forth the requirements of original authorship and fixation in a tangible medium, section 102(a) as originally enacted in 1976 goes on to itemize a number of subject-matter categories for works of authorship, which “shall include” literary works, musical works, dra-matic works, pantomimes and choreographic works, PGS (pictorial, graphic, and sculptural) works, motion pictures and other audiovisual works, and sound recordings. “Architectural works” were added in 1990. Most of these categories of works are defined in section 101. Al-though Congress did not intend these listed categories to exhaust its

          

          41. E.g., Playboy Enters. Inc. v. Sanfilippo, 46 U.S.P.Q.2d 1350 (S.D. Cal. 1998); Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997).

          22

          Chapter 2: The Subject Matter of Copyright

          constitutional power to accord copyright protection, it appears that every litigated claim of copyright protection has been with respect to a work that fits comfortably within the itemized categories, and it is difficult to think of a creative fixed work that does not.

          The statutory categories are very broadly defined. “Literary works,” for example, are defined as “works, other than audiovisual works, ex-pressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.” The House Report makes it clear that by using the term “literary,” Congress did not intend to import any re-quirement of “literary merit or qualitative value,” and that the term includes such works as catalogues, directories, and other compilations of data, and that computer programs and databases are embraced within the subject matter of section 102.42 Finally, it should be noted once again that the definition of “literary works” makes a sharp distinc-tion between the work itself and the variety of physical forms in which it can be manifested; copyright protects only the former, while the physical object can be protected under state personal property law (which is distinct from and not preempted by the rights accorded un-der the federal act).

          The Distinction Between Idea and Expression

          Copyright protects against the unauthorized copying of an author’s “expression,” i.e., the particular pattern of words, lines and colors, or musical notes, and not against the copying of an underlying idea. This is a principal way in which copyright “promotes the progress of science and useful arts,” as contemplated by the Constitution, and is also a principal way in which the scope of copyright protection differs from that of patent protection. Although securing a copyright is easy—all that need be done is to “fix” an uncopied work embodying a “modi-cum” of creativity—and although copyright lasts much longer than a patent, the scope of copyright protection is much “thinner” because it

          

          42. H.R. Rep. No. 94-1476, at 54 (1976).

          23

          Copyright Law

          is limited to the expression. Although copyright protects against more than literal copying, and also bars paraphrase, abridgment and other “derivative works,” it does not afford an exclusive right to ideas, meth-ods, facts and the like, no matter how startling the discovery or ardu-ous the effort.

          The major judicial pronouncement of this principle can be found in Baker v. Selden,43 decided by the Supreme Court in 1879. There, Selden wrote a book describing a new system of bookkeeping, to which he appended certain forms, with various columns and headings, em-bodying his system. Baker copied the forms with minor changes. Selden claimed that Baker’s forms infringed his copyright; he con-tended that anyone using his bookkeeping system would have to use forms substantially similar to his. The Court framed the issue for deci-sion as “whether the exclusive property in a system of book-keeping can be claimed, under the law of copyright, by means of a book in which that system is explained.”44 It held that copyright in a work that describes a practical method, system or process does not prevent oth-ers from putting that method, system or process into use; to secure such exclusive rights, the inventor must satisfy the more exacting re-quirements of the patent law.

          To give to the author of the book an exclusive property in the art de-scribed therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters patent, not of copyright. . . .

          . . . He may copyright his book, if he pleases; but that only secures to him the exclusive right of printing and publishing his book.45

          The Court went on to hold that if it was necessary for Baker to copy Selden’s forms in order to make use of the latter’s unpatented account-ing system, then such copying would not be a copyright infringement.

          [W]here the art [that a work] teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are simi-lar to them, such methods and diagrams are to be considered as necessary

          

          43. 101 U.S. 99 (1879).

          44. Id. at 101.

          45. Id. at 102–03.

          24

          Chapter 2: The Subject Matter of Copyright

          incidents to the art, and given therewith to the public; not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application.

          . . .

          . . . [The bookkeeping system] was not patented, and is open and free

          to the use of the public. And, of course, in using the art, the ruled lines and headings of accounts must necessarily be used as incident to it.46

          Despite the Supreme Court’s suggestion that the forms appended to Selden’s book were subject to copyright and could be infringed by persons copying the forms for “explanatory” purposes rather than for “use,” the Court somewhat confusingly concluded its decision by stat-ing: “The conclusion to which we have come is, that blank account-books are not the subject of copyright.”47

          Baker therefore stands for at least three important propositions in copyright law: (1) Copyright in a work does not cover ideas, concepts and systems described therein, but only the form of expression in which they are communicated; (2) if in order to duplicate or put into use an unprotected idea, concept, or system, it is necessary substan-tially to copy another’s otherwise copyrightable expression, such copy-ing is not an infringement; and (3) blank forms—i.e., forms used for the recording of information rather than for explanation—are not eli-gible for copyright.

          The first of these propositions, the most important, is now embod-ied in section 102(b) of the Copyright Act: “In no case does copyright protection for an original work of authorship extend to any idea, pro-cedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” In the words of the House Report, section 102(b) “in no way enlarges or contracts the scope of copyright protection” under prior law; its purpose “is to restate . . .

          that the basic dichotomy between expression and idea remains un-changed.”48

          

          46. Id. at 103–04.

          47. Id. at 105.

          48. H.R. Rep. No. 94-1476, at 57 (1976).

          25

          Copyright Law

          Apart from leaving in the public domain unpatentable or unpat-ented processes and systems, perhaps the most important impact of the idea–expression dichotomy is in the field of fictional literature. Copy-right protects against the unauthorized copying or paraphrasing of a short story, novel or drama; it also bars other unauthorized “derivative works,” such as abridgments and translations; and it even protects the author against the copying of a detailed story line, with its plot inci-dents and sequences, even though the copyist uses altogether different language for description and dialogue.49 But copyright protection does not bar another from copying the more general patterns, themes or story ideas, or character prototypes.50 Where the line is drawn in fictional works—and indeed in all works, including music and art— between protected expression and unprotected idea is not subject to a litmus test. As Learned Hand said: “Obviously, no principle can be stated as to when an imitator has gone beyond copying the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore inevitably be ad hoc.”51

          It is also generally acknowledged that the determination of how generously to mark off protectible “expression” will depend on the nature of the work, for example, whether the work is fictional or fanci-ful, on the one hand, or is factual or functional, on the other. Too generous a characterization of material in the latter works as protecti-ble expression runs a greater risk of interfering with the statutory policy favoring free access to discoveries, methods, systems and the like.

          The second principle extracted from Baker is that even normally protectible material in a copyright-protected work may be freely re-produced when that is necessary in order to use the underlying unpro-tected system. It is often said in these cases, in which there are limited expressive options, that there is a “merger” between idea and expres-sion, and that the latter becomes unprotected as well. Courts analyze these “merger” situations in at least two different ways: one leads to the

          

          49. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936).

          50. Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930).

          51. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). See generally Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005). Application of the idea–expression distinction is discussed infra Chapter 6 (at pages 106–10).

          26

          Chapter 2: The Subject Matter of Copyright

          conclusion that the work, although copyrightable, is rarely susceptible to infringement; the other denies copyrightability altogether.

          The former approach is exemplified in Continental Casualty Co. v. Beardsley,52 in which the claim of copyright was in the text of a set of legal and business documents—a bond that had been drafted so as to cover the replacement of lost securities, along with an affidavit, a con-tract form, and a form of letter and board resolutions. The Court of Appeals for the Second Circuit held that the language of the forms was copyrightable because the forms were not blank as in Baker; but the court also held that because use of the forms necessitated copying them essentially verbatim, such copying would be permitted in order that the underlying business and legal “system” not be monopolized by way of copyright. The court thus granted a “thin” level of copyright protection:

          [The pertinent court decisions] indicate that in the fields of insurance and commerce the use of specific language in forms and documents may be so essential to accomplish a desired result and so integrated with the use of a legal or commercial conception that the proper standard of infringement is one which will protect as far as possible the copyrighted language and yet allow free use of the thought beneath the language. The evidence here shows that [the copyist] in so far as it has used the language of [the copy-righted] forms has done so only as incidental to its use of the underlying idea.53

          A different and well-known formulation of the “merger” doctrine is found in the case of Morrissey v. Procter & Gamble Co.,54 where the Court of Appeals for the First Circuit held certain rules of a “sweep-stakes” promotional contest uncopyrightable. The court found that there were only a limited number of ways that a person could vary the statement of the contest rules while making allowable use of the unpro-tected contest format. It stated:

          When the uncopyrightable subject matter is very narrow, so that “the topic necessarily requires,” if not only one form of expression, at best

          

          52. 253 F.2d 702 (2d Cir. 1958).

          53. Id. at 706.

          54. 379 F.2d 675 (1st Cir. 1967).

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          Copyright Law

          only a limited number, to permit copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could exhaust all possi-bilities of future use of the substance.55

          The principle that copyright should not be extended even to “expres-sion” when there is a finite range of ways to express an underlying sub-ject matter has also been employed in the field of art, where it has been held that a piece of jewelry in the shape of a bee with small jewels ar-rayed on its surface reflected an unprotectible “idea.”56

          Closely related to the distinction between protectible expression and unprotectible idea is the distinction between expression and fact. A fact, or a group of facts, no matter how significant or how arduous the effort of discovery, cannot be protected by copyright against use, du-plication or communication by others.57 That facts are unprotectible is supported in part by the exclusion of any “discovery” from copy-rightable subject matter by virtue of section 102(b) of the Copyright Act of 1976, and in part by the observation that no person can be said to be the “original author” of a fact which he or she uncovers. Thus, the facts—and even speculations as to facts—that are unearthed by an historian or biographer can be reiterated by a copyist, provided the latter uses his or her own expressive language to do so.58 Although many courts both under the 1909 and 1976 Acts appeared to sustain copyright in factual research, and in data embodied in compilations, on the basis of “sweat of the brow”—the time, effort and expense in-vested in unearthing information—this approach has been unequivo-cally rejected by the Supreme Court. In Feist Publications, Inc. v. Rural Telephone Service Co.,59 decided in 1991, the Court referred to the “fact/expression dichotomy” and stated:

          

          55. Id. at 678.

          56. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971). See Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005).

          57. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). The principal excep-tion to this proposition is when the facts are selected, coordinated, or organized in an “original” manner. The issue of “compilation copyright” is discussed infra pages 32–40.

          58. Miller v. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir. 1981); Hoehling v.

          Universal City Studios, Inc., 618 F.2d 972 (2d Cir. 1980).

          59. 499 U.S. 340 (1991).

          28

          Chapter 2: The Subject Matter of Copyright

          Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another’s publication to aid in preparing a com-peting work, so long as the competing work does not feature the same se-lection and arrangement. . . . Facts, whether alone or as part of a compila-tion, are not original and therefore may not be copyrighted.60

          The final “offspring” of Baker to be discussed is its holding that “blank forms” are not copyrightable. This is reflected in the text of section 202.1(c) of the Copyright Office Regulations:

          The following are examples of works not subject to copyright and appli-cations for registration of such works cannot be entertained: . . . blank forms, such as time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like, which are designed for recording information and do not in themselves convey information.

          The rationale for excluding protection for blank forms is partly that the forms are intentionally designed to be put into use in the course of implementing an unprotectible system. Moreover, a blank form with little or no writing might be thought to lack “original authorship” as required of all copyrightable works. Not surprisingly, courts have dis-agreed as to whether forms containing various degrees of text and graphic design should or should not be treated as “blank” and there-fore unprotectible under Baker and regulation 202.1.61

          Copyrightability of computer materials

          The idea–expression dichotomy—articulated by the Supreme Court in Baker v. Selden and by Congress in section 102(b) of the Copyright Act—and other copyright doctrines frequently applied to conventional literary and graphic works have also been applied by the courts in rul-ing upon the copyrightability of computer materials. Courts dealing with computer programs and screen displays have attempted to protect

          

          60. Id. at 349–50.

          61. See Bibbero Sys. v. Colwell Sys., Inc., 893 F.2d 1104 (9th Cir. 1990). Cf. ABR Benefits Servs. Inc. v. NCO Group, 52 U.S.P.Q.2d 1119 (E.D. Pa. 1999) (applying Third Circuit’s view that “blank forms may be copyrighted if they are sufficiently innovative that their arrangement of information is itself informative”).

          29

          Copyright Law

          expressive authorship without interfering with wide access to computer features that are either functionally dictated or are at a level of abstrac-tion warranting treatment as an “idea.”

          A computer program is defined in section 101 of the Act as “a set of statements or instructions to be used directly or indirectly in a com-puter in order to bring about a certain result” and is thus one form of “literary work” within the coverage of section 102(a). Whether ex-pressed in so-called “source code” (written and read by a human be-ing) or “object code” (the string of ones and zeroes meant to operate the circuitry of a computer), a computer program may embody suffi-cient creativity as to justify copyright. This was the intention of the Congress in 1980 when it amended the Copyright Act so as, among other things, to include the above-quoted definition, and in later amendments to the statute allowing certain copying of computer pro-grams but only in narrowly defined circumstances.62 The federal courts of appeals have consistently held that a computer program—the se-quence of instructions, not unlike an instructional manual written for humans—is copyrightable.63

          Baker, however, teaches that copyright protection for computer programs and related materials should be accorded with an eye toward allowing the use of the program’s underlying principles. There is in-deed an obvious facial tension between the definition of a computer program, intended to fall within the subject matter of copyright, and the mandate of section 102(b) that “methods of operation” shall not be given copyright protection. In any event, the House Report makes clear that copyright does not extend protection to the “methodology or processes adopted by the programmer.”64 And, by application of the “merger” doctrine espoused in Baker, if the detailed sequence of in-structions in a copyrighted computer program is essentially necessary to implement such an unprotected methodology or process in an effi-

          

          62. See 17 U.S.C. §§ 117(a), (c).

          63. Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992); Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992). Perhaps the most illuminating discus-sion is to be found in the decision of the Court of Appeals for the Third Circuit in Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983).

          64. H.R. Rep. No. 94-1476, at 57 (1976).

          30

          Chapter 2: The Subject Matter of Copyright

          cient fashion, then the program may lawfully be copied by others in the design of other programs.65 On the other hand, “if other programs can be written or created which perform the same function as an Ap-ple’s operating system program, then that [Apple] program is an ex-pression of the idea and hence copyrightable.”66

          Courts have applied this analysis so as to protect not only detailed computer-program language but also what have come to be referred to as the “nonliteral” elements of computer programs. By this is meant the structural features of a program that lie somewhere between the detailed commands of the program code and an abstract statement of the functional purpose of the program. This is based on the jurispru-dence that, in conventional literary works such as novels and plays, treats the detailed story line and incidents as protectible “expression” and the more general themes as unprotectible “ideas.” The task of drawing the line between idea and expression in literary works of all kinds, including computer programs, is a demanding and somewhat unguided one.67

          The idea–expression dichotomy also applies with respect to com-puter screen displays, and the same principles of “merger” or “con-straints” are utilized. If the colorful action scenes depicted on a screen in connection with a video game are essentially dictated by the subject matter—e.g., the appearance of a baseball diamond or football field or racetrack—courts will not protect these elements against copying, given the limited number of ways they can be visually expressed.68 In assess-ing copyrightability, the court must, however, consider the totality of

          

          65. Perhaps the most thorough and influential treatment of the nonprotection of “ideas” embodied in computer programs, and the application of the merger doctrine in this context, is in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992).

          66. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir.

          1983).

          67. See infra Chapter 6, Infringement.

          68. Data E. USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988) (karate video game); Frybarger v. IBM Corp., 812 F.2d 525 (9th Cir. 1987) (mousetrap video game) (expression that is “indispensable” or “standard” is protectible only against “virtually identical copy-ing”). These cases invoke the scènes à faire doctrine typically applied in literary infringe-ment cases involving novels, plays and films.

          31

          Copyright Law

          the visual elements and not simply the discrete components (which might on their own be too “simple” to be protected).69

          There is less consensus about how best to apply the idea– expression dichotomy in cases involving the copyrightability of so-called “user interface,” which is the set of commands given by a hu-man user to a computer by striking certain keys or clicking on a screen image. For any given computer program, such as an accounting spreadsheet or a tax calculator, the commands meant to be chosen by the user may number in the hundreds, and they may be grouped or clustered under dozens of headings and subheadings; thus is formed a “menu command hierarchy” or “tree.” This interface is to be distin-guished from the internal operations of the computer (protectible if at all by patent), the program that brings about those operations, and the screen display (the graphic presentation of the command tree on the computer monitor). Some courts have concluded that these com-mands, even viewed as a composite and not as individual words and keystrokes, are necessary to bring about the computer’s functioning and are thus a “method of operation” falling outside the scope of copyright protection by virtue of section 102(b).70 Other courts have concluded that, so long as these commands can be expressed and grouped together in a variety of different ways, then the way chosen by the plaintiff is “expression” and not an uncopyrightable idea or method of operation.71

          Compilations and Derivative Works

          In many kinds of copyrightable works, the authorship takes the form of “originality” in the expression of preexisting materials. An anthologist may collect and sequence poems written by others. A scholar may

          

          69. Atari Games Corp. v. Oman, 979 F.2d 242 (D.C. Cir. 1992).

          70. Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided Court, 516 U.S. 233 (1996); Mitek Holdings, Inc. v. ArcE Eng’g Co., 89 F.3d 1548 (11th Cir. 1996).

          71. Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997). See also the cases upholding copyright in a detailed subject-matter taxonomy, e.g., American Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977 (7th Cir. 1997).

          32

          Chapter 2: The Subject Matter of Copyright

          translate another’s play from French to English. A cataloguer may pre-pare a directory by gathering and organizing information about indi-viduals or businesses. If there is original authorship manifested in the anthology, the translation, and the directory, these works are eligible for copyright protection—but only to the extent of the copyright claimant’s original contributions. If the underlying poems and play are in the public domain, as are the facts in the directory, they remain in the public domain for others to copy and base their works on. If the underlying poems and play are still in copyright, their use by the an-thologist and the translator does not alter the duration or ownership of that copyright.72

          The anthology and the directory are examples of what the Copy-right Act refers to as a “compilation.” A compilation as defined in sec-tion 101 is “a work formed by the collection and assembling of preex-isting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” The translation is an example of what is defined in section 101 as a “derivative work”:

          A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduc-tion, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revi-sions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work.”

          The relationship and differences between compilations and deriva-tive works are well described in the House Report:

          Between them the terms “compilations” and “derivative works” which are defined in section 101, comprehend every copyrightable work that employs preexisting material or data of any kind. There is necessarily some overlapping between the two, but they basically represent different concepts. A “compilation” results from a process of selecting, bringing together, organizing, and arranging previously existing material of all kinds, regardless of whether the individual items in the material have

          

          72. 17 U.S.C. § 103(b).

          33

          Copyright Law

          been or ever could have been subject to copyright. A “derivative work,” on the other hand, requires a process of recasting, transforming, or adapt-ing “one or more preexisting works”; the “preexisting work” must come within the general subject matter of copyright set forth in section 102, re-gardless of whether it is or was ever copyrighted.73

          Because copyright protection turns upon original creation, copy-right in a compilation or derivative work attaches—as noted just above—only to those original contributions made by the compiler or by the creator of the derivative work. Section 103(b) of the Copyright Act provides:

          The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, owner-ship, or subsistence of, any copyright protection in the preexisting mate-rial.

          A motion picture based on a classic novel will not remove the novel from the public domain; nor will it prevent another motion picture producer from basing a new film on the same novel, although the sec-ond filmmaker will be barred from copying original elements from the first film (most obviously, for example, music on the soundtrack).

          Another important principle is set forth in section 103(a), which provides, in pertinent part: “[P]rotection for a work employing preex-isting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.” Thus, an unauthorized translation of a copyrighted novel will infringe the exclusive right of the novelist to make derivative works, under section 106(2); such unlawful use, which permeates the derivative translation, will render it uncopyrightable. If, however, the unauthorized use of the copyrighted novel were to take the form of, for example, a drama with music, it is likely that the music would be copyrightable, because it would not make unlawful use of the protected material in the novel. In the former example, the translator might well complain that, even

          

          73. H.R. Rep. No. 94-1476, at 57 (1976).

          34

          Chapter 2: The Subject Matter of Copyright

          though he might be an infringer, that fact does not justify denying him a claim against another who makes an unauthorized copy of his trans-lation; Congress, however, has rejected that contention and has stripped the infringer of a copyright claim in his infringing material, no matter how creative it might be.

          In the sections that immediately follow, compilations and deriva-tive works are considered separately.

          Compilations

          It is possible for an author to gather a group of otherwise uncopy-rightable elements, and by their minimally creative linkage to create a compilation that is protectible by copyright. The designer of a greeting card can pair a simple drawing on the outside with a simple phrase on the inside; it has been held that another’s card will infringe the “com-pilation” of the two elements even though its drawing is a bit different and the copied phrase is uncopyrightable.74 This decision pushed the concept of “compilation” to the brink by holding that only two coor-dinated elements will suffice; and it introduced an unfortunate phrase into the copyright lexicon by announcing that the “concept and feel” of the two cards were alike, so that the later card infringed (even though it is quite clear that copyright should not be used to protect either a concept or a feel). In any event, merely grouping disparate uncopyrightable elements will not necessarily create a “compilation”; courts have held that a compilation comes into existence only when there is some synergy among the elements.75

          How the definition of “original work of authorship” applies to a compilation has for many years been a subject of considerable dispute. Both under the 1909 Act and the 1976 Act, a substantial number of courts had extended copyright protection to directories—even, rou-tinely, to alphabetically organized white-page telephone directories—

          

          74. Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970).

          75. Matthew Bender & Co. v. West Publ’g Co., 158 F.3d 674, 688 (2d Cir. 1998) (West’s “editorial enhancements” in its case reports do not together constitute a copyrightable compilation, but are rather a “piling up” of trivial elements “each in its discrete way in its discrete spot”); Sem-Torq, Inc. v. K Mart Corp., 936 F.2d 851 (6th Cir. 1991) (set of five placards, to be sold as a group in department store, not a compilation).

          35

          Copyright Law

          by giving weight (often only implicitly) to the effort, time, and expense devoted to gathering and organizing the underlying factual data that were themselves undeniably in the public domain. This rationale be-came known as the “sweat of the brow” or “industrious collection” theory.

          In a major decision, Feist Publications, Inc. v. Rural Telephone Serv-ice Co.,76 the Supreme Court in 1991 explicitly and uncategorically re-pudiated the “sweat of the brow” theory as inconsistent with fundamen-tal principles of copyright (as manifested both in the Constitution and the statute) and with the specific definition of “compilation” in the 1976 Act. The Court in Feist defined “originality,” the prerequisite to copyright protection, to require not only independent creation (i.e., noncopying) but also “some minimal degree of creativity,” “some creative spark.” Although the Court acknowledged that “the requisite level of creativity is extremely low” and that “even a small amount will suffice,” it concluded that white-page telephone directories fail to sat-isfy this test.

          Even the plaintiff directory compiler had conceded that the factual information contained in the book was in the public domain and un-protectible by copyright. The Court agreed; even assuming that such facts—name, telephone number, and town—were unearthed by the plaintiff, it could not claim authorship, for these facts did not “owe their origin” to, and indeed existed prior to, the plaintiff’s publication.

          Nonetheless, the plaintiff claimed protection for the overall coor-dination and presentation of those facts. The Court therefore went on to parse the statutory definition of “compilation” and found it to com-pel the following conclusions: (1) merely collecting and gathering in-formation, no matter how arduous it may be to do so, are not in them-selves sufficient to warrant copyright; (2) compilations must satisfy the “originality” requirement in the same manner as all other kinds of works eligible for copyright and cannot properly be treated differently under any “sweat of the brow” theory; and, most important for the Court, (3) because the compiler of facts “can claim originality, if at all, only in the way the facts are presented,” there will inevitably be some

          

          76. 499 U.S. 340 (1991).

          36

          Chapter 2: The Subject Matter of Copyright

          fact-based works that lack the required “minimal level of creativity” in selection, coordination, and arrangement—“a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent.”77

          Feist held—contrary to decades of decisions by lower courts—that the white-page telephone directory falls within that fatally flawed cate-gory. The plaintiff there might have worked hard in making a directory that was useful, but there was “insufficient creativity to make it origi-nal.”78 The Supreme Court found the selection of listings to have been obvious; so too were the book’s coordination and arrangement of facts:

          [T]here is nothing remotely creative about arranging names alphabeti-cally in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course. . . . It is not only unoriginal, it is practically inevitable. This time-honored tradition does not possess the minimal creative spark re-quired by the Copyright Act and the Constitution. . . . Given that some works must fail [the test of originality], we cannot imagine a more likely candidate. Indeed, were we to hold that [the plaintiff’s] white pages pass muster, it is hard to believe that any collection of facts could fail. 79

          Although the Court in Feist stated several times that the creativity requirement was a quite modest one (“no matter how crude, humble or obvious”), its reliance upon a subjective and unquantifiable stan-dard (a modicum, a spark) has introduced an element of uncertainty— as perhaps is inherent in the matter—in drawing a line between the copyrightable and the uncreative. (This line, the Court reminds us, finds its source not simply in the statutory language of section 102(a) but also in the word “author” in the Constitution.) Thus, in what was perhaps an overzealous application of the Feist authorship standard, the en banc Court of Appeals for the Eleventh Circuit held that the typical yellow-page telephone directory lacks creativity in the selection of some 7,000 classified headings (as to which there are a great number

          

          77. Id. at 359.

          78. Id. at 363.

          79. Id. at 363–64.

          37

          Copyright Law

          of options in nomenclature) and in the linking of some 100,000 busi-ness entities to those headings.80

          Some sorts of familiar anthologies will almost certainly pass the test of original authorship, e.g., selecting a finite number of poems from among the entire corpus of world poetry throughout history, or even from among the poets of a particular nation in a particular literary time period. The statutory term “compilation” contemplates authorship in the manner in which preexisting works or data are “selected, coordi-nated, or arranged.”81 Although the poetry anthology will likely pass the test for all three kinds of intellectual endeavor, authorship in only one will suffice. Similarly, the Court of Appeals for the Second Circuit has held that a comprehensive listing of 18,000 baseball cards (with information about price and the like), and a designation of 5,000 as “premium” cards, represented a copyrightable work.82 It reached the same conclusion for the well-known directory of used-car values (the so-called Red Book), organized by make and model, five-year periods, and selected accessories.83

          But the same court found that the gathering of five discrete bits of daily information regarding redeemable bonds was inadequate to jus-tify copyright protection for the cards embodying that information.84 And two courts of appeals have denied copyright protection to lists of numbers generated and compiled to identify product parts: fasteners such as screws in one case85 and automotive-transmission parts in the other.86 The courts invoked a number of theories—such as lack of originality, the idea–expression dichotomy, merger, scènes à faire, and short phrases—and declined to follow another circuit court’s grant of

          

          80. BellSouth Adver. & Publ’g Corp. v. Donnelley Info. Publ’g, Inc., 999 F.2d 1436 (11th Cir. 1993) (en banc). But see Key Publ’ns, Inc. v. Chinatown Today Publ’g Enters., Inc., 945 F.2d 509 (2d Cir. 1991) (classified directory of businesses of likely interest to Chinese-American community in New York City).

          81. Section 101 (emphasis added).

          82. Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984).

          83. CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, 44 F.3d 61 (2d Cir. 1994).

          84. Fin. Info., Inc. v. Moody’s Investors Serv., 808 F.2d 204 (2d Cir. 1986).

          85. Southco, Inc. v. Kanebridge Corp., 390 F.3d 276 (3d Cir. 2004) (en banc).

          86. ATC Distrib. Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d

          700 (6th Cir. 2005).

          38

          Chapter 2: The Subject Matter of Copyright

          copyright protection to a taxonomy taking the form of numbers used to identify various dental procedures.87

          Several cases of particular interest to lawyers and judges have in-volved claims by the West Publishing Company of copyrightability for certain “compiled” elements of its case reporters. On the one hand, West does not claim copyright in the text of the judges’ opinions as they issue from the courthouse; and on the other hand, even its com-petitors have acknowledged that West’s copyright does extend to its syllabi and headnotes, along with its key-system taxonomy and its ta-bles and indices prepared by the West staff.

          But in a case decided prior to the Feist decision, West Publishing Co. v. Mead Data Central, Inc.,88 the LEXIS computerized research service announced its intention to incorporate in its screen displays of case decisions “star pagination” reflecting all page breaks in the unofficial West federal and regional reports. West prevailed in its claim that this would constitute an infringement of its copyright in its case compilations, which the Court of Appeals for the Eighth Circuit held reflected “authorship” in the distribution, sequencing and organization of cases. A flatly contradictory decision was issued by the Second Cir-cuit Court of Appeals several years after Feist, by which time the tech-nology had moved to the point that West’s competitors (Matthew Bender and Hyperlaw) sought to insert West page numbers in their CD-ROM products.89 In part because those numbers were found to derive not from West’s creativity but from the mechanical layout of its pages, the court held that its competitors could copy them, and it held the earlier case in the Eighth Circuit to have been erroneously decided. In a companion case,90 the Second Circuit also held that West’s various “editorial enhancements” to the courthouse opinions—such as case captions, attorney information, and insertion of parallel citations— were too trivial, and too dictated by citation conventions, so that they,

          

          87. American Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977 (7th Cir. 1997).

          88. 99 F.2d 1219 (8th Cir. 1986).

          89. Matthew Bender & Co. v. West Publ’g Co., 158 F.3d 693 (2d Cir. 1998) (2–1 deci-sion).

          90. Matthew Bender & Co. v. West Publ’g Co., 158 F.3d 674 (2d Cir. 1998) (2–1 deci-sion).

          39

          Copyright Law

          both in isolation and as an alleged compilation, could be copied by West’s competitors.91

          The same principles that govern copyrightability of compilations will govern when the claim relates to the particularly modern-day compilation known as the computer database, which is no more than a collection of discrete factual data fixed in tangible form in a computer chip or disk.

          Because of the legal uncertainties introduced by the Feist case into the matter of copyright protection for fact-based directories—at least exhaustive ones straightforwardly arranged—and in light of the time, effort and expense devoted to the preparation of many such directo-ries, bills have been introduced in Congress that would protect hard-copy and computerized databases against unauthorized copying. These bills have been based not on copyright but rather on theories of mis-appropriation and unfair competition. As yet, no such bills have been enacted into law.

          Derivative works

          Although the 1991 Supreme Court decision in Feist has helped to eliminate much of the earlier uncertainty about the “original author-ship” requirement in compilation cases, there remains a comparable uncertainty about the application of that requirement in cases involv-ing derivative works. Derivative works require some sort of “recasting, transformation or adaptation” of underlying works within the subject matter of copyright. If a novel is translated into another language or is expanded into a motion picture film, there is usually little doubt that the translation and the film are copyrightable derivative works; they clearly incorporate creative and “distinguishable variations” beyond the underlying novel. Given the minimal standard of authorship— essentially nonliteral copying—in copyright law, it is not surprising that modest but discernible variations on the underlying work (for example,

          

          91. See also Skinder-Strauss Assocs. v. Mass. Continuing Legal Ed., Inc., 914 F. Supp.

          665 (D. Mass. 1995) (holding directory of lawyers’ contact information uncopyrightable).

          40

          Chapter 2: The Subject Matter of Copyright

          a work of art translated from canvas to a woodcut or engraving) will sustain a copyright.92

          Some courts, however, have applied the “authorship” requirement to derivative works in a way that arguably departs from these basic principles. The principles are particularly put to the test in cases in which the derivative art works derive their aesthetic worth and their economic value from the exactness of their verisimilitude to the under-lying work. For example, in L. Batlin & Son, Inc. v. Snyder,93 the Court of Appeals for the Second Circuit, sitting en banc, held that a plastic “Uncle Sam Bank” modeled on a cast-iron public domain bank from the late nineteenth century lacked sufficient elements of originality to warrant copyright protection. The copier had used Snyder’s plastic bank as a model for its own, and had not copied directly from the pub-lic domain bank. Although there were some purposeful design varia-tions in Snyder’s plastic bank, the court found them to be trivial, not readily discernible, and largely dictated by the mechanical needs of the plastic-molding process.94

          A similar demanding approach was used by the Court of Appeals for the Seventh Circuit, in Gracen v. Bradford Exchange,95 in which an authorized drawing of the Dorothy (Judy Garland) character from the motion picture film The Wizard of Oz was found to lack sufficient crea-tivity, even though it had been chosen as a contest winner. The court held that “originality” with respect to derivative works “is not to guide aesthetic judgments but to assure a sufficiently gross difference between the underlying and the derivative work to avoid entangling subsequent artists depicting the underlying work in copyright problems.”96 That is, the creator of a nearly exact derivative work, if given a copyright, could

          

          92. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951).

          93. 536 F.2d 486 (2d Cir. 1976) (en banc).

          94. See also Sherry Mfg. Co. v. Towel King of Fla., Inc., 753 F.2d 1565 (11th Cir. 1985) (variations in graphic design on towels were trivial, and improperly motivated). But see Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982) (depicting Pad-dington Bear image as “smoother” and “cleaner” is nontrivial variation and thus copy-rightable).

          95. 698 F.2d 300 (7th Cir. 1983).

          96. Id. at 305.

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          Copyright Law

          threaten litigation that would chill legitimate recourse by others to the underlying work.

          Whether for this reason or another, some courts have imposed what appears to be a higher standard of authorship for derivative art works than for other subject matter within the coverage of the Copy-right Act,97 or have accorded only “thin” copyright protection.98 It is not clear that this comports with the very low threshold for creativity announced by the Supreme Court in its Feist decision.

          Pictorial, Graphic, and Sculptural Works

          One of the categories of copyrightable works in section 102(a) of the Act is “pictorial, graphic, and sculptural works” (PGS works). The same requirement of original authorship obtains for artistic works as for literary works, and in neither case does it import any standard of aesthetic merit or appeal—only noncopying and a minimal measure of creativity. The latter element has been reflected for many years in sec-tion 202.1(a) of the Copyright Office regulations, which excludes from copyright “familiar symbols or designs” and “mere variations of typo-graphic ornamentation, lettering or coloring.” Even before the Su-preme Court in Feist definitively announced the requirement of mini-mal creativity, courts had denied copyright to a cardboard display-stand in the shape of a circle within a five-pointed star,99 to a handful of overlapping angular lines (evoking arrowheads) in a sports-team logo,100 and to variations in color choices for map territories.101

          On the other hand, “colorized” versions of motion picture films originally made in black and white have been declared by the Copy-right Office generally to contain enough original authorship in color selection as to constitute separately copyrightable derivative works.102

          

          97. Entm’t Research Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211 (9th Cir. 1997).

          98. Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003).

          99. Bailie v. Fisher, 258 F.2d 425 (D.C. Cir. 1958).

          100. John Muller & Co. v. N.Y. Arrows Soccer Team, 802 F.2d 989 (8th Cir. 1986).

          101. United States v. Hamilton, 583 F.2d 448 (9th Cir. 1978).

          102. 52 Fed. Reg. 23,442 (1987).

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          Chapter 2: The Subject Matter of Copyright

          Copyright has also been sustained in a realistic color drawing of a slice of chocolate cake, designed for use on a cake wrapper;103 and the same court of appeals, much more recently, overturned a summary judg-ment of noncopyrightability of the Barbie Doll’s nose, lips and eyes.104 It has, in fact, been held that the common snapshot or home motion picture film is eligible for copyright, given the photographer’s judg-ment regarding angle, placement, shading, timing and the like.105 This approach was extended by the Court of Appeals for the Ninth Circuit to protect a head-on product photograph of a bottle of vodka106 — although the court ultimately concluded that the “merger” of idea and expression justified only a “thin” copyright and held that a nearly iden-tical photograph did not infringe.107

          Useful articles

          Perhaps the most difficult issue that arises regarding the copyrightabil-ity of pictorial, graphic, and sculptural works concerns those works, typically “sculptural,” that serve useful functions, such as furniture, flatware, television sets, computers, garments, and automobiles. The pertinent law begins with an important Supreme Court decision, moves through some not altogether clear provisions of the 1976 Act, and con-tinues today in a number of court decisions applying the statute in an inconsistent and uncertain manner.

          Until 1954, when the Supreme Court decided Mazer v. Stein,108 it was widely assumed that protection for the design of useful articles had to be secured through the design-patent law—which requires that the design be “novel” and “unobvious”—and that copyright protection was not available. In Mazer, the Court held that copyright protection could be extended to sculptural figures that were used as bases for lamps. The Court stated that, so long as the statues embodied original-ity, copyright was not displaced by virtue of the potential availability of

          

          103. Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir. 1957).

          104. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133 (2d Cir. 2004).

          105. Time, Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968).

          106. Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000).

          107. Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003).

          108. 347 U.S. 201 (1954).

          43

          Copyright Law

          design-patent protection or by the fact that the design was embodied in

          a useful article that was mass-produced and merchandised commer-cially. Since the Mazer decision, the Copyright Office has registered many ornamentally shaped useful articles. Section 113(a) of the Copy-right Act now provides that the copyright in a PGS work “includes the right to reproduce the work in or on any kind of article, whether useful or otherwise.”

          A perplexing problem that remained after Mazer was whether copy-right could extend not simply to a separate and independent artistic drawing or sculpture that was incorporated as part of a useful article (such as the lamp base in that case), but also to attractively shaped useful articles in themselves. To permit the copyright owner to prevent the manufacture of a useful article would create the risk that copy-right—quick and easy to secure, and long in duration—could be used to secure a patent-like monopoly over articles of manufacture without complying with the more exacting prerequisites for a product patent or

          a design patent. This concern induced several courts to hold under the 1909 Act that copyright in a two-dimensional drawing of a useful article would not carry with it the exclusive right to manufacture the article

          itself, and that copyright was not appropriate for the overall three-dimensional shape of such an article.109 Congress, in section 113(b) of the 1976 Act, approved these earlier precedents, simply by incorporat-ing by reference the law as it had existed on December 31, 1977—in effect withholding from the copyright owner the exclusive right to fin-ish or to build the object portrayed.

          Congress attempted a formulation of the scope of protection for useful articles by its definitions in section 101. A “useful article” is defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey informa-tion.” (A dress or an automobile is thus a “useful article” but a de-signer’s rendering in a drawing or photograph is not because it would

          

          109. E.g., Muller v. Triborough Bridge Auth., 43 F. Supp. 298 (S.D.N.Y. 1942) (plan for cloverleaf bridge approach).

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          Chapter 2: The Subject Matter of Copyright

          “portray the appearance of the article.”110 ) “Pictorial, graphic, and sculptural works”

          include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.111

          If, for example, a corkscrew is composed of a small plastic sculptured human head and a pointed spiral-shaped piece of metal, it is a PGS work, but copyright extends only to the sculptured head and not to the shape of the spiraling metal.

          In the words of the House Report, the statutory definitions attempt to distinguish between “works of applied art protectible under the bill and industrial designs not subject to copyright protection.”112 The Re-port continues:

          A two-dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian arti-cles such as textile fabrics, wallpaper, containers, and the like. The same is true when a statue or carving is used to embellish an industrial product or, as in the Mazer case, is incorporated into a product without losing its ability to exist independently as a work of art. On the other hand, although the shape of an industrial product may be aesthetically satisfying and

          

          110. Courts have disagreed on the question whether mannequins are “useful articles,” with the line apparently being drawn—somewhat unconvincingly—between human mannequins (yes), Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985), and animal mannequins (no), Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir. 1996). See Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir. 2004). Ani-mal masks are not “useful articles” (they portray an appearance) but animal costumes are (they function as clothing as well). See, e.g., Celebration Int’l, Inc. v. Chosun Int’l, Inc., 234 F. Supp. 2d 905 (S.D. Ind. 2002).

          111. 17 U.S.C. § 101.

          112. H.R. Rep. No. 94-1476, at 55 (1976).

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          Copyright Law

          valuable, the Committee’s intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies’ dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separa-ble from the utilitarian aspects of that article, the design would not be copyrighted under the bill.113

          As to the attractive shape of useful articles in themselves, Congress had, during the copyright revision process, formulated a separate body of legislation that would have extended a special 10-year term of copy-right to “the design of a useful article” including its “two-dimensional or three-dimensional features of shape and surface, which make up the appearance of the article”; but this legislation was never enacted. Re-peated efforts since to enact such design-protection legislation have been unsuccessful, except for the rather curious and particularistic protection accorded to the shape of vessel hulls.114

          The key to copyright protection of the features of useful articles thus depends on whether the feature is—in the words of the House Report—physically or conceptually separable from the utilitarian fea-tures. Examples given in the Report include a carving on the back of a chair or a floral relief design on silver flatware. Although copyrightabil-ity might be clear at that extreme, and noncopyrightability clear at the other extreme of a flat rectangular table top resting on four cylindrical legs at each corner, it is of course the intermediate cases that reach the courts, sometimes after a refusal by the Copyright Office to register the work.

          The effort to apply the “separability” standard has not resulted in a clear or consistent pattern of decisions. In noteworthy decisions of the Court of Appeals for the Second Circuit, copyright protection has been upheld for an attractively contoured belt buckle (in part, no doubt, because many persons wore the buckle separately as pinned-on jew-elry),115 but has been denied for the shape of mannequin torsos used for the draping of shirts in clothing stores (despite the allusion to the

          

          113. Id.

          114. 17 U.S.C. §§ 1301–1332.

          115. Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980).

          46

          Chapter 2: The Subject Matter of Copyright

          sculptures of ancient Greece and Rome)116 and for the undulating “sine-curve” design of a bicycle rack.117 The Seventh Circuit has more recently drawn upon those decisions to develop a “separability” test of its own.118 All that can be said with any confidence is that the more flamboyant the shape, and the less the shape is dictated by the func-tion, the more readily copyright will protect the overall shape of useful articles.

          Architectural works

          Another example of a useful article—one that has given rise to some difficulties in determining the proper scope of copyright protection—is architecture. Both under the 1909 Act and the 1976 Act as originally enacted, courts generally held that although architectural plans and three-dimensional models were copyrightable, that protection would not afford the copyright owner the exclusive right to build the structure depicted therein. By virtue of analysis stemming from Baker v. Selden,119 courts were reluctant to permit copyright—rather easily secured and of long duration—to be used to prevent the construction of houses and office buildings; there was also, no doubt, reluctance to uphold copy-right in architectural “styles” manifested in standard design elements. Under the “pre-1978 saving clause” in section 113(b) of the 1976 Act and the “separability” requirement in the definition of PGS works, these earlier precedents have been applied so that the unauthorized construction of a building would not constitute copyright infringe-ment.120

          This body of law was significantly altered when, in October 1990, Congress amended the Copyright Act so as to extend its protection to the overall shape of three-dimensional works of architecture. The Ar-chitectural Works Copyright Protection Act, among other things, amended section 101 to define “architectural work” as “the design of a

          

          116. Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411 (2d Cir. 1985).

          117. Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987).

          118. Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir. 2004) (2–1 decision). See also Bonazoli v. R.S.V.P. Int’l, Inc., 353 F. Supp. 2d 218 (D.R.I. 2005).

          119. 101 U.S. 99 (1879).

          120. Demetriades v. Kaufman, 680 F. Supp. 658 (S.D.N.Y. 1988).

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          Copyright Law

          building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form and elements in the design, but does not include individ-ual standard features.” By protecting the “overall form” of buildings, and by defining “architectural work” separately from all other PGS works so that the “separability” requirement does not obtain for this particular category of useful article, the amended statute now makes it an infringement to construct a building that copies from another’s protectible two- or three-dimensional design. The purpose of the 1990 statutory changes was to bring U.S. law more into harmony with the architectural-protection provisions of the Berne Convention.

          The protection for building designs is subject to certain statutory limitations found principally in section 120: it is not an infringement to draw or photograph a building that is “located in or ordinarily visible from a public space,” and the owner of a building embodying a copy-righted design does not infringe by making alterations to the building or by destroying it. Moreover, the extended copyright protection de-scribed here does not apply to buildings that were completed or “sub-stantially constructed” before December 1, 1990.121

          Works of visual art

          In what is perhaps an even more dramatic change in the Copyright Act than the inclusion of architectural works, the October 1990 amend-ments expressly accorded visual artists for the first time as a matter of federal law the rights of “attribution and integrity.” These are the two principal components of what is known in civil-law nations as “moral rights.” These rights—basically, the right to have a work attributed to the artist, and the artist’s right to prevent mutilation or destruction— were granted by the Visual Artists Rights Act (VARA) of 1990 and are now set forth in section 106A of the Copyright Act (to be discussed more fully infra Chapter 6).

          These two newly created statutory rights are given only to authors of what is defined as a “work of visual art” and not to authors of all pictorial, graphic, or sculptural works. The definition of a “work of

          

          121. Zitz v. Pereira, 232 F.3d 290 (2d Cir. 2000).

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          Chapter 2: The Subject Matter of Copyright

          visual art” (particularly the exclusions) is elaborate. It covers a paint-ing, a sculpture, and a “still photographic image produced for exhibi-tion purposes only,” in their embodiment as a single copy or in num-bered and signed limited editions not in excess of 200. Excluded are works made for hire and a broad range of graphic works such as post-ers, technical drawings, applied art, motion pictures and other audio-visual works, art in books, newspapers and periodicals, and advertis-ing122 and packaging materials.

          These excluded categories of works remain within the definition of “pictorial, graphic, and sculptural works,” and they are accorded pro-tection against unauthorized reproduction and unauthorized prepara-tion of derivative works. They are not, however, protected against non-attribution or physical mutilation or destruction.

          VARA therefore contemplates three sets of rights in art works—the copyright owner of a PGS work can assert the basic right of reproduc-tion set forth in section 106; the artist who has created “a work of visual art” can assert the moral rights set forth in section 106A; and the owner of the physical canvas or sculpture can assert chattel ownership rights under state law. Section 106A(e)(2) expressly provides for this fragmen-tation of rights.

          A dozen states have enacted similar “moral rights” statutes for the protection of artists; most of these laws are broader in both subject-matter coverage and substantive rights than the federal Act. Section 301(f) of the Copyright Act preempts the enforcement of state-law rights equivalent to those conferred by section 106A upon “works of visual art,” but this would allow states to grant rights of attribution and integrity to works that fall outside that federally defined phrase (such as motion pictures) and to grant perhaps more expansive substantive rights even to “works of visual art.” In any event, section 301(f) ex-pressly saves state rights that extend beyond the life of the artist.

          

          122. Pollara v. Seymour, 344 F.3d 265 (2d Cir. 2003).

          49

          Copyright Law

          Pictorial and Literary Characters

          Owners of copyright in literary or pictorial stories have on occasion attempted to assert an exclusive right to the characters depicted therein. The right to continue certain characters in television series, or in novelistic and motion picture sequels, or video games, is of great economic value, as is the right to “merchandise” these characters on shirts, bed linens, dolls and other such paraphernalia.

          Pictorial characters drawn for comic books or film cartoons are readily protected by copyright, as pictorial and graphic works, pro-vided they meet the minimal requirements for “original authorship.”123 The copyrightable elements of an animated character have been said to “extend not merely to the physical appearance of the animated figure, but also to the manner in which it moves, acts and portrays a combina-tion of characteristics.”124

          Far less likely to be protected by copyright are characters who are delineated by words in literary works. Most such literary characters are “types” with a limited number of not uncommon personality attributes; their “character” is more a reflection of a story line or plot than of any intrinsic detailed nature. Literary characters as such are thus com-monly regarded as falling on the “idea” side of the dichotomy between unprotectible idea and protectible expression. Frequently cited are the memorable lines penned by Learned Hand in 1930:

          If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s “ideas” in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can

          

          123. Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004); Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978) (Mickey Mouse parodied in defendant’s risqué comic books).

          124. DeCarlo v. Archie Comic Publ’ns, Inc., 127 F. Supp. 2d 497 (S.D.N.Y.), aff’d, 11 Fed. Appx. 26 (2d Cir. 2001) (unpublished).

          50

          Chapter 2: The Subject Matter of Copyright

          be copyrighted; that is the penalty an author must bear for marking them too indistinctly.125

          No court appears to have held that a strictly literary character (i.e., one described only in words intended for reading) that was the subject of litigation meets the standard of copyrightability, so that it would in-fringe to depict such a character (particularly without his or her name) in an altogether different tale. The Court of Appeals for the Second Circuit has however intimated, without elaboration, that the Hopalong Cassidy and Amos & Andy characters, in their textual description, pass Judge Hand’s test.126

          Characters that are delineated through human actors on the mo-tion-picture or television screen fall somewhere between cartoon or animated characters on the one hand and literary characters on the other.127 Although the decided cases are few, courts appear to be in-clined to grant copyright to those film characters—perhaps indeed to an extent that affords copyright to stock character “types” and thus to literary “ideas.” Thus, a televised automobile commercial depicting a fast-driving debonair and handsome tuxedoed man, saving himself and his attractive female partner from the clutches of a high-tech villain, was held to infringe the James Bond character (even though that name was not used).128 And another district court held: “This Court has no difficulty ruling as a matter of law that the Rocky characters are deline-ated so extensively that they are protected from bodily appropriation when taken as a group and transposed into a sequel by another author.”129 This conclusion—resting on the Learned Hand test of de-

          

          125. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (holding play, Abie’s Irish Rose, and its characters not infringed by motion picture, The Cohens and the Kellys).

          126. Filmvideo Releasing Corp. v. Hastings, 668 F.2d 91 (2d Cir. 1981); Silverman v.

          CBS, Inc., 870 F.2d 40 (2d Cir. 1989).

          127. See Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004) (“The description of a character in prose leaves much to the imagination, even when the description is detailed.

          . . .” Id. at 660. “[O]ne hardly knows what Sam Spade looked like. But everyone knows what Humphrey Bogart looked like.” Id. at 661.).

          128. Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., 900 F. Supp. 1287 (C.D. Cal. 1995).

          129. Anderson v. Stallone, 11 U.S.P.Q.2d (C.D. Cal. 1989).

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          Copyright Law

          tailed “delineation”—was no doubt reinforced by the fact that Rocky, Adrian, Apollo, Clubber and Paulie had already been developed in three motion pictures and that their names were carried forward in the screenplay of the alleged infringer.

          Government Works

          It is obviously in the public interest that persons be able freely to quote from—and indeed to reproduce in full—federal statutes, regulations, court opinions, legislative and commission reports, and the like. Sec-tion 105 of the Copyright Act provides: “Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or other-wise.” In section 101, a “work of the United States Government” is defined as “a work prepared by an officer or employee of the United States Government as part of that person’s official duties.” The House Report states that the intention is to apply this definition in the same manner as the definition of “works made for hire” by employees in the scope of their employment.130 Not swept within the exclusion under section 105 would be a work commissioned by a branch of the U.S. Government and authored by an “independent contractor” or a free-lance writer or artist.

          As an example of the operation of these statutory provisions, one might consider this monograph on copyright law, prepared under con-tract for the Federal Judicial Center. Its author is not an “employee” of the U.S. Government, and so it cannot be prepared as part of any “of-ficial duties” with the Government. Accordingly, this monograph is eligible for copyright protection in the name of the author. (The author has in fact agreed voluntarily to transfer the copyright to the Federal Judicial Center, which may and does hold a valid copyright as transferee pursuant to section 105. It is, of course, for the Center to decide whether to enforce that copyright or rather to allow some or all members of the public to make copies.) Had the work instead been

          

          130. H.R. Rep. No. 94-1476, at 58 (1976).

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          written by, say, an employee in the Copyright Office as part of his or her job responsibilities, it would indeed be treated as a work of the U.S. Government and would thus be ineligible for copyright protec-tion.

          No express provision of the Copyright Act similarly consigns to the public domain works prepared by employees of state and local gov-ernments. In 1888, however, the Supreme Court in Banks v. Manches-ter131 held that state judicial opinions are ineligible for federal copy-right protection because state judges are paid with public funds (the implication being that the public is therefore the owner), and because, as a matter of policy, the public interest is served by free access to the law by persons expected to conform their conduct to it (a “due proc-ess” rationale). The same rationales were without much dispute ex-tended to state legislation and administrative regulations. After an un-contentious century, the issue of copyrightability of official state mate-rials has recently come to the fore in two contexts.

          The first is the nature and range of state materials that are to be analogized to legislation and court decisions, with copyright denied. The Court of Appeals for the Second Circuit has held132 that official county “tax maps”—showing the ownership, size, and location of real property parcels in each of the political subdivisions of Suffolk County in New York—are not automatically stripped of copyright simply be-cause they are authored by county officials and because they are used as a basis for the assessment of property taxes. The court held that the taxing statute affords the public adequate notice of their obligations, so that state ownership of the maps would create no problems of due process, and it remanded so that further evidence could be presented on the issue of the county’s need for copyright as a financial incentive for its mapmaking activity.

          The second relevant issue of current importance is whether pri-vately authored codes—such as building codes and fire codes, or even model laws—that are written by expert groups lose their copyright when they are adopted (often simply by reference) by a legislative

          

          131. 128 U.S. 244 (1888).

          132. County of Suffolk, N.Y. v. First Am. Real Estate Solutions, 261 F.3d 179 (2d Cir.

          2001).

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          Copyright Law

          body, say in a county or town. The few cases addressing this question have provided a less-than-definitive answer. However, the Court of Appeals for the Fifth Circuit, sitting en banc, concluded in 2002 in a sharply divided decision133 that—although such privately drafted codes are protected by copyright at the outset—they are thrust into the public domain when they are adopted by a town as its authoritative legal text, at least when such adoption is actively sought by the drafting body. The principles of Banks v. Manchester were held to be controlling, although the dissent concluded that a denial of copyright would pose a threat to the useful provision of such codes to busy and underfunded municipal entities. The majority distinguished the situation from the several cases involving the mere “reference” by a city or state to some copyrighted material, privately authored and already in private com-mercial use; in those cases, involving for example a state’s reference for insurance purposes to automobile values contained in the well-known Red Book (of the National Automobile Dealers’ Association), the courts have concluded that copyright is not lost.134

          

          133. Veeck v. Southern Bldg. Code Cong. Int’l, Inc., 293 F.3d 791 (5th Cir. 2002) (en banc).

          134. Practice Mgmt. Info. Corp. v. American Med. Ass’n, 121 F.3d 516 (9th Cir. 1997) (AMA coding system to identify medical procedures); CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, 44 F.3d 61 (2d Cir. 1994) (NADA Red Book auto values).

          54

          Chapter 3

          Duration and Renewal

          The Copyright Clause of the Constitution empowers Congress to grant exclusive rights to authors “for limited times.” The first United States Copyright Act, enacted in 1790, was patterned on the Statute of Anne of 1710 and gave authors a 14-year period of protection for published works and a right to renew the copyright for 14 more years if the author was alive at the end of the first term. The renewal format, with two rather short terms of protection, was a feature of U.S. copyright law through 1977. The 1909 Copyright Act granted an initial term of protec-tion for 28 years and a renewal term of another 28 years upon timely registration by the author or by certain designated statutory successors. Under the 1909 Act, an author of an unpublished work could invoke state common-law copyright protection indefinitely until the work was “published” (a term of art to be discussed at pages 86–89); for most unpublished works, the author had the option to secure federal copy-right protection by registering the work with the Copyright Office. For published works, common-law copyright was preempted and protec-tion could be secured only by compliance with the formalities of the federal act.

          With the 1976 Copyright Act, effective January 1, 1978, both the starting point and ending point of federal copyright protection were changed. As already noted, copyright attaches as soon as a work is “created,” i.e., as soon as it is “fixed” in a tangible medium of expres-sion. This is true even for works that were created before the effective date of that Act, whether those preexisting works were at the time pub-lished or unpublished. State common-law copyright for “fixed” works was from that date displaced by federal copyright.135

          The 1976 Act also dramatically altered the period during which copyright protection lasts, most notably by abandoning the renewal format for works created (or first published) after January 1, 1978, and substituting a term of protection for such works of the author’s life plus

          

          135. 17 U.S.C. §§ 301(a), (b).

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          Copyright Law

          50 years. The renewal provisions of the 1909 Act remain important, however, if only because disputes concerning renewal rights (who owns them? were they properly secured?) that accrued in 1977 or earlier will no doubt continue to be presented in future litigation. Moreover, Con-gress in the 1976 Act preserved the renewal format, with some modifi-cations to be explored immediately below, for works first published between 1950 and 1977 (during the life of the 1909 Act) so that they still have fallen within that format as they have reached the twenty-eighth year thereafter (between 1978 and 2005).

          A discussion of the renewal format is followed by a discussion of the term of copyright under the 1976 Act and the Sonny Bono Copy-right Term Extension Act of 1998 (named for the late popular singer and congressman).

          The Renewal Format

          Under section 24 of the 1909 Copyright Act, the author or a person claiming copyright (for example, by way of an assignment) was entitled to a 28-year initial term of copyright protection. Although such protec-tion was available for most unpublished works, the typical work pro-tected by the statute was a work that had been “published,” i.e., dis-tributed in copies to the public, with proper notice of copyright. Copy-right protection continued for 28 years from the date of publication, and could be continued for another 28-year term upon timely applica-tion by the person designated in the statute:

          [T]he author of such work, if still living, or the widow, widower, or chil-dren of the author, if the author be not living, or if such author, widow, widower, or children be not living, then the author’s executors, or in the absence of a will, his next of kin shall be entitled to a renewal and exten-sion of the copyright in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the Copyright Office and duly registered therein within one year prior to the expiration of the original term of copyright.

          The renewal term, in effect, granted a statutory reversion of interest. Congress’s purpose was principally to afford to the author or the author’s family an opportunity to claim ownership and to make new

          56

          Chapter 3: Duration and Renewal

          transfers for a new remuneration, free and clear of any transfers of or encumbrances on the initial copyright term. An author who had con-veyed copyright before or shortly after the publication of his or her work, at a time when its economic value was unknown or speculative, was given by Congress an opportunity to market the copyright a second time, when its economic value was more readily determinable.

          If the author were not alive in the twenty-eighth year of the initial copyright term, the right to apply for and to claim the renewal copy-right fell to the next available statutory successor. If the author left a widow, widower or children, such person(s) would become the owner(s) of the copyright for the renewal term. Despite the precise statutory language, the Supreme Court held that, in a case in which the author was outlived by a widow or widower and one or more children, all of those survivors would take ownership as a class, and the surviving spouse would not take all.136 The Court, however, did not have to de-termine whether the spouse takes half and the children divide the other half or whether all of the surviving family members share the copyright equally. Indeed, no lower federal court was called upon for a holding on this issue for nearly a century (after 1909), when in 2005 two differ-ent courts of appeals did decide the matter. The First and Sixth Circuit Courts of Appeals both held that the surviving spouse takes 50% of the renewal interest and the children share equally in the other 50%.137

          If the author left no widow, widower or children, then section 24 of the 1909 Act provided that the renewal copyright could be claimed by the “author’s executors.” As interpreted, this provision gave ownership of the renewal term to the executors as trustees for the persons named in the author’s will as legatees; the executor was not to hold the re-newal copyright on behalf of the author’s estate, which would be sub-ject to the claims of creditors. In default of any persons in the first three statutory categories, the author’s “next of kin” could validly claim the renewal term of copyright.

          

          136. De Sylva v. Ballentine, 351 U.S. 570 (1956).

          137. Venegas-Hernandez v. Asociacion de Compositores, Editores De Musica Latino-americana, 424 F.3d 50 (1st Cir. 2005); Broadcast Music, Inc. v. Roger Miller Music, Inc., 396 F.3d 762 (6th Cir. 2005). Both courts drew upon the per stirpes ownership principle found in the termination-of-transfer provisions of 17 U.S.C. §§ 203 and 304(c).

          57

          Copyright Law

          An example will demonstrate the operation of the statutory renewal provision of the 1909 Act. If an author during his lifetime licensed a publisher to print and distribute his book in paperback form, and the author died unmarried and without children prior to the twenty-eighth year from the date of publication, the renewal term could be claimed by the author’s executors holding on behalf of the persons designated in his will. The publisher’s license would be terminated at the end of 28 years, and the legatees could bargain for a new license with the same or a different publisher, for new compensation, free and clear of the earlier transfer. (As noted above, effective in 1978, 19 years were added to existing 28-year renewal terms, and another 20 years were added to those terms in 1998, for 67 total renewal years—and a possible 95 over-all years of protection for such older works.)

          It became common under the 1909 Act for a transferee of copyright to negotiate with an author for the ownership of both the initial and the renewal terms of copyright. Most conspicuously, in the case of popular musical compositions the popularity of which might well span beyond the initial 28-year term, the publisher wanted to ensure that it would have the right to derive income from sheet music and public perform-ances into the renewal term. The statute made it clear that an author’s transfer of the renewal copyright during the initial term of copyright could not deprive the statutory successor—such as the widow—of her ownership of the renewal term in the event the author–husband was not alive in the twenty-eighth year. The statute did not make it quite so clear whether, in the event the author lived through the initial term, the renewal term to which the author was entitled would immediately be owned by the transferee. In other words, the statute left open the ques-tion whether an initial-term transfer of the renewal copyright would be valid and enforceable (if the author survived into the renewal term).

          In a controversial 1943 decision, Fred Fisher Music Co. v. M. Wit-mark & Sons,138 a divided Supreme Court held—despite the obvious author-protective purpose of the renewal format—that an early as-signment of the renewal term was binding and valid. But all that can be transferred is the author’s contingent interest in that term, dependent

          

          138. 318 U.S. 643 (1943).

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          Chapter 3: Duration and Renewal

          upon his survival through the initial term. If, despite such a purported transfer, the author dies before expiration of the initial term, then the assignee’s contingent interest in the renewal term is terminated and the widow or children, or subsequent statutory successors, can assert supe-rior claims to the renewal term. Of course, under Fisher v. Witmark, there would be nothing to prevent the assignee from securing from the widow or children valid transfers of their contingent interests in the renewal term.

          The four-tiered succession to the renewal term, as outlined above, applies for most copyrighted works. Section 24 of the 1909 Act, how-ever, listed a number of exceptions, the most important of which are works made for hire and “posthumous works”; both excluded catego-ries were left undefined by the 1909 Act. In such cases, section 24 pro-vided that “the proprietor of such copyright shall be entitled to a re-newal and extension of the copyright” for the 28-year term upon timely registration. In other words, the person who was the owner of the copyright at the end of the initial term of copyright was the valid claimant of the renewal term as well—and family members were not given the sort of priority they had in the generality of copyrighted works as described above. This allocation of ownership of the renewal term was preserved in the 1976 Act, with “work made for hire” being defined and with the House Report endorsing a narrow view of the still undefined phrase “posthumous work.”139

          Although a feature of the U.S. Copyright Act for more than two centuries, the renewal format was almost unique in the world’s copy-right jurisprudence and became subject to increasing criticism as many individuals (and even corporations) neglected, by oversight, to comply with the renewal technicalities, which required a timely filing of an application with the Copyright Office. For that reason, the 1976 Act provided that for works created or published thereafter, there would be a single term of protection measured from the death of the author. Works already in copyright under the 1909 Act were not disturbed, however, with respect to the renewal framework, and timely renewal still had to be secured in order to extend the term beyond the first 28

          

          139. See H.R. Rep. No. 94-1476, at 139–40, expressly approving the construction given in Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941 (2d Cir. 1975).

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          Copyright Law

          years. With inadvertent failures to renew continuing even after 1978, Congress decided in 1992 to provide for the automatic renewal of pre-1978 works then in their first term of copyright. The law thus substi-tuted the equivalent of a single 75-year term for the prior dual terms, by making the second term (extended by 19 years) vest without filing for renewal.140 Then, in 1998, the Sonny Bono Copyright Term Exten-sion Act added another 20 years, for a total of 95. This means that pre-1978 works then in their first term of copyright, i.e., works first pub-lished between 1964 and 1977 (inclusive), will enjoy the full 95-year copyright term, without having to register initially and then to renew the registration during the twenty-eighth year following publication.

          However, Congress in 1994 coupled the new automatic-renewal arrangements with certain incentives to renew “voluntarily.” These are set forth in the rather elaborate provisions of section 304(a) of the Copyright Act. One such incentive, for example, is that with a volun-tary renewal application the certificate of registration that is issued by the Copyright Office is to constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate (such as those relating to the author, date of publication, and the like).

          Derivative works prepared during the initial term

          A difficult and important question that arises from the renewal provi-sions of the 1909 Act as carried forward in the 1976 Act relates to the utilization, during the renewal term of copyright, of derivative works that had been validly prepared by others during the initial term of copyright in the underlying work. For example, the author and copy-right owner of a novel might, during the initial copyright term, license another to prepare a motion picture based on that novel; the motion picture, which will typically involve substantial creative contributions by the film producer and those it employs (actors, director, cinematog-rapher, composer), will itself be a copyrightable work. If the license expressly included the right to exhibit and distribute the derivative film

          

          140. See Kahle v. Ashcroft, 72 U.S.P.Q.2d 1888 (N.D. Cal. 2004) (sustaining constitu-tionality of automatic-renewal statute against Copyright Clause and First Amendment challenges).

          60

          Chapter 3: Duration and Renewal

          during the renewal term of the novel, and if the author of the novel survived into the renewal term, the film producer could lawfully con-tinue to utilize the film during the renewal term of the novel.

          If, however, the license did not expressly cover the renewal term, or if it did but the novelist died during the initial term of copyright in the novel and another person succeeded to the renewal copyright, then the question arises whether the film can continue to be exploited by its copyright owner during the renewal term of the underlying novel.

          A strict application of the principles of the renewal format would suggest that once the renewal copyright in the underlying novel “springs back” to the author or to the author’s statutory successor, it does so free and clear of any licenses given during the initial term. Thus the continued exhibition or distribution of the film—which con-tains copyrightable elements from the novel—would constitute an in-fringement of copyright in the novel. Under this approach, not only would the novelist during the renewal term be able undeniably to li-cense some other motion picture producer to base a new film on the novel, but he would also be entitled to renegotiate with the copyright owner of the first film for the right to continue its exploitation. This would, of course, deprive the producer or copyright owner of the first film of the fruits of its own copyrightable contributions, which may as a practical matter account far more for the film’s success than do its borrowed elements from the novel.

          An arguably more equitable view would be that the creative and copyrighted derivative work, the motion picture film produced pursu-ant to a license from the novelist, should be treated as “taking on a life of its own” such that it can continue to be exhibited and distributed even after the beginning of the renewal term of copyright in the under-lying novel. The film producer could not, however, produce a new film based on the underlying novel without the consent of the owner of the renewal copyright in the latter work.

          The courts of appeals were unable to make a clear and consistent choice between these two theories.141 The Supreme Court ultimately

          

          141. Compare G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 (2d Cir. 1951) (the opera Madame Butterfly cannot be converted by initial licensee into a motion picture after renewal of the underlying novel), with Rohauer v. Killiam Shows, Inc., 551 F.2d 484

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          Copyright Law

          resolved the uncertainties when, in 1990, it decided Stewart v. Abend.142 There, the Court held that the continued exhibition and distribution of the well-known Hitchcock film Rear Window, as well as the marketing of videocassettes of the film, constituted an infringement of the renewal copyright in the short story on which the film was based. The Court relied on the terms and legislative histories of the 1909 and 1976 Copy-right Acts, and its own precedents, in holding that an author seeking to convey a license to create a derivative motion picture can transfer only the contingent interest that he has in the renewal term; if the author dies before the end of the initial term of the underlying story (as oc-curred in Stewart), the interest of his statutory successor to the renewal term cannot be diluted by the continued unauthorized exploitation of the derivative work.

          In 1992, in addition to providing for the future automatic renewal of works originally published beginning in 1964, Congress allowed for “voluntary” renewals, and provided incentives to apply for the latter. One such incentive is that a person who voluntarily renews gets the benefits of the rule in Stewart that cuts off continued exploitation by others of derivative works they may have created during the initial term of an underlying work, while in the case of an automatic renewal sec-tion 304(a)(4)(A) now provides that “a derivative work prepared under authority of a grant of a transfer or license of the copyright that is made before the expiration of the original term of copyright may continue to be used under the terms of the grant during the renewed and extended term of copyright without infringing the copyright.”

          Duration of Copyright Under the 1976 Act

          The duration of copyright protection under the 1909 Act, which was in effect through the end of 1977, was as noted 28 years from the date of publication, with the possibility of renewal for an additional 28 years upon application to the Copyright Office in the twenty-eighth year of the initial term. This term of protection was significantly modified by

          

          (2d Cir. 1977) (Valentino film, Son of the Sheik, may be shown on television during the renewal term of the underlying novel).

          142. 495 U.S. 207 (1990).

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          Chapter 3: Duration and Renewal

          the 1976 Act and again by the 1998 “Sonny Bono Copyright Term Ex-tension Act” (CTEA). Under the current law, the term of copyright protection depends principally upon what the copyright status of the work was on the effective date of the 1976 Act, January 1, 1978. Five situations are possible:

          (1) If on that date a work was already in the public domain under

          the 1909 Act or earlier laws, the work remains in the public domain and no copyright protection is available.143

          (2) If on January 1, 1978, a work was in its initial 28-year copyright term under the 1909 Act, the copyright expires at the end of that term, unless the copyright is renewed by timely application. (Renewal was made automatic for works published between 1964 and 1977.) If it is renewed, the renewal term will last not for 28 years but rather for 67 years (with 19 years having been added by the 1976 Act and another 20 years by the CTEA). Section 304(a) so provides, for what is thus effec-tively a 95-year term of copyright. Although Congress was interested in extending the period of statutory copyright protection and discarding the renewal format, it nevertheless chose to retain that format for works then under federal copyright in order to avoid the undue disruption of expectations and transactions.

          (3) Under section 304(b) of the 1976 Act, works in their renewal term of copyright as of January 1, 1978, are to be automatically ac-corded an extended term of protection lasting for a total of 95 years from the date copyright was originally secured. In effect, the renewal term of such works is extended from 28 years to 67 years. Because Con-gress, as early as 1962, anticipated major imminent changes in the copyright law and particularly an extension of the period of copyright protection, it granted what are known as “interim extensions” of pro-tection for works the renewal term of which was about to expire; these works were thus still in their renewal term when the 1976 Act became effective and had their copyright extended to the full 75-year term. For example, a work published and copyrighted in 1925, and renewed in 1953, would in due course (under the 1909 Act) have fallen into the public domain after 1981; by virtue of the 47-year renewal term as so

          

          143. Transitional and supplementary provisions, section 103.

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          Copyright Law

          extended in 1976 and the 20-year extension of 1998, section 304(b) now keeps the copyright in existence through the year 2020.

          It was largely for works such as those from the 1920s and 1930s— motion pictures, songs (by Gershwin, Kern, Berlin and Porter), and novels (by Fitzgerald and Hemingway)—that Congress in 1998 enacted the CTEA, which kept these works from falling into the public domain after 75 years. The earliest works to benefit from the Act were pub-lished in 1923, and these will thus fall into the public domain not at the end of 1998 but rather at the end of 2018. Congress’s purposes were to provide for authors’ heirs at a time when individuals are living longer, to give them the benefit of the new technological and entertainment media, and to move the duration of U.S. works into closer conformity to the norm prevailing in Europe (where the long-prevailing term of life-plus-50-years was moved to life-plus-70-years in the course of the 1990s). The 20-year extension granted by the CTEA, and its underlying rationales, were the targets of considerable criticism—particularly with respect to its retroactive application to works already created and pub-lished—and ultimately of a challenge that reached the Supreme Court.

          In Eldred v. Ashcroft,144 decided in 2003, the Court, with two Jus-tices dissenting, sustained the CTEA against claims that the recurrent extensions of copyright violated the “limited times” restriction in the Copyright and Patent Clause of the Constitution; that the retroactive application of the CTEA could not “promote the progress of science” as required by that constitutional clause; and that the CTEA inhibited creative speech in violation of the First Amendment. The Court con-cluded that no heightened scrutiny was appropriate for assessing the validity of the CTEA; that Congress’s reasons for the 20-year extension were principally a legislative matter and were in any event tenable; and that retroactive application to existing works was a feature of the several congressional term extensions throughout our copyright history stretching back to the early nineteenth century (and even to the first Copyright Act of 1790).

          (4) Perhaps the most significant step taken by Congress in the 1976 Act, as originally written, with regard to duration was to provide in

          

          144. 537 U.S. 186 (2003).

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          Chapter 3: Duration and Renewal

          section 302(a) that “Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the follow-ing subsections, endures for a term consisting of the life of the author and fifty years after the author’s death.” The drafters of the law had concluded early in the revision process that the “28 plus 28” copyright term was inadequate and should be discarded. Authors were living longer than in 1909, and many were seeing their works fall into the public domain during their lifetime. The growth of communications media was lengthening the commercial life of many works. The re-newal format, placing a premium on the definition of the elusive term “publication” as well as on timely renewal applications, resulted in unfairly shortened copyright protection in many cases. Finally, in the words of the House Report, “a very large majority of the world’s coun-tries have adopted a copyright term of the life of the author and fifty years after the author’s death.”145

          The move to the formula of “life plus 50” also provided a clear measuring rod for the period of copyright protection and had the con-venient byproduct of sending all of an author’s post-1977 works into the public domain at the same time, rather than on varying dates de-pending upon the date of initial publication.

          By 1998, the nations of the European Union had added 20 years to the copyright term under their respective laws, and Congress decided to follow suit, in large measure to ensure that U.S. authors would have their works protected in Europe for as long as the works of European authors. The CTEA therefore added 20 years to all of the terms then provided in the 1976 Act, including the now life-plus-70 term provided for works first created after January 1, 1978, under section 302(a).

          Having decided in the 1976 Act to measure copyright protection from the death of the author, Congress had to deal with certain in-stances where such a measure might lead to uncertainty in calculating the term. In the case of a jointly authored work—defined in section 101 as 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”—section 302(b) provides (as amended by the

          

          145. H.R. Rep. No. 94-1476, at 133–36 (1976).

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          CTEA) that “copyright endures for a term consisting of the life of the last surviving author and 70 years after such last surviving author’s death.” In the case of works made for hire, section 302(c) provides that copyright endures “for a term of 95 years from the year of its first pub-lication, or a term of 120 years from the year of its creation, whichever expires first.” This term applies whether the “employer–author” of a work made for hire is a human or a corporate person. The 95-from-publication/120-from-creation measuring period also applies to anonymous and pseudonymous works.

          (5) The final category of work treated in the 1976 Act—a work cre-ated prior to January 1, 1978, but unpublished as of that date—is also made subject to the now “life-plus-70” period of protection. Because this would have the effect of throwing many works immediately into the public domain—for example, unpublished letters or manuscripts of eighteenth and nineteenth century authors—section 303 currently pro-vides: “In no case . . . shall the term of copyright in such a work expire before December 31, 2002; and, if the work is published on or before December 31, 2002, the term of copyright shall not expire before De-cember 31, 2047.” The provision affords such unpublished works 25 years of protection under the federal act, in lieu of the potentially per-petual protection previously afforded by common-law copyright. It also provides the copyright owner of such work with an incentive to publish it during that 25-year period, by offering yet another 45 years of federal protection in the event of such publication.

          Under the 1909 Act, the 28- and 56-year periods of protection were measured from the precise date of publication, resulting in often in-convenient calculations. Under section 305 of the 1976 Act, “all terms of copyright provided by sections 302 through 304 run to the end of the calendar year in which they would otherwise expire.” The key date, therefore, for such matters as applying for renewal copyright, the end of the renewal term, and the end of the “life-plus-70” term, will be December 31 of the pertinent year.

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          Duration and Renewal: The Transition from the 1909 Act to the 1976 Act

          When ProtectionFirst

          Date of WorkAttachesTermRenewal Term

          Created inUpon fixationUnitary term of life plus 70 years (or, if

          1978 or later anonymous or pseudonymous work, or

          work for hire, 95 years from publication,

          or 120 years from creation, whichever is

          first)

          PublishedUpon28 years67 years, second term

          1964–1977publication commenced automatically;

          with notice renewal registration optional

          PublishedUpon28 years67 years, if renewal was

          between 1923publication sought, otherwise these

          and 1963with notice works are in the public do-

          inclusive main

          Published before 1923: the work is now in the public domain

          Created, butOn 1/1/78,Unitary term of at least life plus 70 years,

          not published,when federalearliest expiration dates 12/31/2002 (if

          before 1978copyright dis-work remained unpublished) or

          placed state12/31/2047 (if work was published by the

          copyrightend of 2002)

          67

          Blank pages inserted to preserve pagination when printing double-sided copies.

          Chapter 4

          Ownership of Copyright

          The provisions of the Copyright Act that deal with the ownership of copyright are for the most part straightforward. They declare that the author of a work is the initial copyright owner; that joint authors are co-owners of copyright; that the employer in the case of a work made for hire is considered the author and is presumed to be the copyright owner; that copyright ownership of a contribution to a collective work is different from the copyright ownership of the collective work itself; that copyright may be transferred in whole or in part; and that copy-right ownership is distinct from ownership of the physical object in which the copyrighted work is embodied (a distinction discussed supra Chapter 1).146 What remains is to explicate these principles and also to consider the somewhat unusual provision of the Copyright Act that gives to an author who has transferred the copyright the power to ter-minate that transfer and recapture the copyright.

          Initial Ownership of Copyright

          Under section 201(a) of the Copyright Act, copyright ownership of a work vests initially in the author. The statute deals not only with works authored by an individual but also with works that are jointly authored and works that are prepared at the direction of others such as employ-ers and commissioning parties.

          Joint works

          If the work is a “joint work,” the authors are co-owners of the copy-right. The term “joint work” is defined in section 101 to mean “a work prepared by two or more authors with the intention that their contribu-tions be merged into inseparable or interdependent parts of a unitary whole.” If a popular song is created collaboratively by composer and lyricist, they are both regarded as co-owners of the copyright. If, how-

          

          146. 17 U.S.C. §§ 201, 202.

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          Copyright Law

          ever, the tune is written initially as a purely instrumental work without lyrics, is marketed that way, and the lyrics are added at a later date by a lyricist at the composer’s invitation, the work is not a “joint work” within the statutory definition.

          A work may be treated as a joint work under the Copyright Act even though the contributions of the collaborating authors are by no means equal, whether measured by quantity, quality, or commercial value. Even though, for example, the musical public may be enthralled by a song’s catchy melody and may have only the faintest recollection of the accompanying lyrics, both composer and lyricist will be treated as joint authors provided the statutory definition is satisfied. It is com-monly recognized, however, that to be a joint author one’s contribu-tion must be more than de minimis and must manifest original author-ship. Therefore a homebuyer who makes suggestions or provides frag-mentary sketches to an architect cannot claim joint authorship of the final and detailed architectural plans;147 an explanation by a business person to a computer programmer regarding the operations of the business and the desired functions to be performed through the pro-gram does not make the business person a joint author of the pro-gram;148 and a person does not become a joint author of a play merely by contributing factual research and general character suggestions.149

          In these situations, where there is a stark imbalance between the contributions of each of the two (or multiple) authors, the courts are concerned that a finding of joint authorship will result (as developed immediately below) in an equal sharing of the proceeds derived from the exploitation of the copyrighted work; before the “subordinate” author can make a convincing claim to such equal financial rewards, he or she must do more than contribute general ideas, suggestions or the like, and should bear the burden of protecting his or her financial

          

          147. Meltzer v. Zoller, 520 F. Supp. 847 (D.N.J. 1981).

          148. Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 609 F. Supp. 1307 (E.D. Pa. 1985), aff’d on other grounds, 797 F.2d 1222 (3d Cir. 1986).

          149. Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991). But see Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004) (comic book joint authorship). There is some question whether, to be a joint author, one’s creative contribution—no matter how detailed and substan-tial—must be fixed in a tangible medium of expression. Meltzer, 520 F. Supp. 847 (home-owner did not “fix” specific suggestions).

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          Chapter 4: Ownership of Copyright

          interests through a negotiated contract.150 There is also an apparent concern that a less demanding rule will too readily invite claims of joint authorship on the part of any number of persons who are in-volved in a collaborative creative enterprise (such as putting the final touches to the text of a play or screenplay), and who make minor sug-gestions that are adopted by the playwright or director.151 To rational-ize these safeguards, courts have come to adopt the approach that—in addition to the statutory requirement of a mutual subjective intention to merge contributions into a unitary work—it is also necessary, to create a joint work, that there be a mutual intention to share author-ship, as manifested by shared credit or billing and by shared approval over revisions, promotion and the like.152

          Although the copyright law has never expressly defined the nature of the co-ownership held by joint authors, courts through the years have treated joint copyright owners as tenants in common, each own-ing an undivided interest in the whole of the copyright. Each co-owner is therefore entitled to exercise all of the exclusive rights set forth in section 106 of the Act, or to license other persons to exercise those rights; but there is a duty to account to all other co-owners for their respective shares of the proceeds of authorized exploitation.153 Upon the death of a co-owner of copyright, his or her share passes pursuant to will or through the usual intestate channels; it is not automatically vested in the surviving co-owners.

          Thus, if Composer and Lyricist together write a popular song, ei-ther one of them may license the performance of the song or its re-cording onto a motion picture soundtrack, subject to a duty to account to the other for half of the proceeds (subject to any contractual agree-ment to share in some other proportion). If Composer dies, his half interest in the copyright will pass to his widow if she is named as lega-tee in the will, and not to Lyricist by way of survivorship.

          

          150. See Childress, 945 F.2d 500.

          151. Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994).

          152. Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998). See also Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000).

          153. Larson, 147 F.3d 195.

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          Copyright Law

          If, however, the song was not created as a “joint work” within the statutory definition—for example, because the melody is written one year and the lyrics are added years later—then Composer would own the copyright only in the tune, and Lyricist would own the copyright only in the words. Neither could exploit the entire song, or license a third person to do so, without securing the consent of the other—and the duration of copyright protection would be calculated separately for each of the two components.

          Works made for hire

          A most important concept in the area of copyright ownership is the “work made for hire.” If a biochemist employed by a pharmaceutical company prepares as part of her duties a technical manual on the company’s research and development procedures, the manual would be a clear example of a “work made for hire.” In such a case, section 201(b) of the Copyright Act declares that the employer rather than the creative human employee is considered the “author” for all purposes under the Act. Moreover, the employer is deemed to be the owner of the copyright unless the employer and employee agree otherwise in a signed writing.

          Because characterizing a work as one “made for hire” has implica-tions not only for ownership of copyright, but also for duration (as noted above, the “life-plus-70” formula does not apply) and other important aspects of the statute, it is useful to set out the statutory definition in section 101:

          A “work made for hire” is—(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supple-mentary work, as a compilation, as an instructional text, as a test, as an-swer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

          72

          Chapter 4: Ownership of Copyright

          The elaborate definition is a congressional reaction to the failure of the 1909 Act to define the phrase and to the confusion in much of the case law that had developed under that Act.154

          Despite the detail, the definition of “work made for hire” proved soon after 1978 to be a source of disagreement among a number of courts of appeals. In particular, there was confusion as to whether a commissioned work could become the equivalent of a work prepared by an employee when the commissioning party closely supervised the execution of the work by the independent contractor. A unanimous Supreme Court dispelled such a misconception in its 1989 decision in Community for Creative Non-Violence v. Reid,155 which involved conflicting ownership claims in a statue that was prepared by a sculptor at the request of a group devoted to advocacy of the rights of the homeless. The Court examined the 1976 Act’s structure, its purpose, and the underlying legislative and judicial history, and concluded that—absent compliance with the strict requirements in the second part of the definition of “work made for hire”—a work will be such only if it is created within the scope of employment by a person found to be an “employee” under the rules of agency commonly applied in tort cases. There is to be essentially an airtight differentiation of works by employees and works by independent contractors, and the latter must fall within both the subject-category and writing requirements to be works made for hire. The Court held that whether the “employee” standard is satisfied is a factual determination to be made on a case-by-case basis by examining a number of circumstances.

          In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party’s right to control the manner and means by which the product is accomplished. Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the

          

          154. For works created before 1978, the work-for-hire precedents under the 1909 Act will still govern. See Twentieth Century Fox Film Corp. v. Entm’t Distrib., 429 F.3d 869 (9th Cir. 2005); Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Con-temporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004).

          155. 490 U.S. 730 (1989).

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          right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. See Restatement [of Agency, Second]

          § 220(2) (setting forth a nonexhaustive list of factors relevant to deter-

          mining whether a hired party is an employee). No one of these factors is determinative.156

          The outcome in Reid is of great significance to many freelance writers and artists whose works do not fall within the “independent contractor” subject-matter categories of the statutory definition, or who have not stipulated in writing that their work has been made for hire. Because under Reid their works will be found not to be works made for hire, the freelancers (or their surviving family members) are given the power, as will be seen shortly below, after a substantial number of years to recapture the copyright from the putative “employer” and to assert all the rights of ownership. The power to terminate copyright transfers does not apply to works made for hire.157

          Although the Supreme Court, in Reid, stressed the importance of advance predictability in resolving questions of ownership, the multi-factor definition of “employee” that it borrowed from the Restatement of Agency is of course among the most elusive definitions in the law. Accordingly, courts of appeals have gradually come to identify those fewer elements that are the most important in applying the first part of the “work made for hire” definition: the hiring party’s right to control the manner and means of creation; the skill required; whether the hir-ing party has the right to assign additional projects; the provision of employee benefits; and the tax treatment of the hired party.158 More-over, under the statutory definition, even an “employee’s” creative

          

          156. Id. at 751–52 (citations and footnotes omitted).

          157. Nor are the artist-protective provisions of the Visual Artists Rights Act (section 106A of the Copyright Act) applicable to works made for hire. See Carter v. Helmsley-Spear, Inc., 71 F.3d 77 (2d Cir. 1995).

          158. Aymes v. Bonelli, 980 F.2d 857 (2d Cir. 1992) (emphasizing in particular the latter two factors).

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          Chapter 4: Ownership of Copyright

          work will not be a work for hire if it is prepared otherwise than “within the scope of employment,” and here too the pertinent definition is provided by the Restatement of Agency.159

          Collective works

          Another area of confusion under prior law had been the respective rights of, on one side, persons contributing articles to journals, maga-zines, encyclopedias, and other “collective works” and, on the other side, the person who owns copyright in the collective work. Section 101 of the 1976 Act defines “collective work” as “a work, such as a periodi-cal issue, anthology, or encyclopedia, in which a number of contribu-tions, constituting separate and independent works in themselves, are assembled into a collective whole.” Collective works are thus a species of “compilation,” and as with all compilations,160 a copyright in a col-lective work embraces only those elements of original authorship manifested therein, which may be no more than the choice of contri-butions and the sequence in which those contributions are published.

          Section 201(c) makes clear that copyright in an individual contri-bution vests initially in the author of that contribution and is distinct from copyright in the collective work as a whole. Absent an express written transfer from that author, the owner of copyright in the collec-tive work (e.g., the magazine) does not own the copyright in the indi-vidual contribution, but is presumed to have acquired “only the privi-lege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” The publisher cannot, there-fore, revise the contribution itself or publish it in an altogether differ-ent magazine.

          A significant question was decided in 2001 by the Supreme Court, interpreting the statutory language just quoted. In New York Times Co.

          v. Tasini,161 freelance authors had contributed articles to (and been

          

          159. Shaul v. Cherry Valley–Springfield Cent. Sch. Dist., 363 F.3d 177, 185–86 (2d Cir.

          2004); Avtec Sys., Inc. v. Peiffer, 21 F.3d 568 (4th Cir. 1994).

          160. See supra pages 32–40.

          161. 533 U.S. 483 (2001).

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          Copyright Law

          paid therefor by) newspapers and magazines, which had published those articles in hardcopy form. Nothing was said, orally or in writing, about the electronic publication rights because in many cases the In-ternet and the CD-ROM were not yet on the scene when the freelancers authorized publication. When, at a later date, the newspapers and magazines licensed the distribution of those articles online (in Lexis-Nexis, among other places) and on disks, the authors complained that they had never initially conveyed those rights and that they were thus entitled to new and separate compensation therefor. The respective rights of the publishers (the owners of copyright in the hardcopy col-lective works) and the authors turned upon whether the statutory pre-sumption that the former may make “any revision of that collective work” embraced the incorporation of the articles in digital compila-tions. The Supreme Court held for the authors. The Court found that the articles were individually searchable from among the thousands of articles in the electronic databases and could be retrieved by the user altogether out of the context of the hardcopy collective work, so that it was a distortion of language to find that the latter had merely been “revised.”

          Courts of appeals have differed, however, on the question whether there is an allowable “revision” under section 201(c) when the elec-tronic version visually reproduces the totality of the pages and journal issues as they appeared in the print version, including photographs, advertisements and the like.162

          Transfer of Copyright Ownership

          Copyright, like other forms of tangible and intangible property, can be transferred inter vivos or upon death from the author, or a subsequent copyright owner, and transferred again. This basic principle is affirmed in section 201(d)(1) of the 1976 Act, which provides: “The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or

          

          162. Compare Faulkner v. National Geographic Enters. Inc., 409 F.3d 26 (2d Cir. 2005), with Greenberg v. National Geographic Soc’y, 244 F.3d 1267 (11th Cir. 2001).

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          Chapter 4: Ownership of Copyright

          pass as personal property by the applicable laws of intestate succes-sion.”

          Under prior law, courts developed an important distinction be-tween an “assignment” of copyright, which carried the entire copyright to a person who then was known as the “proprietor” or owner of copy-right, and a “license,” which carried to another less than the entire copyright, for example, only the right to dramatize a novel or to pub-licly perform a musical composition. Copyright was generally said to be “indivisible,” in the sense that only one person at any given time could validly claim to “own” it. The concept of indivisibility and the distinction between an assignment and a license were important under the 1909 Act, because only the name of the “proprietor” could prop-erly be placed in the copyright notice (the insertion of the wrong name could thrust the work into the public domain), and only the “proprie-tor” could bring an action for copyright infringement.

          The 1976 Act made a significant break with the past when it aban-doned the concept of indivisibility of copyright ownership along with its more dubious ramifications. Section 201(d)(2) provides:

          Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be trans-ferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.

          Thus, a person who owns no more than an exclusive license to per-form publicly a dramatic work or a musical composition (but not to make or sell copies) is nonetheless regarded as the “owner” of that right. It is that person who can properly bring an action for infringe-ment of that particular exclusive right.163 The Copyright Act refers to the conveyance of either all rights or less than all rights as a “transfer,” and it eliminates the significance of characterizing a transfer as either an assignment or a license.

          

          163. Section 501(b).

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          Copyright Law

          Under current law, what is important in connection with copyright transfers is whether the transfer is exclusive or nonexclusive.164 Section 204(a) provides that “a transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” Because section 101 defines “transfer of copyright ownership” to in-clude both assignments and exclusive licenses, a grant of an exclusive license of any of the rights or subdivisions of rights in section 106 must be manifested in a signed writing if it is to be effective, by virtue of the copyright statute of frauds set forth in section 204(a). The grant of a nonexclusive license—for example, separate grants to several produc-tion companies to perform a dramatic work—will be valid even with-out a signed written memorial (although, of course, the practicing at-torney will routinely give or take such a license by written agreement). Such a transfer can often be inferred simply from the conduct of the parties, without any kind of writing.165

          In the interest of maintaining intelligible records relating to copy-right ownership, the Copyright Office not only registers initial (and renewal) claims of copyright but also records “any transfer of copyright ownership or other document pertaining to a copyright,” under section 205(a) of the Copyright Act. Recordation of a transfer of copyright in a registered work will provide constructive notice of the facts stated in the recorded document; and, much like a recording system for real estate, copyright recordation will protect the transferee of the copyright against subsequent conflicting transfers even to good-faith purchas-ers.166

          

          164. The influence of the old law, however, is still felt. For example, the Court of Appeals for the Ninth Circuit, incorporating doctrine developed under the 1909 Act, has held that the transferee of an exclusive right must, in order to make a valid retransfer of that right to a third party, give notice to and secure the assent of its own initial transferor. Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2003).

          165. Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (short footage was prepared at request of motion picture producer; for lack of a writing, this was found to transfer to the latter an implied nonexclusive license to incorporate the footage, and distribute it, as part of the film).

          166. Sections 205(c), (e), (f).

         Chapter 4: Ownership of Copyright

          Even when there is a valid transfer of an exclusive right—properly documented by a signed writing—there are many cases in which, after the passing of years and the development of a commercially remunera-tive new technology, the parties dispute whether the grant was meant to embrace the new technology. This first became an issue when dramati-zation rights were granted prior to the advent of motion pictures, and when film rights were granted prior to the advent of television. More recently, there have been disputes about whether the grant of film rights includes the right to make and distribute videocassettes and DVDs of the film, and whether magazine or book publishing rights embrace digital versions (online and in CD-ROM form). The principal complicating factor is that in most such cases the contract was made before the new technology was even known, let alone commercially widespread, so that it is something of a fiction to describe contract interpretation as a search for the parties’ “intentions.”

          The court decisions (placing weight more on contract analysis than analysis of the Copyright Act) do not form a consistent pattern: some courts emphasize the lack of awareness of the new technology and the obligation of the drafter (usually the large media company) to make its intentions clear;167 other courts emphasize that new technologies will ordinarily be facilitated through a contract presumption favoring trans-fer of rights.168 Most recently, book publishers have been found not to have taken transfers of the right to publish in the form of electronic books, so that several major authors were held to have acted lawfully when conveying “e-Book” rights to digital publishers.169 And a similar result was reached (as explained immediately above) by the Supreme Court in New York Times Co. v. Tasini,170 when the Court interpreted section 201(c) of the Copyright Act to give to a freelance author, rather

          

          167. E.g., Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1988) (music incorporated in motion picture, later distributed in videocassettes).

          168. E.g., Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481 (2d Cir. 1998) (Stravinsky’s transfer of music rights for Disney film Fantasia, later distributed in videocassettes) (relying on Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir. 1968)).

          169. Random House, Inc. v. Rosetta Books, L.L.C., 150 F. Supp. 2d 613 (S.D.N.Y.

          2001).

          170. 533 U.S. 483 (2001).

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          than to his or her newspaper or magazine publisher, the right to dis-tribute articles online and on CD-ROM, in the absence of an express contract to the contrary.

          Termination of Transfers

          An unusual and important feature of the 1976 Copyright Act is its grant to the author or to the author’s survivors of the power to terminate transfers of copyright. It will be recalled that the principal purpose of the renewal provisions of earlier U.S. copyright statutes was to give to authors the power at the end of the initial term of copyright to reclaim the copyright for a second term free and clear of any earlier transfers or encumbrances, and to afford authors an opportunity to renegotiate assignments and licenses with a better knowledge of the economic value of their works. It will also be recalled that the renewal right has been abolished for works created or first published on or after January 1, 1978, the term of copyright protection of which is now the life of the author plus 70 years. If, for example, a work is created in 1979 and the author transfers copyright in 1980, that copyright might continue— depending on when the author dies—for another 75 or 125 years, with-out any renewal term that can restore an unencumbered copyright to the author.

          Congress therefore decided to grant to authors and their survivors a power to recapture the copyright, similar to the right to claim the renewal copyright provided under the 1909 Act and its predecessors. The very elaborate provisions for the termination of transfers of copy-right are set forth in section 203. Given the background just recounted, the power to terminate under section 203 applies only to copyright transfers (and licenses), whether exclusive or nonexclusive, executed by the author on or after January 1, 1978. By serving a timely notice of termination, the author may effect such a termination—and recapture an unencumbered copyright—“at any time during a period of five years beginning at the end of thirty-five years from the date of execu-tion of the grant.” Mindful of the controversial Supreme Court deci-sion that held that the author could, during the initial term of copy-right, validly transfer his interest in the renewal term, Congress pro-

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          vided to the contrary in section 203(a)(5) with regard to the power to terminate transfers: “Termination of the grant may be effected notwith-standing any agreement to the contrary, including an agreement to make a will or to make any future grant.”171 Although the termination power is inalienable, it must be exercised in a timely manner, through the proper procedures, and by the proper persons announced in the statute; the transfer is not terminated automatically when 35 years have passed.

          Section 203 is detailed and complex, but its main points can be summarized here. The termination power does not apply to works made for hire, and it applies only to inter vivos grants made by the author (not by the author’s will, and not by the author’s widow, wid-ower or children). If the notice of termination is to be served after the author’s death, then the author’s surviving family members may termi-nate the author’s earlier grant, provided they can amass more than one half of the author’s termination interest as calculated pursuant to a statutory formula (e.g., the author’s widow would own one half of such termination interest, and each of three surviving children one sixth).

          Particularly significant is the provision, in section 203(b)(1), that

          A derivative work prepared under authority of the grant before its termi-nation may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.

          Thus, the copyright is not necessarily returned to the author or family altogether unencumbered. For example, assume that our hypothetical novelist transferred in 1980 an exclusive license to base a motion pic-

          

          171. The Court of Appeals for the Second Circuit held that, when an agreement settling a dispute about copyright ownership stipulated that the work had been “made for hire” many years before, this constituted an “agreement to the contrary” (because the termination power does not apply at all to works made for hire) and thus did not validly extinguish the author’s termination power. Marvel Characters, Inc. v. Simon, 310 F.3d 280 (2d Cir. 2002). But compare Milne ex rel. Coyne v. Stephen Slesinger, Inc., 430 F.3d 1036 (9th Cir. 2005) (1983 renegotiation by author’s heir revokes 1930 grant of Winnie the Pooh merchandising rights, and so deprives later heir of termination right under section 304(d) governing pre-1978 transfers).

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          ture on his novel, the motion picture is released in 1985, and the author terminates his transfer effective 2015. The motion picture pro-ducer (or its successor as copyright owner in 2015) may continue to exhibit and distribute the film thereafter, pursuant to the terms of the 1980 license. But the film producer may not after 2015 remake the film with a new cast; that would be an infringement of the author’s recap-tured copyright.

          It is appropriate at this point to mention that the statute contains a different provision for termination of transfers of copyright that were made prior to January 1, 1978. Recall that Congress, in enacting the 1976 Copyright Act, provided that works then in statutory copyright would have their term of renewal automatically extended from 28 years to 47 years (resulting in a total of 75 years of protection). Prior to the effective date of the statute, many persons had already transferred their renewal interests to third persons, with both parties believing that the renewal term would last for only 28 years. When Congress added 19 years to the renewal term, effective January 1, 1978, it also decided that persons who had previously transferred their renewal interests should be allowed to recapture those transfers at the end of 56 years from the initial date of copyright, so that the statutory “windfall” of the addi-tional 19 years could be enjoyed by the author or the author’s survi-vors, rather than by the then current owner of the renewal term.

          Section 304(c) therefore provides that “in the case of any copyright subsisting in either its first or renewal term on January 1, 1978, other than a copyright in a work made for hire, the exclusive or nonexclusive grant of a transfer or license of the renewal copyright or any right un-der it, executed before January 1, 1978”—by the author or by any of the statutory successors to the renewal term under the 1909 Act, other-wise than by will—is subject to termination, effective 56 years from the date copyright was originally secured. The details regarding the serving of notice, the persons entitled to do so, the inalienable but non-automatic nature of the termination right, and the like are essentially identical to those provided in section 203 for transfers made after Janu-ary 1, 1978.

          When Congress in 1998 added 20 years to the various copyright terms, it once again decided to address the issue of persons who had

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          transferred renewal interests prior to January 1, 1978, because neither such a transferor nor his or her transferee could have at that time fore-seen the extension of the renewal term from 28 years to what is now 67 years. Accordingly, section 304(d) provides that such a renewal-term transfer may be terminated (provided there has been no earlier termi-nation and recapture of the 19-year addition) in the same manner, by the same class of persons, and with the same consequences as under section 304(c), effective during the five-year period beginning at the end of 75 years from the beginning of the copyright term.172

          In 1985 a divided Supreme Court rendered a controversial decision regarding the language in sections 203 and 304 that provides that when a copyright transfer is terminated, derivative works lawfully prepared under contract prior to termination may continue to be utilized after termination. In Mills Music, Inc. v. Snyder,173 simplifying the facts slightly, a songwriter conveyed his interest in the initial and renewal terms of copyright to a music publisher, prior to January 1, 1978; the publisher in turn entered into licenses for the manufacture of phono-graph records and tapes of the song, with the license fees to be paid half to the publishing company and half to the songwriter. When the songwriter’s widow validly terminated the transfer of the latter part of the copyright renewal term, effective 56 years from the date of initial copyright, there was no doubt that the recording company could law-fully continue to manufacture and distribute recordings of the song. The question that remained was whether the termination entitled the widow to 100% of the recording royalties or whether the publishing company (no longer the copyright owner) remained entitled to 50% of those royalties. The Court majority held that the publishing company could continue to collect 50% of the recording royalties “under the terms of the grant after its termination,” in the language of the statute.

          

          172. See Milne, 430 F.3d 1036 (1983 agreement with author’s heir displaced author’s

          1930 transfer, so that neither could be terminated under section 304(d)).

          173. 469 U.S. 153 (1985).

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          Chapter 5

          Copyright Formalities

          In the slightly more than a decade between 1977 and 1989, no feature of U.S. copyright law was more dramatically changed than the law re-lating to the so-called formalities of copyright—notice, registration and deposit. Most notably, Congress, effective March 1, 1989, eliminated the requirement that the copyright owner give public notice of his or her claim of copyright, a requirement that had been a central feature of our law since 1790.

          Formalities Under the 1909 Copyright Act

          Because the drafters of the 1976 Copyright Act did not intend to restore to copyright works that had previously fallen into the public domain,174 it is imperative to understand the somewhat Byzantine rules that had developed under the 1909 Act for purposes of determining when a work had been “published” so as to precipitate the requirement to place proper notice on copies of the work. Litigation taking place even in the twenty-first century will no doubt continue to bring before the federal courts claims that the plaintiff’s copyright on a work created prior to January 1, 1978, was lost by failure to comply with the notice requirements of the 1909 Act.

          Under the 1909 Act, a work that was kept unpublished could be protected by state law against unauthorized copying, performance or other exploitation. State common-law copyright afforded to the author (or the author’s assignee) the right to publish a work for the first time. Once the work was published, state copyright protection was ousted, by virtue both of state law and of the federal statute. If such publication was accompanied by compliance with the federal statutory formali-ties—in particular the placement of proper notice on all copies dis-tributed to the public—federal copyright protection was afforded. Sec-tion 10 of the 1909 Act provided that

          

          174. Transitional and supplementary provisions, section 103.

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          Copyright Law

          Any person entitled thereto by this title may secure copyright for his work by publication thereof with the notice of copyright required by this title; and such notice shall be affixed to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor.

          Once federal copyright attached, it would last for 28 years from the date of publication, subject to renewal for another 28 years.

          If, however, the owner of common-law copyright published the work but failed to place a proper copyright notice on the distributed copies, this was generally regarded as fatal to the copyright. If the wrong name was placed in the notice (i.e., the name of someone other than the “proprietor” of copyright), or if the year of publication was materially inaccurate, or if either of those elements was omitted or the notice was omitted altogether, the work would be thrust irretrievably into the public domain. Moreover, if the notice—even though accurate in form and conspicuous—was placed on the work in a location other than that dictated by the statute, it could be expected that a court would hold that this too was a fatal error and that the work had fallen into the public domain.175

          “Publication”

          Determining when a work was “published” was thus crucial under the 1909 Act, for it served to determine three important features of copy-right protection: the demarcation between state and federal protection, the loss of all protection for failure to comply with federal formalities, and the beginning point from which the 28- or 56-year term of federal copyright was measured.

          As was the case with almost all such crucial language, the 1909 Act did not define “publication.” It was therefore left to the courts to define, and the courts—sometimes federal and sometimes state— generated a number of important interpretive rules. Perhaps most im-portant was the rule that only a “general publication” would divest a work of copyright protection, while a “limited publication” would

          

          175. See Robert A. Gorman & Jane C. Ginsburg, Copyright: Cases and Materials, Chap-ter 5A (7th ed. 2006).

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          not.176 The courts found a limited publication when a work was dis-seminated only to a limited group of persons for a limited purpose. A striking application of the doctrine was that of the Court of Appeals for the Ninth Circuit in Academy of Motion Picture Arts & Sciences v. Crea-tive House Promotions, Inc.177 In that 1991 decision, the court addressed the question whether the distribution of 159 Oscar statuettes by the Academy between 1929 and 1941—without notices of copyright— constituted a divestive general publication that thrust the familiar sculptural figure into the public domain. The court found that the Oscar was awarded only to a select group of persons, that the purpose was limited (to advance the art of motion-picture making), and that no recipient had the right of sale or further distribution. And in 1999, in Estate of Martin Luther King, Jr., Inc. v. CBS, Inc.,178 the Court of Ap-peals for the Eleventh Circuit, confronted with the question whether Reverend King lost the copyright on his epochal “I Have a Dream” speech, concluded that even Dr. King’s distribution of copies (without a copyright notice) to the news media was merely a “limited publica-tion” because that was for the purpose of enabling the reporting of a newsworthy event and not a distribution directly to the general public. These cases clearly demonstrate that the limited-publication doctrine is, as the court stated in Academy of Motion Picture Arts & Sciences, “an attempt by courts to mitigate the harsh forfeiture effects of a divesting general publication.”179

          Other examples of limited publications that would not, in all likeli-hood, have required the use of a copyright notice (there were no squarely authoritative judicial decisions) are the distribution of a manuscript to several magazine or book publishers for the purpose of soliciting expressions of interest, and the distribution of the professor’s own teaching materials to students in a university course.

          

          176. Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211 (11th Cir. 1999); Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 1446 (9th Cir. 1991).

          177. 944 F.2d 1446 (9th Cir. 1991).

          178. 194 F.3d 1211 (11th Cir. 1999).

          179. Academy of Motion Picture Arts & Sciences, 944 F.2d at 1452 (citing American Vita-graph, Inc. v. Levy, 659 F.2d 1023, 1027 (9th Cir. 1981)).

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          Copyright Law

          Another important aspect of the definition of “publication” that evolved under the 1909 Act was the prevailing view that the perform-ance of a work, no matter how many times to no matter how large an audience, would not constitute a publication that would divest the author of common-law copyright protection.180 The performance of a play, for example, every night to a packed house in a large theater would not be regarded as a divestive publication. The rule was also applied in the King case so as to preserve common-law copyright in the speech given by Dr. King to the 200,000 people in attendance and over radio and television broadcasts.181

          It therefore came to be understood that, in order for a work to be “published” for copyright purposes, tangible copies had to be distrib-uted, essentially indiscriminately, to any interested member of the pub-lic. If a work was thus distributed, the copies had to bear a proper no-tice, or else the work would fall into the public domain. It was there-fore generally understood that the exhibition of a painting or sculpture was not a divestive general publication, at least if the artist or gallery did not permit members of the public to photograph or make copies of the work.182 It was also held that the public distribution of phonograph records of a song did not constitute a divestive general publication, because the records were not eye-readable copies.183 This focus on eye-readability characterized the judicial interpretation of the 1909 Act in several important respects, though it has been essentially abandoned under the present Copyright Act. A few cases also raised the question whether the public exhibition of a motion picture or television film was

          

          180. Ferris v. Frohman, 223 U.S. 424 (1912).

          181. King, 194 F.3d 1211.

          182. Letter Edged in Black Press, Inc. v. Pub. Bldg. Comm’n of Chicago, 320 F. Supp.

          1303 (N.D. Ill. 1970).

          183. Rosette v. Rainbo Record Mfg. Corp., 354 F. Supp. 1183 (S.D.N.Y. 1973), aff’d per curiam, 546 F.2d 461 (2d Cir. 1976). In a striking departure, the Court of Appeals for the Ninth Circuit held in 1995 that the distribution of phonorecords did constitute a dives-tive publication under the 1909 Act. La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir. 1995). Congress within two years overruled that decision by adding section 303(b) to the Copyright Act: “The distribution before January 1, 1978, of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein.”

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          to be regarded as a divestive general publication, and it was usually held that such exhibition (like a performance) was not.184

          It has been a widespread misconception that copyright attaches to a work only when registration of the copyright is secured with the Copyright Office. Registration was not, under the 1909 Act (and is not today), a prerequisite of a valid copyright. All that was necessary to secure copyright in a published work under the 1909 Act was that a proper notice be placed on all publicly distributed copies. At that point, federal protection attached and the copyright owner could val-idly enter into transactions involving the copyright, such as assign-ments and licenses. Registration was, however, a prerequisite for the commencement of an action for copyright infringement,185 and regis-tration for an initial copyright term was a prerequisite for a valid re-newal application.

          Copyright Notice Under the 1976 Act

          Upon the effective date of the 1976 Copyright Act, January 1, 1978, the drastic consequences of failing to place a copyright notice on pub-lished works were initially ameliorated and ultimately eliminated alto-gether. From January 1978 through February 1989, notice was still re-quired, but neither mistakes in nor complete omission of notice thrust the work into the public domain, and reasonable steps could be taken by the copyright owner to preserve the copyright. Since March 1, 1989, when the Copyright Act was further amended in order to permit United States adherence to the Berne Convention, the notice requirement has been eliminated completely for works published on or after that date.

          Under the 1976 Act, federal copyright attaches to a work immedi-ately upon its “creation,” i.e., its manifestation in a tangible medium of expression; common-law copyright is preempted and “publication” no longer serves as the dividing line between state and federal protection. Nonetheless, the federal protection that attaches once a work was fixed could—under the 1976 Act as originally enacted—be forfeited if proper copyright notice was omitted when the work was later “published.”

          

          184. See, e.g., Burke v. NBC, 598 F.2d 688 (1st Cir. 1979).

          185. See Washingtonian Publ’g Co. v. Pearson, 306 U.S. 30 (1939).

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          Copyright Law

          Both the act of “publication” and the requirement of notice thus con-tinued to be significant under the 1976 Act.

          “Publication”

          Unlike the 1909 Copyright Act, the 1976 Act defines “publication”:

          “Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or pub-lic display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

          “Publication” still requires an authorized distribution to the public, but the work may be distributed either in the form of “copies” that appeal to the eye or of “phonorecords” that appeal to the ear. More-over, as was the case under the 1909 Act, neither public performance nor public display in itself constitutes the kind of publication that re-quires the use of a copyright notice. The statute also defines a “public” display or performance, a definition that can provide some guidance in determining whether a “distribution” of copies or phonorecords is “to the public”; this would contemplate a distribution to members of the public generally or to a substantial number of persons “outside of a normal circle of a family and its social acquaintances.” The distribu-tion of a manuscript to a number of magazines for the purpose of gen-erating an offer to print would most likely not be a publication, but the status of a distribution of teaching materials to a large class is some-what unclear.

          The notice requirement

          In any event, given an authorized distribution of a work to the public in the form of copies, section 401 of the 1976 Act as originally enacted required that copyright notice be placed on each copy in order to pre-serve the copyright. Section 401(a) provided:

          Whenever a work protected under this title is published in the United States or elsewhere by authority of the copyright owner, a notice of

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          copyright as provided by this section shall be placed on all publicly dis-tributed copies from which the work can be visually perceived, either di-rectly or with the aid of a machine or device.

          Section 401(b) prescribes the form of notice; it is the familiar or the word “Copyright” (or “Copr.”) plus the year of first publication and the name of the copyright owner. Section 401(c) announces a far more flexible set of rules than under the 1909 Act for the placement of the notice: it “shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright.”

          Section 402 announces comparable rules for what is known as a “P notice” ( ), which is to be affixed to phonorecords that are distributed to the public, as a way of signaling that there is a claim of copyright in the sound recording as distinguished from the musical or literary work that is performed on the recording.

          Before discussing the potential adverse effects of failure to comply with the notice provisions of sections 401 and 402, it is essential to point out that the mandated notice applies only to copies and phono-records distributed to the public between January 1, 1978, and Febru-ary 28, 1989. On March 1, 1989, the Berne Convention Implementation Act of 1988 went into effect. In order to make our law compatible with the Berne Convention, which forbids making compliance with formali-ties a condition of enjoying copyright protection, Congress for the first time eliminated the mandatory notice provisions of our law.186 This was accomplished by replacing the phrase “shall be placed” in sections 401 and 402 with the phrase “may be placed.” The amended statute gives the copyright owner only one explicit incentive to place a copy-right notice on copies and phonorecords distributed after March 1, 1989: a defendant copying such a work will be unable to claim that it is an “innocent infringer” entitled thereby to reduced liability for dam-ages.

          

          186. See Kahle v. Ashcroft, 72 U.S.P.Q.2d 1888 (N.D. Cal. 2004) (rejecting constitu-tional challenge to elimination of notice requirement). But the elimination of this formal-ity is not retroactive. The rules relating to copyright notice for the 11-year period under discussion are preserved. See 17 U.S.C. §§ 405(a) & 406(a).

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          Effect of noncompliance for 1978–1989 publications

          An omission of copyright notice on works distributed prior to January 1, 1978, is generally fatal to the copyright, whereas an omission on or after March 1, 1989, is of very limited significance. Only for copies distributed in the intervening 11 years are the mandatory-notice provi-sions of the 1976 Act important.

          The consequences of noncompliance with those provisions are set forth in sections 405 and 406. Under section 405, a complete omission of notice from copies or phonorecords distributed by authority of the copyright owner does not invalidate the copyright if “the notice has been omitted from no more than a relatively small number” of such copies or phonorecords, or if the notice was omitted in violation of an express written agreement by which the copyright owner made the use of the notice a condition of the authority to distribute. Most significantly, section 405(a)(2) permits a copyright owner to “cure” the omission of notice from more than a “relatively small” number of cop-ies or phonorecords, provided two steps are taken: (1) registration for the work is made prior to, or within five years after, publication with-out notice; and (2) “a reasonable effort is made to add notice to all copies or phonorecords that are distributed to the public in the United States after the omission has been discovered.” If, after the distribution without notice, registration is not secured within five years or reason-able efforts are not made to add notice to later-distributed copies or phonorecords, the copyright is invalidated and the work falls into the public domain.

          For instances in which the copyright owner’s omission of notice was not fatal, Congress saw a need (during the period January 1, 1978, to February 28, 1989) to protect a person innocently relying on that omission of notice in copying or otherwise exploiting the work in ques-tion. Under section 405(b), such an innocent infringer is sheltered against an award of damages resulting from infringing acts committed before receiving actual notice that the copyright has been timely regis-tered; however, even such an innocent infringer may be required to disgorge all or part of its profits and is subject to an injunction for the future.

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          Chapter 5: Copyright Formalities

          On occasion, a copyright owner will attempt to comply with the notice provisions of the 1976 Act but will make an error or omission with regard to one component. Section 406 deals with the implications of such an error or omission in the name or date alone. The general framework is to protect a person who acts innocently in reliance upon the mistaken name; to use an erroneously early date as the measuring rod for copyright where the publication date is pertinent; and to treat an erroneously late date (by more than one year) as equivalent to a total omission of copyright notice—which will be fatal to the copyright unless cured within five years, a rather harsh sanction for an error that is typically of negligible significance in the administration of the copy-right system.

          Such oversights—by way of errors in the notice, or its total omis-sion—manifested on copies and phonorecords distributed on or after March 1, 1989, will not result in any loss of copyright and will not give rise to any “innocent infringer” defenses (apart from possibly reducing the defendant’s exposure to damages in a very limited number of cir-cumstances). The elimination of the notice requirement thus imposes a responsibility on putative copyists to investigate in the Copyright Office—or to inquire of author or publisher—to determine the status of recently published works that lack copyright notice. Despite this highly significant, and favorable, change in the law concerning copy-right formalities, publishers have continued since 1989 to use copyright notices in any event, both because of human and institutional inertia and because the notice inexpensively serves the useful function of sig-naling that the work is in copyright and that copyists should beware (or secure a license).

          Deposit and Registration

          Much less need be said about the other two elements of formalities that have been a fixture of our copyright law since the beginning of the twentieth century: deposit and registration. In the interest of maintain-ing a full collection in the Library of Congress, section 407 of the 1976 Copyright Act—unaffected by the 1988 Berne Implementation Act— requires the copyright owner to deposit with the Copyright Office,

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          within three months after publication of a work, two copies or phono-records of the “best edition” (subject to some exemptions). If no de-posit is made, the Register of Copyrights may make a written demand for such deposit, and continued failure of the copyright owner to com-ply may result in a fine. Failure to make the required deposit will not, however, invalidate the copyright. There is, in any event, no require-ment to deposit copies of unpublished works.

          As distinguished from the requirement of deposit of copies of a published work, there is no requirement that the copyright owner regis-ter the copyright in the Copyright Office; registration is optional. Under section 408, a registration application may be filed with respect to ei-ther a published or unpublished work by “the owner of copyright or of any exclusive right in the work,” and is to be accompanied by the ap-plication fee (presently $30) and the deposit of copies or phonorecords of the work. A deposit made in compliance with the statutory require-ment of section 407 also satisfies the deposit provision of section 408 relating to registration.

          Although registration is not a condition of a valid copyright, it has been a prerequisite for the commencement of an infringement action, both under the 1909 Act and the 1976 Act as originally enacted.187 The 1976 Act contains other incentives for the copyright owner to apply for registration:

          (1) if registration is made within five years after first publication of the work, the certificate issued by the Copyright Office shall, in an infringement action, “constitute prima facie evidence of the

          validity of the copyright and of the facts stated in the certificate”;188 and

          (2) in an infringement action, prompt registration is a condition to an award of attorneys’ fees and, even more significantly, of statutory damages, which can be as high as $30,000 (and as high as $150,000 for willful infringement) for each work in-

          

          187. See Washingtonian Publ’g Co. v. Pearson, 306 U.S. 30 (1939); 17 U.S.C. § 411(a).

          188. 17 U.S.C. § 410(c).

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          fringed even in the absence of specific proof of actual damages or profits.189

          The Berne Convention Implementation Act (BCIA),190 effective March 1, 1989, made a significant change in the registration provisions of the Copyright Act. Because there was serious doubt that making registration a condition of an infringement action was consistent with the Berne Convention, Congress decided to eliminate such a condition with respect to “Berne Convention works whose country of origin is not the United States,” i.e., for works initially published in some other nation that adheres to the Berne Convention. Because the Berne Convention does not require any adhering nation to abolish formalities (as a condition on the enjoyment of copyright) for works published domestically, the 1976 Act as amended by the BCIA still requires, in section 411(a), that registration be made as a condition of an infringement action relating to a work first published in the United States. Whatever the country in which a work is first published, prompt registration—even though permissive—will continue to provide significant advantages for copyright owners, particularly with respect to proof and remedies in infringement actions.

          Because copyright exists from the moment a work is fixed regard-less of registration with the Copyright Office, and because the registra-tion-before-suing requirement is merely to foster somewhat greater completeness of registration files (despite the nonregistration of vast numbers of protected works), it would seem that courts might well be tolerant of minor shortfalls in plaintiff compliance. Nonetheless, recent cases show that courts have been demanding. The Court of Appeals for the Second Circuit, for example, has held that registration by the plain-tiff of its 20-inch doll will not avoid dismissal of an action for the copy-ing of its 48-inch version, which was not registered.191 The court has also held the registration of a journal will not provide jurisdiction to sue for infringement of an article that was included therein when the

          

          189. Id. §§ 412, 504(c).

          190. Pub. L. No. 100-568, 102 Stat. 2853 (1988).

          191. Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112 (2d Cir. 2003).

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          copyright is owned by another person.192 The courts are sharply di-vided on the question whether the registration prerequisite is satisfied “the moment that the plaintiff delivers the fee, deposit and application to the Copyright Office,” or whether the Office must in fact have acted upon the application by actually granting or denying registration.193

          Section 410(b) of the 1976 Copyright Act expressly authorizes the Register of Copyrights to refuse to register a work, provided the appli-cant is notified of the reasons therefor. Although no intensive scrutiny of the “prior art” is carried out in the Examining Division of the Copy-right Office—in contrast to the search undertaken in connection with patent applications—the Register will on occasion refuse to issue a certificate of copyright. For example, he or she may determine that the work lacks original authorship (such as in the case of blank forms or slogans) or that it comprises solely uncopyrightable subject matter (such as useful articles having no separable decorative elements). Sec-tion 411(a) of the 1976 Act allows a person making an application for registration to institute an infringement action despite the Register’s refusal, provided that the applicant gives notice thereof to the Register, who may then intervene to challenge the validity of the copyright.

          

          192. Morris v. Business Concepts, Inc., 323 F.3d 502 (2d Cir. 2002).

          193. The authorities are discussed in Corbis Corp. v. Amazon.com, 351 F. Supp. 2d 1090, 1111 (W.D. Wash. 2004) (quoting Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315 F. Supp. 2d 1053, 1054–55 (C.D. Cal. 2004)).

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          Chapter 5: Copyright Formalities

          Formalities Under the 1909 Act and Under the 1976 Act Before and After Berne Convention Implementation Act

          Work published

          before 19781978–Feb. 1989After Feb. 1989

          NoticeFederal copyrightAffixation of noticeOptional:

          arose upon publica-perfected protection;incentive—

          tion with notice; if nofive years to cureunavailability of

          notice, work fell intoomissions, otherwiseinnocent

          public domain.work fell into publicinfringer defense.

          domain.

          RegistrationOptional until lastOptional, but prereq-Optional for non-

          year of first term;uisite to initiation ofU.S. Berne and

          mandatory for re-suit. Incentives:WTO works;

          newal of works firststatutory damagesremains prereq-

          published beforeand attorney’s feesuisite to suit for

          1964; prerequisite tonot available unlessU.S. and other

          initiation of in-work was registeredforeign works.

          fringement suitbefore infringementSame incentives

          during both terms ofcommenced.apply.

          copyright.

          DepositPrerequisite to suit;Same.No longer a pre-

          in addition, fines may requisite to suit

          be imposed for fail- for non-U.S.

          ure to deposit copies Berne works; but

          with Library of Con- fines may still be

          gress. imposed.

          RecordationUnrecorded transferSame, plus a prereq-No longer a pre-

          of Transfersvoid against subse-uisite to suit.requisite to suit;

          quent good faith unrecorded trans-

          purchaser for value. fers still void

          against subse-

          quent good faith

          purchasers for

          value.

          97

          Blank pages inserted to preserve pagination when printing double-sided copies.

          Chapter 6

          Exclusive Rights of the Copyright Owner

          (herein of Infringement)

          Perhaps the most significant provisions of the Copyright Act are found in section 106, which sets forth the exclusive rights of the copyright owner. Anyone who violates any of those rights is (by virtue of section

          501) “an infringer of the copyright.” Section 106 gives the owner of copyright

          the exclusive rights to do and to authorize any of the following:

          (1) to reproduce the copyrighted work in copies or phonorecords;

          (2) to prepare derivative works based upon the copyrighted work;

          (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

          (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

          (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

          (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

          It should be noted that the copyright owner has the exclusive right not only to do the listed acts but also to authorize others to do them. Thus, if A owns the copyright in a novel, which is published by B, and B (without A’s consent) authorizes producer C to make a motion pic-ture based upon the novel, when C’s film is later released A can bring infringement actions against both B and C. The Supreme Court has, in effect, concluded that this “authorize” language furnishes the basis for incorporating into copyright law the principle of contributory in-

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          fringement.194 Note also that although a work to be eligible for copy-right protection must be fixed in tangible form, unauthorized conduct can infringe even though it does not involve a fixing of the work by the defendant—for it may be by public sale, performance or display. Most obviously, for example, a copyrighted song or play can be infringed by an unauthorized (and “unfixed”) public performance in a theater.

          The first three listed exclusive rights—reproduction, preparation of derivative works, and public distribution—are applicable to all forms of copyrightable works listed in section 102(a). The next two listed rights—public performance and public display—are, by their nature, applicable only to certain categories of copyrightable works, and those categories are expressly set forth in sections 106(4) and (5). For exam-ple, the right of public performance attaches to musical works but not to sound recordings; that means that an unauthorized public playing by a disk jockey in a nightclub of a recording of a copyrighted song will constitute an infringement of the song but not of the sound record-ing, so that the songwriter–author will have legal redress but the record manufacturer and performer will not. If, however, the public playing of the recorded song is “by means of a digital audio transmission,” such as from a website on the Internet, then this is among the exclusive rights of the sound-recording copyright owner, by virtue of a 1995 amendment that added section 106(6) to the Copyright Act.

          All of the exclusive rights in section 106 are subject to the provi-sions in sections 107 through 122. Those provisions exempt from liabil-ity a wide range of reproductions, derivative works, and the like that would otherwise constitute infringements, particularly for nonprofit, charitable or educational purposes. These exemption provisions will be discussed in some detail in Chapter 7.

          

          194. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 435 & n.17 (1984) (manufacturer-seller of videotape recorder is not contributorily liable for home taping of copyrighted television programs, which is fair use under the circumstances). See Columbia Pictures Indus. v. Aveco, Inc., 800 F.3d 59 (3d Cir. 1986). For more recent developments concerning secondary infringement, see infra pages 131–37.

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          The Right of Reproduction

          The first U.S. copyright act, enacted in 1790, forbade unauthorized printing of copyrighted works. Today, the equivalent right, afforded by section 106(1) of the 1976 Act, is the right “to reproduce the copy-righted work in copies or phonorecords.”

          Reproduction in copies or phonorecords

          Copies and phonorecords are the tangible forms in which reproduc-tions of a work can be made; copies communicate to the eye while phonorecords communicate to the ear. More precisely, “phonore-cords” are defined in section 101 as “material objects in which sounds

          . . . are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise commu-nicated, either directly or with the aid of a machine or device.” “Cop-ies” are defined as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” The owner of copyright in a musical composition has the exclusive right, therefore, to make “copies” in the form of music notations in-tended for piano or for orchestra, as well as to make “phonorecords” that can be activated by a playback device such as an audiotape-player or compact disk player. A significant reason for distinguishing copies and phonorecords relates to the proper form of optional copyright

          notice—with the notice on copies, and the notice (for the sound recording) on phonorecords.

          The application of the word “copy” as used in section 106(1) has

          kept up with the advent of new technologies. Thus, if unauthorized copies are generated through the use of a fax machine, that will in-fringe.195 So too, if a copyrighted photograph is scanned, without per-mission, from a magazine into a computer for storage in a hard-drive or on a website, that will generate a copy and an infringement; the unauthorized transmission of that digitized photograph to others is

          

          195. Pasha Publ’ns, Inc. v. Enmark Gas Corp., 22 U.S.P.Q.2d 1076 (N.D. Tex. 1992).

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          treated as a distribution of copies that has been held unlawful under section 106(3).196 The Supreme Court in 2005, in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,197 involving so-called peer-to-peer file-sharing of music recordings through the Internet, assumed—as did even the defendants who made available the file-sharing software—that the private users of computers for downloading were making illicit copies. This was directly so held, soon after, by the Court of Appeals for the Seventh Circuit.198 There is disagreement in the scholarly litera-ture as to whether the more transient storage of a work in the random access memory (RAM) of a computer—as is done in the case of an operating-system program when a computer is simply switched on— constitutes the making of a “copy.” But the fact that Congress has thought it necessary to write certain narrow exemptions for RAM copy-ing in section 117 of the Copyright Act points clearly toward a congres-sional understanding that such copying would otherwise be infringing under section 106.199

          Proving copying and infringement

          The exclusive right to “reproduce” the copyrighted work—which in-volves copying—is more confined than the patent right, which can be infringed even by a product or process that has been developed wholly independent of, and has not been copied from, the patented invention. Perhaps the best-known discussion of proof of copyright infringement is found in Arnstein v. Porter,200 decided by the Court of Appeals for the Second Circuit in 1946. Judge Frank there stated, “[I]t is important to avoid confusing two separate elements essential to a plaintiff’s case in such a suit: (a) that defendant copied from plaintiff’s copyrighted

          

          196. Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997); Phil-lips v. Kidsoft, L.L.C., 52 U.S.P.Q.2d 1102 (D. Md. 1999).

          197. 125 S. Ct. 2764 (2005).

          198. BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005) (finding infringement in unauthorized downloading of more than 1,300 songs, despite defendant’s claim of fair use). See also A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001).

          199. See 17 U.S.C. §§ 117(a), (c); MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993).

          200. 154 F.2d 464 (2d Cir. 1946).

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          work and (b) that the copying (assuming it to be proved) went so far as to constitute improper appropriation.”201 Proof of copying can be found, said the court, either in defendant’s admission or, as is almost uniformly the case, by circumstantial evidence—usually evidence of access and similarity—from which the trier of fact may reasonably infer copying. Of course, if there are no similarities, no amount of evidence of access will suffice to prove copying. If there is evidence of access and similarities exist, then the trier of fact must determine whether the similarities are sufficient to prove copying. On this issue, analysis (“dis-section”) is relevant, and the testimony of experts may be received to aid the trier of fact.

          Although “similarity” is an element of both stages of the Arnstein test for infringement, the purposes and scope are different. At the first stage, similarity is used for the purpose of determining whether there has been copying. The similarities between the two works need not be extensive, so long as they are “probative” of copying: for example, the Rural Company planted four fictitious directory entries in its white-page telephone directory, and these entries then showed up in the Feist directory, which obviously negated independent creation.202 On the other hand, the similarities that are necessary to make out an illicit taking, at the second stage, must be “substantial” as measured either qualitatively or quantitatively.

          In proving copying through the use of circumstantial evidence, there is sometimes said to be an inverse proportion between the weight of proof of access and of similarity: the less likely it is that the defen-dant had access to the plaintiff’s work, the more convincing must be proof of similarities in the two works; the fewer the similarities, the more compelling must be the proof of access. An inference of copying can be drawn even in the absence of specific evidence of access if the similarities between the plaintiff’s and defendant’s works are found to be “striking.” As the Court of Appeals for the Seventh Circuit has

          

          201. Id. at 468.

          202. Feist Publ’ns, Inc. v. Rural Tel. Serv., 499 U.S. 340 (1991). See generally Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357 (5th Cir. 2004), and Laureyssens v. Idea Group, Inc., 964 F.2d 131 (2d Cir. 1992), for thoughtful discussions of “probative similarity” and its implications.

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          stated: “A similarity that is so close as to be highly unlikely to have been an accident of independent creation is evidence of access. . . .

          Access (and copying) may be inferred when two works are so similar to each other and not to anything in the public domain that it is likely that the creator of the second work copied the first, but the inference can be rebutted by disproving access or otherwise showing independ-ent creation.”203

          In any event, proof of copying is not sufficient to make out a case of infringement. The plaintiff must also prove that what has been cop-ied is substantial in degree; only then, in the words of the Arnstein decision, is the copying illicit and the appropriation unlawful. Al-though Arnstein acknowledged that expert witnesses, through dissection of the two compared works, may usefully contribute to an understand-ing by the trier of fact as to the similarities for the purpose of determin-ing copying, such expert dissection is essentially regarded as irrelevant on the second issue, as to which “the test is the response of the ordi-nary lay hearer.”204 In a later case involving claimed infringement of a fabric pattern, Learned Hand stated that the perspective in determining whether the alleged infringing work is “substantially similar” to the copyrighted work must be that of “the ordinary observer.”205 If the parties’ works are intended for purchase or appreciation by a particular audience—such as choir directors or even very young children—the question of substantial similarity is to be addressed with those persons in mind.206

          Under this universally accepted two-step approach to proof of infringement,207 it might be found that although the defendant did copy

          

          203. Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167 (7th Cir. 1997).

          204. Arnstein, 154 F.2d at 468.

          205. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). See also Steinberg v. Columbia Pictures Indus., Inc., 663 F. Supp. 706 (S.D.N.Y. 1987).

          206. Dawson v. Hinshaw Music, Inc., 905 F.2d 731 (4th Cir. 1990) (religious musical arrangement); Lyons P’ship, L.P. v. Morris Costumers, Inc., 243 F.3d 789 (4th Cir. 2001) (animal costumes purchased by adults for the entertainment of children).

          207. Other courts have sometimes utilized a different form of two-step infringement analysis, involving the application of so-called extrinsic and intrinsic tests. The source of that approach is Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977). This test is rather confusing and misleading, has been applied

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          from the plaintiff’s copyrighted novel, song or fabric design, proof of substantial similarity is lacking, so that there is no infringement. This would occur, for example, if the defendant copied only isolated and minor elements that did not create an appearance of similarity when viewed or heard by a typical member of the audience to whom the two works are addressed. In these cases, the doctrine of de minimis would apply.208 An example would be a case in which a short, even perhaps copyrightable, pattern in a recorded song is digitally duplicated, or “sampled,” on another recording.209

          Relatedly, even if the defendant has recognizably copied from the plaintiff’s copyrighted work, there is no infringement if he or she has copied only elements that are themselves unprotected by copyright. Thus, anyone is free to copy concepts, methods, and systems described in the plaintiff’s work, and to express them in his or her own words, for such concepts, methods, and systems fall outside the protection of copyright by virtue of section 102(b) of the Copyright Act. The same is true when the defendant copies such unprotectible elements as com-monplace phrases, or language that is in the public domain. As the Supreme Court observed in a case involving copyright protection for fact-based directories,210 copyright may protect the original pattern in which the facts are organized but the facts themselves are in the public domain and free for all to use. The Court stated:

          As applied to a factual compilation, assuming the absence of original [prose] expression, only the compiler’s selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.211

          

          inconsistently, and in any event largely reduces itself to an analysis very much like that in Arnstein.

          208. See Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997), for a thorough discussion of the variant uses of the de minimis doctrine in copyright.

          209. Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003). But see Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) (de minimis doctrine inapplicable to sampling of music recordings).

          210. See Feist Publ’ns, Inc. v. Rural Tel. Serv., 499 U.S. 340 (1991).

          211. Id. at 350.

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          Copyright Law

          If protectible expression has been substantially copied, it is not a defense that the copying was done unknowingly; like trespass in the law of real property, even unintended encroaching upon another’s copy-right is unlawful. This principle takes two forms. First, if B takes to publisher C a work actually written by copyright owner A, and B repre-sents to publisher C that B is the author and copyright owner, C’s pub-lication of the work will infringe A’s copyright, no matter how honestly C may have believed that B was the true copyright owner.212 Obviously, C is in a better position than A to protect its rights, either through a copyright search, insurance, or contractual indemnity arrangements with B. Second, one may infringe even through “unconscious” copy-ing. In a well-known case,213 then-former Beatle George Harrison was found to have written a song essentially identical to a popular song written by another, through assimilation of the earlier song in Harrison’s subconscious. Although the court found the copying was not deliberate, it concluded that infringement “is no less so even though subconsciously accomplished.”214

          Idea versus expression

          Recall that there is no infringement when one copies unprotectible ideas from another—as distinguished from protectible “expression.” The distinction between idea and expression is perhaps the most elu-sive of all lines in copyright jurisprudence. As Learned Hand has stated: “Obviously, no principle can be stated as to when an imitator has gone beyond copying the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore inevitably be ad hoc.”215

          

          212. De Acosta v. Brown, 146 F.2d 408 (2d Cir. 1944).

          213. Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y.

          1976).

          214. Id. at 181. See also Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000). The principle of “subconscious infringement” was endorsed by Learned Hand in Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936), perhaps as a means of avoiding a finding that the defendant’s executives had been less than truthful when denying copy-ing.

          215. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960).

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          In cases involving literary works, copyright protection would, of course, be trivialized were it limited to no more than the precise se-quence of the author’s words, or were it even extended to embrace no more than very close paraphrase. It is undisputed that copyright also protects the details and sequences of plot, story line, and character development, but that it does not protect the author’s more general themes. Hand is once again the source of eloquent insight:

          [W]hen the plagiarist does not take out a block in situ, but an abstract of the whole, decision is more troublesome. Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since oth-erwise the playwright could prevent the use of his “ideas,” to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can.216

          In the case from which this observation is taken, Nichols v. Univer-sal Pictures Corp., Judge Hand concluded that a very popular copy-righted play, Abie’s Irish Rose, was not infringed by the defendant’s motion picture The Cohens and the Kellys. The only story elements that were similar (and that were, for purposes of decision, assumed to have been original with the plaintiff and copied by the defendant) were a conflict between Irish and Jewish fathers, the marriage of their chil-dren, the birth of a grandchild, and the reconciliation of the elders. The court characterized these elements as “too generalized an abstrac-tion . . . only a part of [the playwright’s] ‘ideas.’”217 The plaintiff also failed in her claim that her characters, isolated from the story line, were infringed; the court found them to be stock characters, too vaguely drawn for protection.

          A court’s determination that a plot or a character is an unprotecti-ble “idea” reflects its conclusion that the plot or character is so skeletal or fundamental that to protect it by copyright would “fence off” too

          

          216. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).

          217. Id. at 122.

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          great a preserve for the plaintiff and would inhibit the creative use and embellishment of such plot or character by other authors. For the same reason, copyright does not extend to simply recorded facts, to commonplace phrases, or to what are known as scènes à faire, i.e., plot incidents that are commonplace or stock or that are necessarily dic-tated by a story’s general themes (such as soldiers nervously partying on the eve of battle, or the exchange of salutes between military per-sonnel).218

          The same approach to the idea–expression dichotomy is found in cases involving pictorial, graphic, or sculptural works.219 Copyright does not extend to commonplace designs, lest others be forbidden— potentially for more than a century—to borrow these “building blocks” on which to base other creative works. In ruling that a jewelry designer could not preclude another from copying his jeweled pin in the shape of a bee, a court stated:

          The guiding consideration in drawing the line is the preservation of the balance between competition and protection reflected in the patent and copyright laws.

          What is basically at stake is the extent of the copyright owner’s mo-nopoly—from how large an area of activity did Congress intend to allow the copyright owner to exclude others? We think the production of jew-eled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an “idea” that defendants were free to copy.220

          A contrary outcome was reached by Judge Learned Hand, in a decision usually contrasted with his decision in Nichols. He found in-fringement in Sheldon v. Metro-Goldwyn Pictures Corp.,221 because the defendant’s motion picture had copied too many detailed plot inci-dents and scenes from the plaintiff’s play. Whether or not those inci-dents or scenes were protectible “expression” when each was consid-

          

          218. Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989); Hoehling v. Universal City Stu-dios, Inc., 618 F.2d 972 (2d Cir. 1980).

          219. But see Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005) (find-ing the dichotomy inapplicable to photographic works).

          220. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971).

          221. 81 F.2d 49 (2d Cir. 1936).

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          ered separately, their sequential grouping—and thus the detailed story-telling—was deemed protectible by copyright.

          Similar tests for distinguishing idea and expression have been ap-plied in all varieties of copyrighted works, including computer pro-grams. The tasks to be accomplished by a computer program, either in driving the computer hardware or in effecting a particular external result (such as creating the sights and sounds of a video game, or ac-complishing word-processing tasks) are not subject to copyright pro-tection; they are methods or systems that can be protected, if at all, only by satisfying the more rigorous demands of the patent system. On the other hand, the exact or very close copying of computer-program code—whether in human-readable source code or in object code (a string of ones and zeroes) intended to be “read” by and to operate the computer—will constitute an infringement of copyright.222 As is true in literature, music and art, difficult questions can arise in drawing the line for infringement at various places in between a program’s overall purpose and its literal code; there is no question, however, that the fact that computer code is shaped by uniquely functional objectives justi-fies a “thinner” copyright for programs than for art as broadly under-stood.

          Perhaps the most influential formulation for determining what “nonliteral” elements of computer code warrant copyright protection is found in Computer Associates International, Inc. v. Altai, Inc.223 There, the Court of Appeals for the Second Circuit articulated a three-step process of analysis. At the first, or “abstraction” step, very much like the “patterns” analysis of Learned Hand in the Nichols and Sheldon drama cases,

          a court should dissect the allegedly copied program’s structure and iso-late each level of abstraction contained within it. This process begins with the code and ends with an articulation of the program’s ultimate function. . . . A program has structure at every level of abstraction at which it is

          

          222. See Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) (decompiling computer code creates a copy that technically infringes, even though only an “intermedi-ate” copy, but under the circumstances of the case was privileged as a “fair use”).

          223. 982 F.2d 693 (2d Cir. 1992).

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          viewed. At low levels of abstraction, a program’s structure may be quite complex; at the highest level it is trivial.224

          At the second, or “filtration,” step, nonprotectible materials are re-moved from the plaintiff’s computer program.

          This process entails examining the structural components at each level of abstraction to determine whether their particular inclusion at that level was “idea” or was dictated by considerations of efficiency, so as to be nec-essarily incidental to that idea; required by factors external to the pro-gram itself; or taken from the public domain and hence is non-protectable expression. . . . By applying well developed doctrines of copyright law, it may ultimately leave behind a “core of protectable material.”225

          At the third, or “comparison,” step, the court compares what is left (the “golden nugget”) of protectible material in the plaintiff’s work and “focuses on whether the defendant copied any aspect of this protected expression, as well as an assessment of the copied portion’s relative importance with respect to the plaintiff’s overall program.”226 Despite the influence of the court’s analysis—and indeed its importation into cases involving novels, plays, and motion pictures—it is arguably too focused upon the deletion of uncopyrightable elements and insuffi-ciently attentive to the possible creative ways in which those elements can be selected, coordinated, or arranged so as to generate a protecti-ble work in the nature of a compilation.227

          Reproduction of Music and Sound Recordings

          The exclusive right to reproduce the copyrighted work, afforded by section 106(1), applies not only when the work is reproduced in “cop-ies,” i.e., material objects that are perceivable by the human eye, but also when the work is embodied in “phonorecords.” A copyright-protected dramatic or nondramatic literary work (a short story, poem

          

          224. Id. at 707.

          225. Id.

          226. Id. at 710.

          227. Compare Apple Computer, Inc. v. Microsoft Corp., 779 F. Supp. 133 (N.D. Cal.

          1991).

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          and lecture are examples of the latter) is infringed by an unauthorized taping or recording of the text of that work.

          Reproducing musical works in phonorecords

          The same is true of musical compositions, subject to an important exception known as the compulsory license. Section 115(a)(1) of the Copyright Act provides:

          When phonorecords of a nondramatic musical work have been distrib-uted to the public in the United States under the authority of the copyright owner, any other person may, by complying with the provisions of this section, obtain a compulsory license to make and distribute phonorecords of the work.

          In substance, once the copyright owner of a musical composition per-mits one person to manufacture and distribute recordings in the United States, any other person may record the composition (with its own performers) and distribute its own recordings, provided that per-son complies with the provisions of section 115—most significantly by paying to the copyright owner a royalty provided by statute “for every phonorecord made and distributed in accordance with the license.”228

          The compulsory license for musical recordings (known as “mechanical” royalties, based on the early statutory language) can be traced back to the 1909 Copyright Act, enacted when the recording industry was in its infancy and when Congress was concerned that a single record manufacturer (the Aeolian Company) would secure a monopoly by buying up all recording rights from popular songwriters. By “compelling” the copyright owner to license such rights to all re-cord companies, after the initial recording and distribution, Congress facilitated the development of many smaller record companies and the competitive nature of the industry that remains one of its characteris-tics today. The statutory royalty rate in the 1909 Act was 2 cents per record of the copyrighted song. In 1976, Congress increased that rate only to 2.75 cents. Realizing that economic conditions might warrant a change in the statutory rate, and that it would be inconvenient to

          

          228. 17 U.S.C. § 115(c)(2).

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          achieve such change through statutory amendment, Congress in the 1976 Act created an administrative agency called the Copyright Royalty Tribunal and empowered it periodically to reconsider the royalty rate under section 115 and to promulgate new rates. In 1993 Congress trans-ferred the functions of the Tribunal to ad hoc arbitration panels con-vened by the Librarian of Congress; and in 2004 the Act was amended to give such authority instead to three Copyright Royalty Judges, also appointed by the Librarian of Congress, with decisions of the Copy-right Royalty Judges being appealable to the District of Columbia Cir-cuit.

          Section 801(b)(1) of the Copyright Act directs the Copyright Roy-alty Judges, in their rate-setting under the compulsory-license provi-sions for recorded music, to achieve the following objectives:

          (A) To maximize the availability of creative works to the public. (B) To afford the copyright owner a fair return for his or her creative work and the copyright user a fair income under existing economic conditions.

          (C) To reflect the relative roles of the copyright owner and the copyright user in the product made available to the public with respect to relative creative contribution, technological contribution, capital investment, cost, risk, and contribution to the opening of new markets for creative expression and media for their communication. (D) To minimize any disruptive impact on the structure of the industries involved and on gen-erally prevailing industry practices.

          After formal hearings, the Copyright Royalty Tribunal in 1980 in-creased the statutory rate from 2.75 cents per record to 4 cents per record, and between then and the year 2000, the royalty rate mounted gradually through formal linkage to the Consumer Price Index. Begin-ning on January 1, 2000, Copyright Office regulations endorsed an agreement reached by representatives of music copyright owners (songwriters and publishers) and of the recording companies, provid-ing for biannual rate increases beginning at 7.55 cents per song; the rate for 2004–2005 was 8.5 cents (or 1.65 cents per minute), and begin-ning January 1, 2006, the rate has become 9.1 cents per song (or 1.75 cents per minute). These compulsory-license royalty rates are set forth in Copyright Office regulations at 37 C.F.R. § 255.3. This royalty figure is for each recording made of each copyrighted composition embodied

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          in the phonorecord; it is not a single amount covering the aggregate of all of the music on a multiple-track compact disk or audiotape.

          To avail itself of the compulsory license, a record manufacturer must file a timely “notice of intention” with the copyright owner, file regular accounting statements, and make monthly royalty payments to the copyright owner. Failure to comply with these requirements entitles the copyright owner to terminate the license and sue for infringement. The monitoring of the compulsory license system, and particularly the scrutiny of accounting statements and the collection of royalties from the recording companies, is a major administrative task; most musical-work copyright owners have turned over that task to an organization (based in New York City) known as the Harry Fox Agency.

          Congress, of course, contemplated that persons making music re-cordings (known in the industry as “covers”) pursuant to the statutory compulsory license under section 115 would use the services of record-ing artists selected by them and make arrangements of the music suit-able to the artists’ performing style. Section 115(a)(2) provides, how-ever, that such “arrangement shall not change the basic melody or fundamental character of the work, and shall not be subject to protec-tion as a derivative work under this title, except with the express con-sent of the copyright owner.” The statute places three other important limitations upon the availability of the compulsory license. It does not apply to works other than “nondramatic musical works” (that is, it does not authorize the making of recordings of literary works or of operas); it comes into operation only after the first authorized recording; and it authorizes only the making of recordings that are intended primarily for distribution to the public for private use (i.e., it does not apply to recordings for music subscription services, such as Muzak, or the in-corporation of the music in a motion-picture soundtrack).

          Until recently, the compulsory license for the recording of copy-right-protected music resulted in phonorecords—whether vinyl re-cords, audiotapes, or compact disks—that reached the public through sales in retail record stores. With the advent of the Internet, retail-store purchases are gradually being displaced by the online sale of music recordings. (Much music “sharing” through the Internet is regrettably unlawful, but not all.) When the computer user downloads recorded

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          music, say for 99 cents per song, this is what the Copyright Act refers to in section 115(c)(3) as a “digital phonorecord delivery.” Because of their functional equivalence, the compulsory royalty rate to be paid to the music copyright owner by the recording company for such digital phonorecord deliveries is the same as for phonorecords sold in retail stores.

          Reproducing sound recordings in phonorecords

          The right under section 106(1) to reproduce a copyrighted work in the form of phonorecords applies to all copyrighted works, including not only musical works but also sound recordings. “Sound recordings” are defined in section 101 of the Copyright Act as “works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audio-visual work, regardless of the nature of the material objects, such as disks, tapes, or other phonorecords, in which they are embodied.” Sound recordings are copyrightable works distinct from the musical or literary works that are performed on those recordings.229 There can, for example, be a copyrightable sound recording of a public domain clas-sical musical composition.

          Section 114 of the Copyright Act limits the exclusive right to repro-duce a sound recording to “the right to duplicate the sound recording in the form of phonorecords that directly or indirectly recapture the actual sounds fixed in the recording.” Infringement of this right is fa-miliarly known as record piracy, and involves the dubbing of the sounds of the copyrighted sound recording onto another sound me-dium—for example, from a pre-recorded compact disk onto a blank audiotape or from a computer hard-drive onto a blank CD (i.e., “burning”). Copyright in a sound recording is therefore not infringed by the “independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording,” as expressly stated in section 114(b).

          Thus, when a commercial recording incorporates a “digital sam-ple” taken directly from another recording, without permission, there

          

          229. See Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003).

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          is technically a violation of section 106(1), because the first “sound recording” (as well as the thread of musical notes) is being “repro-duced in phonorecords.” These samples, although usually of only a small bit of recorded music, are often “catchy” and thus of qualitative significance and possible commercial value. Courts take differing views on whether the sampling, under particular circumstances, is nonethe-less privileged, typically by invoking (or not) the de minimis princi-ple230 or the principle of fair use. In the recording industry, it is com-mon practice to pay voluntary royalties for such samples (on the the-ory that today’s borrower may find himself or herself sampled tomor-row and will wish to be compensated).

          A major issue under section 106(1) is the “home recording” of copyright-protected music and sound recordings. Again, this is techni-cally a violation of section 106(1). However, at the time of enactment of the 1976 Act, it was generally understood that the “taping” of music from radio broadcasts or from recordings, for personal use and with-out commercial objective, was allowable. This was at a time when the analog technology was such that multiple and serial copying was inher-ently limited. This legal conclusion was essentially confirmed by the Supreme Court in the somewhat different context of home videotaping for “time-shifting” purposes (rather than for permanent retention).231 For the first time in U.S. statutory copyright law, Congress in 1992 en-acted legislation specifically addressing the problem of private copying: the Audio Home Recording Act (AHRA).232 The AHRA, enacted in response to the advent of digital audiotape (which ultimately proved to have only limited commercial success), inter alia prohibited in section 1008 infringement actions “based on the noncommercial use by a con-sumer of a [digital audio recording device or an analog recording] device or medium for making digital or analog musical recordings.” In

          

          230. Compare Williams v. Broadus, 60 U.S.P.Q.2d 1051 (S.D.N.Y. 2001) (question of fact whether sampling 2 of 54 musical measures, consisting of opening 10 notes, is sub-stantial copying), with Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) (announcing a “bright line” test making all sampling unlawful, and de minimis stan-dard inapplicable).

          231. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984).

          232. 17 U.S.C. §§ 1001–1010.

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          other words, home reproduction for noncommercial purposes, whether by analog or digital means, is exempted from the reach of the section 106(1) reproduction right held by owners of copyright in musi-cal works and in sound recordings. Such copyright owners are to be recompensed through the payment of a royalty on the sales of digital recording machines and blank digital recording media.233 The issue of using home computers to “swap” recorded music by means of software available on the Internet is more broad-ranging and has been found not to fall within the section 1008 exemption (this issue is discussed below).

          The Right to Prepare Derivative Works

          Among the most valuable rights given by the Copyright Act is the right under section 106(2) “to prepare derivative works based upon the copyrighted work.” The copyright owner thus has the exclusive right to convert her novel into a motion picture, to translate her play into a foreign language, to make an orchestral arrangement of her piano piece, or to make reproductions of her painting or sculpture—or to license third persons to do so. As defined in section 101, a derivative work

          is a work based upon one or more preexisting works, such as a transla-tion, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of author-ship, is a “derivative work.”

          In the cases already discussed—infringing motion pictures based on copyrighted plays or novels—the courts have traditionally analyzed them as involving “copies” under the 1909 Act or “reproductions”

          

          233. Id. §§ 1003–1007. See also Recording Indus. Ass’n of Am. v. Diamond Multimedia Sys., Inc., 180 F.3d 1072 (9th Cir. 1999) (holding that hand-held digital devices that store music recordings transferred from computer hard-drives are not the sort of devices (“digital audio recording device”) for which royalties must be paid).

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          under the 1976 Act. The courts could just as well have analyzed these cases as allegedly infringing derivative works under what is today sec-tion 106(2). The elements of proof are the same: the plaintiff must show that the defendant copied protectible elements from the copy-righted work and that as a result the infringing work is “substantially similar.”

          The derivative work need not be “fixed in a tangible medium” in order to make out a case of infringement. The live performance of an arrangement of a copyrighted song, without the authorization of the copyright owner, will infringe section 106(2). (The performance, if public, will constitute a separate infringement under section 106(4).) Nor need any words be borrowed from the copyrighted work. In a classic copyright case, Justice Holmes spoke for the Supreme Court in finding that a silent motion picture adaptation of the novel Ben Hur constituted copyright infringement.234 In a more recent treatment of a similar issue, the Court of Appeals for the Second Circuit held that a book containing a series of still photographs of performers dancing a copyrighted choreographic work (Balanchine’s Nutcracker ballet) can be an infringing derivative work if there is “substantial similarity,” even though it is not possible to reconstruct the ballet from the photographs alone, and even if permission for the book was secured from the ballet company, the set and costume designers, and the dancers—but not from the choreographer–copyright owner.235

          An infringing derivative work may take the form of deletion, abbre-viation, and abridgment as well as elaboration and embellishment. The Court of Appeals for the Second Circuit, in the well-known case Gil-liam v. American Broadcasting Companies,236 thus held that the heavy editing of television programs without the consent of the Monty Python comedy group, which held the copyrights in the underlying scripts, constituted copyright infringement.

          The courts are split on the question whether an infringing deriva-tive work is created when one lawfully purchases a lawfully made picto-rial work (say, a color photograph from a magazine, or a drawing on

          

          234. Kalem Co. v. Harper Bros., 222 U.S. 55 (1911).

          235. Horgan v. MacMillan, Inc., 789 F.2d 157 (2d Cir. 1986).

          236. 538 F.2d 14 (2d Cir. 1976).

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          the face of a greeting card) and affixes it to a hard substance, thus cre-ating a border around the work, and applies some transparent sealing substance. As will be seen immediately below, the purchase and resale of the artwork is not a copyright infringement, but the copyright owner of the photograph or greeting card has claimed that an infringing de-rivative work has been created. The Court of Appeals for the Ninth Circuit holds that, absent consent, a new bordered work has been un-lawfully created; while the Seventh Circuit holds that there has been no “recasting” or “transforming” of the underlying artwork but simply what is equivalent to framing, and so no derivative work at all.237 In a case involving an Internet analogy—the unauthorized “framing” by one website owner of images from another (complaining) website that are called forward through a linking process—a district court in the Ninth Circuit has found an unauthorized derivative work.238

          The Right of Public Distribution

          Section 106(3) of the Copyright Act gives the copyright owner the ex-clusive right “to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” Thus, if A owns the copyright in a novel, and B prints unauthorized copies and supplies them to C, who sells them to the public, both B and C are copyright infringers—B violates section 106(1) and C violates section 106(3).239 C will be liable, under the gen-eral rule of copyright that recognizes even “innocent” infringement, regardless whether he sells the books in the belief B was their lawful author.

          

          237. Compare Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988), with Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997). A district court within the Ninth Circuit has indeed held that what is essentially mere framing of an artwork consti-tutes the unlawful creation of a derivative work. Greenwich Workshop, Inc. v. Timber Creations, Inc., 932 F. Supp. 1210 (C.D. Cal. 1996).

          238. Futuredontics, Inc. v. Applied Anagramics, Inc., 45 U.S.P.Q.2d 2005 (C.D. Cal.

          1998).

          239. Columbia Pictures Indus., Inc. v. Garcia, 996 F. Supp. 770 (N.D. Ill. 1998).

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          Just as there is a public distribution when a bookseller distributes copies throughout the United States, so too a person who, without authorization, places copyrighted material on an Internet bulletin board or website and makes it available for all interested persons to download into their computer hard-drive (or even simply to view on their computer monitors) has publicly distributed that material, and has infringed.240 If, however, the alleged infringer is merely an online service provider that plays a passive role in allowing access to an in-fringing website, without creating or controlling the content of the in-formation available to its subscribers, it will generally be found not to have made an unlawful public distribution.241

          First-sale doctrine

          If read literally, section 106(3) would make it an infringement for a book dealer to sell used books or for any private person to lend a book to friends. This anomaly is quickly dispelled by virtue of section 109(a), which provides:

          Notwithstanding the provisions of section 106(3), the owner of a par-ticular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copy-right owner, to sell or otherwise dispose of the possession of that copy or phonorecord.

          This provision articulates what has been a fundamental part of our copyright jurisprudence for a century: the “first-sale doctrine.” The Supreme Court in its 1908 decision in Bobbs-Merrill Co. v. Straus stated: “[O]ne who has sold a copyrighted article, without restriction, has parted with all right to control the sale of it. The purchaser of a book, once sold by authority of the owner of the copyright, may sell it again,

          

          240. E.g., Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997) (website operator “distributes” copyright-protected works “by allowing its users to down-load and print copies of electronic image files”).

          241. Religious Tech. Ctr. v. Netcom On-Line Communication Servs., Inc., 907 F. Supp. 1361 (N.D. Cal. 1995). The liability of internet service providers for contributory and vicarious liability is a matter of detailed regulation under section 512 of the Copyright Act, added in 1998.

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          although he could not publish a new edition of it.”242 The exclusive right to distribute the copyrighted work to the public thus embraces only the first sale, and purchasers of copies or phonorecords are free to transfer them to others by sale, gift, or otherwise. The first sale “ex-hausts” the right of the copyright owner under section 106(3), and he or she must exact whatever royalty can be negotiated from the initial publisher–distributor, knowing that that will have to provide recom-pense for all subsequent transfers as well.

          Thus it is lawful, for example, for a person to purchase second-hand copies of copyrighted works, to remove the covers or to bind them in new covers, and to resell them to the public.243 If, however, the reseller goes a step farther and makes some alteration in or compila-tion of the lawfully purchased works, he or she may be found liable for creating an unlawful derivative work even if not for unlawful public dis-tribution. A court so held when the defendant purchased old copies of National Geographic magazine, tore out articles, and bound together for sale articles relating to a common subject matter.244

          In 1998, in Quality King Distributors, Inc. v. L’Anza Research International, Inc.,245 the Supreme Court confronted the question whether the first-sale doctrine applies not only to copies and phonorecords manufactured in the United States and subsequently sold here, but also when those subsequent sales follow purchases made abroad. To answer that question, the Court analyzed section 602(a), which gives the U.S. copyright owner the exclusive right of importa-tion. The central issue was whether the first-sale limitation set forth in section 109(a) applied to imported goods, or whether section 602(a) afforded a “free standing” right not subject to the various exemptions (including fair use and first sale) in the Copyright Act. The Court concluded that the importation right under section 602(a) is a species of the public-distribution right under section 106(3), so that the copy-right owner exercises that right subject to the first-sale doctrine. So-

          

          242. 210 U.S. 339, 350 (1908).

          243. Fawcett Publ’ns, Inc. v. Elliot Publ’g Co., 46 F. Supp. 717 (S.D.N.Y. 1942).

          244. Nat’l Geographic Soc’y v. Classified Geographic, Inc., 27 F. Supp. 655 (D. Mass.

          1939).

          245. 523 U.S. 135 (1998).

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          called grey goods or parallel imports, at unauthorized discounted prices, cannot thus be restricted by U.S. manufacturers by invoking the Copyright Act.

          By virtue of the first-sale doctrine, U.S. law does not afford the kind of “public lending right” given to the copyright owner in such nations as Great Britain and Germany. U.S. copyright owners can claim no royalty, and can interpose no ban, when third persons—such as public libraries or private lending libraries—lawfully purchase one or two copies of a work and lend them to the public many times, either free or for a price. Section 109(a) negates any such lending right.

          There are, however, two exceptions to this rule. They relate to the rental for profit of either a phonorecord embodying a copyrighted sound recording of music or a copy of a copyrighted computer pro-gram. Congress concluded in 1984 that the newly emerging “record rental store” was being used by consumers as an inexpensive supplier of musical sound recordings that could be inexpensively taped at home, thus substituting for a purchase of the recording. Comparable conclusions were reached in 1990 with respect to the rental of com-puter software, which was also susceptible to reproduction for non-profit personal use, by individuals on their home computers.

          In the Record Rental Amendment of 1984 and the Computer Soft-ware Rental Amendments Act of 1990, Congress forbade the owner of a phonorecord or the possessor of a copy of a computer program “for the purposes of direct or indirect commercial advantage, [to] dispose of, or authorize the disposal of, the possession of that phonorecord or computer program . . . by rental, lease, or lending, or by any other act or practice in the nature of rental, lease, or lending.” These exceptions to the first-sale doctrine are codified in section 109(b) of the Copyright Act. Explicitly excluded from the ban is the not-for-profit rental, lease, or lending of phonorecords or computer software by most nonprofit libraries and educational institutions.

          The Right of Public Performance

          Another exclusive right under section 106 of the Copyright Act is the right “to perform the copyrighted work publicly.” The public-

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          performance right is a particularly significant right for dramatic works, motion pictures, and musical works. But it is accorded to all categories of copyright-protected works except for pictorial, graphic, and sculp-tural works (for obvious reasons) and sound recordings (sound-engineered performances captured on phonorecords). The exclusion of sound recordings from section 106(4) is largely for historical rea-sons; although music has had public-performance rights in the U.S. since the turn of the twentieth century, our copyright law was slow to recognize original authorship in recorded performances and gave no protection to sound recordings at all until 1971 and then only against direct “dubbing” or piracy of the recorded sounds. Thus, even today, when a song recording is broadcast over the air on the radio, or is played by a disk jockey in a nightclub, that is potentially a copyright infringement of the song, but it is not an infringement of the sound recording; the songwriter (or other copyright owner in the song) can claim a royalty, but neither the record company nor the recording artist can. As will be discussed below, however, Congress in 1995 added section 106(6) to the Copyright Act, which accords to the copyright owner of a sound recording (typically the recording company) the exclusive right “to perform the work publicly by means of a digital audio transmission”; this is a right that has become highly important in the age of the Internet.

          Performance

          Section 101 sets forth broad definitions of “perform” and “publicly.”

          To “perform” a work means to recite, render, play, dance, or act it, ei-ther directly or by means of any device or process or, in the case of a mo-tion picture or other audiovisual work, to show its images in any se-quence or to make the sounds accompanying it audible.

          To perform or display a work “publicly” means—

          (1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered;

          (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of re-

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          ceiving the performance or display receive it in the same place or in sepa-rate places and at the same time or at different times.

          The definition of “perform” embraces not only live face-to-face performances but also “rendering” a work by any device or process, such as a compact disk player for music and a DVD player for motion pictures, as well as by radio or television transmission. The definitive House Committee Report states that a performance can be effected through “all kinds of equipment for reproducing or amplifying sounds or visual images, any sort of transmitting apparatus, any type of elec-tronic retrieval system, and any other techniques and systems not yet in use or even invented.”246 Just as a live dramatic production constitutes a “performance” of the work, as does its broadcast on television, the theater exhibition of a motion picture (which “shows its images in . . .

          sequence”) also constitutes a “performance” that if unauthorized will infringe the copyright.

          Because of the breadth of the definition of “perform,” the televi-sion broadcast of a singer’s rendition of a copyrighted song will give rise to a multiple series of “performances.” As is stated in the House Report:

          [A] singer is performing when he or she sings a song; a broadcasting network is performing when it transmits his or her performance (whether simultaneously or from records); a local broadcaster is per-forming when it transmits the network broadcast; a cable television sys-tem is performing when it retransmits the broadcast to its subscribers; and any individual is performing whenever he or she plays a phonorecord

          embodying the performance or communicates the performance by turn-ing on a receiving set.247

          The private set-owner, although a “performer” of the broadcast song, would not normally be liable for infringement, because his or her per-formance would not be “public.”

          

          246. H.R. Rep. No. 94-1476, at 63 (1976).

          247. Id.

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          Public performance

          Of course, to infringe, section 106(4) provides that the performance must be “public.” The definition of that word in section 101 is de-signed to dispel the confusion that had arisen under the 1909 Act, which had left the word undefined. As stated in the House Report: “[P]erformances in ‘semipublic’ places such as clubs, lodges, factories, summer camps, and schools are ‘public performances’ subject to copyright control. . . . Routine meetings of businesses and governmen-tal personnel would be excluded because they do not represent the gathering of a ‘substantial number of persons.’”248 Performances that take place at any of the former venues are, in the words of the statute, “at any place where a substantial number of persons outside of a nor-mal circle of a family and its social acquaintances is gathered.”

          The definition in section 101 also makes it clear that a transmitted performance is “public” even though the recipients are themselves located in private settings, such as their own homes or hotel rooms. (Under another definition in section 101, to “transmit” a performance is “to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.”) A public performance thus takes place when a work is transmitted by radio or television, or to a computer over the Internet.

          Although Congress took pains to define words like “public” with great care and detail, there will inevitably be a need for judicial inter-pretation. An example is the performance held “at a place open to the public.” The Court of Appeals for the Third Circuit has held that copy-right in motion pictures was infringed by a business that invited mem-bers of the public to rent videotapes (lawfully made and purchased) and then to view them in rooms provided under the same roof for very small groups of family or friends.249 The court concluded that the showings in even the small rooms were “public,” and that the defen-dant store had “authorized” those public performances and thus in-fringed. A different outcome was reached, however, by the Court of Appeals for the Ninth Circuit in the case of a motel that rented video-

          

          248. Id. at 64.

          249. Columbia Pictures Indus., Inc. v. Aveco, Inc., 800 F.2d 59 (3d Cir. 1986).

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          cassettes for viewing in private guest rooms; the motel was deemed to be facilitating a number of discrete private performances.250

          The right of public performance is more broadly written than had been the case under the 1909 Copyright Act. Under the earlier statute, the exclusive right to perform music had been limited to public per-formances “for profit.” Accordingly, performances of copyrighted mu-sic in schools, in public parks, at charitable events, and the like were not infringements and generated no royalties for the copyright owner. Performances of copyrighted dramatic works would infringe, if in pub-lic, regardless whether or not they were “for profit.” This distinction between dramatic and musical works was abandoned in the definition of exclusive rights under the 1976 Copyright Act; section 106(4) elimi-nates the “for profit” limitation upon the music performance right. Nonetheless, the present statute provides certain specific exemptions for public performances of music that do not obtain for public per-formances of dramatic works; these exemptions will be explored below.

          Conspicuously omitted from the section 106(4) exclusive right of public performance is the “sound recording,” which is the work cre-ated through the combined creative efforts of performing artists and recording company—as distinguished from the “musical work,” which does get the benefit of the public-performance right. Thus, when a musical recording is played on the radio, licenses must be secured from and royalties paid to the owner of copyright in the song, but not to the owner of copyright in the sound recording. This differentiation is more a matter of historical development than anything else.

          But in the 1990s, with the widespread development of digital media for storing and transmitting music, Congress concluded that recording artists and companies should be compensated for uses that would likely displace the purchase of conventional recordings. In 1995, Con-gress thus added to the Copyright Act section 106(6), which gives the exclusive right “in the case of sound recordings, to perform the copy-righted work publicly by means of a digital audio transmission.” Ini-tially, this provided compensation for the playing of recordings on digital home subscription services akin to cable-television services, but

          

          250. Columbia Pictures Indus., Inc. v. Prof’l Real Estate Investors, Inc., 866 F.2d 278 (9th Cir. 1989).

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          an even greater potential source of revenue became evident as home computers, powered by the Internet, came more widely to be used to listen to music (and potentially to substitute for record purchases). Congress in 1998, as part of the Digital Millennium Copyright Act, saw the need for further articulation of policy concerning the digital trans-mission of music on the Internet (“nonsubscription transmission”), and many of these transmissions are allowed subject to a compulsory license, spelled out in complex detail in section 114. Compulsory li-censes are discussed in Chapter 7.

          Performing rights societies

          It is obvious that the owners of copyright in, say, a popular song can-not personally monitor, license, and collect royalties from the poten-tially vast number of public performances of their music—in live nightclub and restaurant performances, in jukebox plays, in radio and television broadcasts, in music subscription services such as Muzak, in supermarkets and production plants, on college campuses, in “streamed” music programs on the Internet, in motion picture theaters from film soundtracks, and the like. The owners of musical copyright (songwriters and their assignees, music publishers) have formed so-called performing rights societies to do so. The first such society in the United States, ASCAP (American Society of Composers, Authors and Publishers), was formed in 1914 by eminent American composers in-cluding Victor Herbert and John Philip Sousa. The other major per-forming rights societies are BMI (Broadcast Music, Inc.), formed in 1939, and SESAC (formerly, Society of European Stage Authors and Composers). Technically, these societies serve as nonexclusive licen-sees, which in turn license others (principally entertainment venues and broadcasters) pursuant to standard royalty arrangements the terms of which are regulated by antitrust decrees. Suits for infringement, brought in the name of the copyright owner, are typically managed by representatives of the performing rights societies. Public-performance royalties collected by these societies total about $1.5 billion per year and are distributed to their members according to elaborate formulas.

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          Section 116 of the Copyright Act explicitly recognizes these socie-ties and assigns them a role in the distribution of royalties generated by jukebox performances of recorded music.

          The Right of Public Display

          Under the 1909 Act, it was unclear how to treat the public display of copyrighted works (e.g., the showing of a painting, sculpture, or liter-ary manuscript on television). This form of exploitation did not fit comfortably within the statutory terms “copy” and “performance.” Congress dispelled the uncertainty by providing in section 106(5) of the 1976 Copyright Act for the exclusive right “to display the copyrighted work publicly.” This right applies to all copyrighted works except for sound recordings (for obvious reasons); the showing of a motion pic-ture or other audiovisual work is treated as a “performance,” but the showing of “individual images of a motion picture or other audiovisual work” falls within the display right.

          Section 101 defines the “display” of a work as the showing of “a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.” The “public” display of a work is defined in precisely the same manner as the public performance of a work. Thus, to show a painting or sculpture on a television broadcast is a public display of the work, which must be authorized in order to avoid infringement.

          The public-display right of the copyright owner has taken on added significance with the development of the Internet. If, for exam-ple, a copyright-protected work of art is incorporated on a website, so that the accessing of that site by any Internet user produces an image of that artwork on a computer monitor, this constitutes a public display, which if unauthorized will infringe. (The same is true for the text of a literary work.) A number of courts have held that the unauthorized scanning of a copyrighted picture from a magazine, and its resulting conversion into digital form for storage on a computer hard-drive—an infringing “reproduction”—will generate an infringing public display when that image is made available by “uploading” over the Internet

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          (on a website or bulletin board) to persons who can then view and download the image on their computer (whether or not they make their own hardcopy at the receiving end).251

          Were the language of section 106(5) not conditioned in any way, the owner of a copyrighted work of art would infringe by displaying the work in a public exhibition space—or even by holding it up in a class-room or other public gathering. Just as Congress’s concern about pri-vate ownership of material objects has counterbalanced the right of “public distribution” through the first-sale doctrine, so too has Con-gress decided to limit the newly created public-display right by a specific exemption for the owner of the physical object in which the copyrighted work is embodied. Section 109(c) provides:

          Notwithstanding the provisions of section 106(5), the owner of a particular copy lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.

          Thus, a face-to-face display by the owner of a copy of a copyrighted work to a public gathering will not infringe; nor will the use of a pro-jection device to throw an image of the work onto a screen. If, how-ever, the display is by closed-circuit television with the work in one location and the viewers in another, or if the display is by multiple television screens or computer monitors to facilitate closer audience viewing, the exemption in section 109(c) will not obtain, and the unau-thorized display will constitute an infringement. This fine line reflects Congress’s desire to protect the copyright interest of the artist against the incursion of new technological developments that may threaten to displace the artist’s market for individual copies (with attendant dilu-tion of royalty rights).

          

          251. Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997); Play-boy Enters., Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993).

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          Visual Artists’ Rights

          In the Visual Artists Rights Act (VARA) of 1990, Congress amended the Copyright Act to give to an “author of a work of visual art” rights that are different from those given to a copyright owner. These are the rights of “attribution and integrity” and are equivalent to those “moral rights” recognized in most civil-law nations as well as in the Berne Convention.

          These statutory rights are accorded by section 106A to persons who, under the definition of “work of visual art”252 in section 101 of the Copyright Act, create singular paintings, sculptures, or photographs produced for exhibition only, or such works in a signed and numbered series of no more than 200.

          The “right of attribution” entitles a visual artist to “claim author-ship” of a work of visual art, and to prevent the use of his or her name as author of a work created by another or as author of his or her own work in distorted or mutilated form. The artist could, for example, secure an injunction directing a museum to identify a displayed work as her own (rather than misattributing it to another artist), or money damages for harm to her reputation that results from attributing to her a physically mangled canvas or sculpture.

          The “right of integrity” entitles the visual artist “to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation.” If, for example, an artist produces a three-segment painting, and a purchaser of that painting separates the three segments in an effort to maximize the proceeds of resale (or simply for display in three separate loca-tions), the artist has a claim for copyright infringement provided she can prove that there has been prejudice to her reputation. Section 106A—as part of the right of integrity—also bars the intentional or grossly negligent “destruction of a work of recognized stature.” (The latter term is not defined, although its content was delineated in earlier versions of the legislation.)

          

          252. The definition is narrowly drawn, and excludes inter alia “advertising.” See Pollara v. Seymour, 344 F.3d 265 (2d Cir. 2003).

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          The 1990 amendments also added a new section 113(d) to deal with the removal of works of visual art that are incorporated into buildings, such as murals or fixed statuary.

          The Visual Artists Rights Act excludes from infringement the modification or distortion of a work that results from the “passage of time or the inherent nature of the materials” or that results from con-servation efforts (unless grossly negligent) or from the lighting or placement of the work in a public exhibition. Perhaps most important, the statute expressly excludes from its ban alleged distortions or muti-lations that take the form of “any reproduction, depiction, portrayal, or other use of a work” in books, magazines, newspapers, posters, adver-tising material, motion pictures and other forms set forth in sections 101 and 106A(c)(3). In other words, it is the physical integrity of the singular work of art that is protected, and not its use in discolored or badly cropped reproductions. (Such reproductions might, however, be barred by the copyright owner as unauthorized derivative works pre-pared in violation of section 106(2).)

          Because a “work of visual art” is a category that fits within the larger category of “pictorial, graphic and sculptural work,” a case could arise in which an artist’s right of integrity conflicts with the rights of a copyright owner to create a derivative work under section 106(2). Thus, if in the hypothetical set forth above, the artist of a three-segment painting were to transfer both the physical property and the copyright in that painting to another, the copyright owner’s claim to separate the segments—and thus to create “derivative works”—could presumably be defeated by the artist’s claim under section 106A that such action constitutes an infringing distortion, mutilation, or modification. The 1990 amendments do not expressly deal with this possible clash of equivalent statutory rights.

          Under section 106A(d)(2), the protections of VARA are not af-forded to works created (i.e., fixed in a tangible medium) before the effective date of that Act, June 1, 1991, unless the title to such work was not as of that date transferred from the artist.253

          

          253. See Pavia v. 1120 Ave. of the Americas Assocs., 901 F. Supp. 620 (S.D.N.Y. 1995) (work was created, title was transferred, and work was dismantled without authorization,

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          Secondary Liability: Contributory and Vicarious Infringement

          A copyright owner may bring infringement actions not only against the person actually engaging in the unauthorized exercise of one of the exclusive rights in section 106, but also against “contributory” and “vicarious” infringers. The Copyright Act makes no specific provision for thus extending the range of liability, but these doctrines have been a part of our copyright jurisprudence for many decades.254 Courts have come only fairly recently to articulate the differences between the two theories of secondary liability—and both theories are being increas-ingly invoked by plaintiffs in infringement cases, particularly when it would be costly and complicated to proceed against a host of direct infringers, as is the situation with Internet copying.

          The Supreme Court endorsed and applied the law of contributory copyright liability in Sony Corp. of America v. Universal City Studios, Inc.255 The plaintiff film studio contended that the manufacturer– distributor of a popular brand of videotape recorder was responsible for contributory infringement, based on the direct infringement alleg-edly committed by the home-taper. The Court, in effect, concluded that even though contributory liability is not mentioned in the Copy-right Act (unlike the specific provision therefor in the patent statute256 ), it is encompassed within section 106, which gives the copyright owner the exclusive right not only to make copies but “to authorize” others to make copies. Moreover, contributory liability is akin to such liability in tort cases more generally, which treat a person who knowingly partici-pates in or furthers a tortious act as jointly and severally liable with the primary tortfeasor. The Court essentially endorsed the definition con-tained in an earlier and still frequently cited decision of the Court of Appeals for the Second Circuit: “[O]ne who, with knowledge of the

          

          all before June 1991; its continued display in that condition after June 1991 was held not to violate VARA).

          254. See, e.g., Polygram Int’l Publ’g, Inc. v. Nevada/TIG, Inc., 855 F. Supp. 1314 (D.

          Mass. 1994); Demetriades v. Kaufmann, 690 F. Supp. 289 (S.D.N.Y. 1988).

          255. 464 U.S. 417 (1984).

          256. See 35 U.S.C. §§ 271(b), (c).

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          infringing activity, induces, causes, or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer.”257

          The Supreme Court in Sony cautioned, however, that the manufac-turers and sellers of videotape machines could not be liable merely because they had constructive knowledge that their purchasers might use the equipment to make infringing copies. Borrowing from the so-called “staple article” exception in patent law,258 the Court held that selling the videotape recorders would not constitute contributory in-fringement “if the product is widely used for legitimate, unobjection-able purposes. Indeed it need merely be capable of substantial nonin-fringing uses.”259 Because many copyright owners of television pro-grams do not object to home videotaping, and because even unauthor-ized home videotaping, for time-shifting purposes, is a fair use, the Court concluded that “the Betamax is, therefore, capable of substantial noninfringing uses. Sony’s sale of such equipment to the general public does not constitute contributory infringement of respondents’ copy-rights.”260

          Vicarious liability, on the other hand, can be imposed on persons who do not “induce, cause or materially contribute to” direct in-fringement or indeed who do not even know that another is involved in infringing activity. Again, as in the law of torts generally, vicarious copyright liability can be imposed on the basis of principles akin to those underpinning so-called “enterprise liability,” as exemplified in the doctrine of respondeat superior. In a seminal case on the issue, Shapiro, Bernstein & Co. v. H.L. Green Co., the Court of Appeals for the Second Circuit held:

          When the right and ability to supervise coalesce with an obvious and di-rect financial interest in the exploitation of copyrighted materials—even in the absence of actual knowledge that the copyright monopoly is being

          

          257. Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).

          258. 35 U.S.C. § 271(c).

          259. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984).

          260. Id. at 456.

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          impaired—the purposes of copyright law may be best effectuated by the imposition of liability upon the beneficiary of that exploitation.261

          In that case, the court imposed liability for the sales of unlawfully made phonograph records upon the proprietor of a department store, as well as upon the record concessionaire actually doing the selling within the store; the store owner had the right to supervise the conces-sionaire and to share in its gross receipts from the sale of records.262

          These two theories of secondary liability were brought to bear in an influential decision of the Court of Appeals for the Ninth Circuit, Fonovisa, Inc. v. Cherry Auction, Inc.263 The plaintiff held copyrights in Hispanic music recordings, and claimed infringement on the part of the operators of a flea market (or “swap meet”) where third-party ven-dors routinely sold counterfeit recordings. The vendors rented space for their booths, and Cherry Auction advertised, supplied parking and refreshments (from which it derived income, to add to its admissions fees), and retained the right to exclude any vendor for any reason. The trial court had dismissed the complaint, but the court of appeals viewed the allegations as sufficient to sustain secondary-infringement claims. After a thorough review of the precedents, the court of appeals held that Cherry Auction would be vicariously liable for the vendors’ directly infringing record sales, because through its right to terminate vendors it had the ability to control their activities, and because it reaped “substantial financial benefits from admission fees, concession stand sales and parking fees, all of which flow directly from customers who want to buy the counterfeit recordings at bargain basement prices.”264 The court also found sufficient allegations of contributory

          

          261. Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963).

          262. In an effort to apply or extend the principle of vicarious liability (often with a view toward finding more solvent defendants), plaintiffs have named as defendants such entities as radio stations on which allegedly pirated merchandise is advertised, as well as sponsors of allegedly infringing broadcasts. See Screen Gems-Columbia Music, Inc. v. Mark-Fi Records, Inc., 256 F. Supp. 399 (S.D.N.Y. 1966) (advertising agency); Davis v. E.I. DuPont de Nemours & Co., 240 F. Supp. 612 (S.D.N.Y. 1965) (sponsor of television show and its advertising agency).

          263. 76 F.3d 259 (9th Cir. 1996). See also Arista Records, Inc. v. Flea World, Inc., 2006 WL 842883 (D.N.J. 2006).

          264. Id. at 263.

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          infringement because Cherry Auction allegedly knew of the directly infringing sales and because it provided the “site and facilities” (i.e., space, utilities, parking, advertising, plumbing and customers) for those infringements.

          It was only a matter of time before these principles and precedents were applied so as to determine whether there was secondary infringe-ment on the part of website operators—such as Napster, StreamCast, and Grokster—that have provided file-sharing software that can be used to facilitate the unauthorized exchange of music recordings on the Internet. The first important decision was that of the Court of Ap-peals for the Ninth Circuit in A & M Records, Inc. v. Napster, Inc.265 There the court concluded that individual Napster users were infring-ing (by duplicating and distributing copyright-protected music and recordings) and were not engaging in fair use, and that Napster, Inc. was secondarily liable. There was contributory infringement: “Napster has actual knowledge that specific infringing material is available using its system, that it could block access to the system by suppliers of the infringing material, and that it failed to remove the material,”266 and Napster provided the “site and facilities” to assist finding and down-loading the recordings. As for vicarious infringement, Napster had the ability to locate infringing material on its search indices and the right to terminate users’ access to the system; it also derived ever-increasing advertising revenues as more users were drawn to its website through the appeal of the infringing music.267

          The same court, the Ninth Circuit, reached a different conclu-sion—neither contributory nor vicarious infringement—in a later case involving the Grokster software, which created a more decentralized file-sharing network than in Napster, allowing the defendants to “step aside,” as it were, and to let the music-file swappers do so directly, without going through a centralized server and indexer. When the case

          

          265. 239 F.3d 1004 (9th Cir. 2001).

          266. Id. at 1022.

          267. In a later case in which the defendant’s file-sharing technology was somewhat different, the Seventh Circuit reached essentially the same conclusion concerning con-tributory liability as did the Napster court, and reserved judgment on the question of vicarious liability. In re Aimster Copyright Litig., 334 F.3d 643 (7th Cir. 2003).

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          reached the Supreme Court, the respondent companies invoked the Sony decision and sought to prove that their software was capable of substantial noninfringing uses, for example, the swapping of uncopy-righted material.

          In Metro-Goldwyn-Mayer Studios Inc. v. Grokster Ltd.,268 however, the Supreme Court reversed, while declining to determine how the Sony “substantial noninfringing use” test would apply in the case be-fore it.269 Rather, the Court—buttressed by the Patent Act provision imposing liability upon “[w]hoever actively induces infringement”270 — held instead that “one who distributes a device with the object of pro-moting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”271 Although one could not infer from Sony’s sale of its Betamax videotape recorder, without more, that it knew of substantial infringement by users, there was no doubt of that with Grokster, whose business plan and advertising were explicitly designed to encourage unlawful private copying, particularly by those who had been forced to leave Napster as a result of the ad-verse judgment against it in the Ninth Circuit. The Court rejected the defendants’ contention that a finding of secondary liability would sig-nificantly interfere with the development of new electronic technolo-gies: “The inducement rule . . . premises liability on purposeful, cul-pable expression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful prom-ise.”272

          Issues of secondary copyright infringement are also raised when the defendant is one step more removed from the direct infringement than in the cases just discussed—in which the defendants consciously designed and distributed software that was used, and was largely meant

          

          268. 125 S. Ct. 2764 (2005).

          269. Six Justices who joined in the unanimous Court opinion did, however, opine as to how the Sony test would apply on the record before them, with three finding con-tributory liability and three finding none.

          270. 35 U.S.C. § 271(b).

          271. Grokster, 125 S. Ct. at 2770.

          272. Id. at 2780.

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          to be used, to make illicit copies and phonorecords. What, if any, li-ability is there, on the part of Internet service providers (ISPs)—such as AOL and, increasingly, telephone and cable companies—that allow home computer users to connect to the Internet and to post and ex-change all manner of potentially copyright-protected materials? These ISPs provide an appealing target for copyright infringement lawsuits, when the alternative would often be cumbersome suits against indi-viduals.

          The solution to this question has been provided partly by the fed-eral courts and partly by Congress. Perhaps the most influential court decision is Religious Technology Center v. Netcom On-Line Communica-tion Services, Inc.273 The plaintiff, a unit within the Church of Scientol-ogy, finding that a disgruntled former member, Erlich, had posted certain unpublished Church documents on an online “bulletin board,” brought a copyright infringement action against the operator of the bulletin board and the ISP that provided online access to the bulletin board and to the Internet more generally. The court held that the ISP (Netcom) could be liable as a contributory infringer if, after receiving a “take-down notice” from the Church, it could reasonably have known of the copyright-protected status of the posted documents, and it al-lowed the messages to remain on its system and to be further distrib-uted to servers worldwide. The court also found, with respect to vicari-ous liability, that Netcom had a history of policing its users’ postings and suspending some (for obscenity, commercial advertising and the like); but that it derived no economic benefits from Erlich’s infringe-ment.

          Although the Netcom case and others like it exonerated ISPs from direct liability when they acted as “mere conduits” for Internet com-munications, the prospect of even indirect liability for contributory infringement spurred service providers to lobby Congress for exemp-tions from copyright liability and remedies. In 1998 Congress passed the Digital Millennium Copyright Act (DMCA), which added section 512 to the Copyright Act.274 That section adjusted the risks of copyright owners and service providers so as to place the burden on the former

          

          273. 907 F. Supp. 1361 (N.D. Cal. 1995).

          274. 17 U.S.C. § 512.

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          to identify and notify “mere conduit” service providers of infringe-ments carried by or residing on the providers’ systems. By contrast, the law makes no special provision for service providers who originate or are otherwise actively implicated in the content residing on their serv-ers or transiting through their systems.

          Section 512 of the Copyright Act does not purport to define the conduct of an ISP that would render it liable for direct, contributory or vicarious infringement; rather, it identifies several different ISP activi-ties and specifies conditions for immunizing the ISP against monetary relief and for limiting its exposure to injunctive relief. Section 512 distinguishes, for example, the “mere conduit” from the ISP that stores on its network allegedly infringing material for more than several days (e.g., by providing server space for a user’s website). The former is given immunity from monetary liability in most instances, while the latter is susceptible to “take-down notices”275 from copyright owners and an obligation under stipulated circumstances to remove the alleg-edly offending material from its network. Section 512 is intricate and requires patient reading.

          

          275. See generally Rossi v. Motion Picture Ass’n of Am., 391 F.3d 1000 (9th Cir. 2004); ALS Scan, Inc. v. RemarQ Cmtys., Inc., 239 F.3d 619 (4th Cir. 2001).

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          Chapter 7

          Fair Use and Other Exemptions from the Exclusive Rights of the Copyright Owner

          All of the rights set forth in section 106 of the Copyright Act are ex-pressly granted “subject to sections 107 through 122.” The latter sec-tions impose a variety of limits on the rights of the copyright owner, in the form of compulsory licenses, complete exemptions from liability, and other privileges such as fair use. A discussion of the jurisprudence that has developed under section 107 dealing with fair use is followed by an overview of sections 108 through 122.

          Fair Use

          The fair use doctrine constitutes perhaps the most significant limitation on the exclusive rights held by a copyright owner. The doctrine was developed by courts in the mid-nineteenth century to privilege what would otherwise have been a copyright infringement. Justice Story’s decision in Folsom v. Marsh,276 rendered in the Massachusetts federal circuit court in 1841, appears to be the first articulation of the policies underlying fair use. Justice Story opined that quoting copyrighted ma-terial in the course of preparing a biography or a critical commentary might be excusable, but not “if so much is taken, that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another.”277 He thought it proper to consider “the nature and objects of the selections made” and “the quantity and value of the materials used.”278 Later courts also placed weight on whether unauthorized quotation of copy-righted material “would serve the public interest in the free dissemina-tion of information” and whether the preparation of the defendant’s work “requires some use of prior materials dealing with the same sub-

          

          276. 9 F. Cas. 342 (C.C.D. Mass. 1841) (No. 4,901).

          277. Id. at 348.

          278. Id.

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          ject matter.”279 Although some courts and scholars anchored “fair use” in the plaintiff’s implied consent to quotation, as when excerpts are used in literary criticism or comment, this consent proved to be fictive more often than not.

          The more soundly based rationale for the fair use doctrine is the very purpose articulated in the constitutional copyright clause: “to promote the progress of science.”280 The fair use doctrine comes into play when a too literal enforcement of the copyright owner’s rights would operate to the detriment of the public interest in access to and dissemination of knowledge and culture, and unauthorized copying can be tolerated without significant economic injury to the copyright owner.281

          The 1976 House Report set forth a number of examples of possible fair uses, as generally understood under the 1909 Act:

          quotation of excerpts in a review or criticism for purposes of illustration or comment; quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations; use in a par-ody of some of the content of the work parodied; summary of an address or article, with brief quotations, in a news report; reproduction by a li-brary of a portion of a work to replace part of a damaged copy; reproduc-tion by a teacher or student of a small part of a work to illustrate a lesson; reproduction of a work in legislative or judicial proceedings or reports; incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported.282

          Although it was easy enough to give a variety of readily accepted ex-amples of fair use, it was not so easy to articulate any clear standards or a “litmus test.” “Indeed, since the doctrine is an equitable rule of rea-son, no generally applicable definition is possible, and each case rais-ing the question must be decided on its own facts.”283

          

          279. Rosemont Enters. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966).

          280. U.S. Const. Art. I, § 8, cl. 8.

          281. See generally Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

          282. H.R. Rep. No. 94-1476, at 65 (1976).

          283. Id.

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          Statutory uses and factors

          In the 1976 Copyright Act, Congress took the bold step of incorporat-ing the fair use doctrine into the statute, of setting forth a number of illustrative fair uses and, most important, of delineating four factors that courts are to consider (possibly along with other factors) when passing upon a fair use defense. Section 107 provides:

          Notwithstanding the provisions of section 106, the fair use of a copy-righted work, including such use by reproduction in copies or phonore-cords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particu-lar case is a fair use the factors to be considered shall include—

          (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational pur-poses;

          (2) the nature of the copyrighted work;

          (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

          (4) the effect of the use upon the potential market for or value of the

          copyrighted work.

          The fact that a work is unpublished shall not of itself bar a finding of fair use if such finding is made upon consideration of all the above factors.284

          The drafters of section 107 regarded it as endorsing

          the purpose and general scope of the judicial doctrine of fair use, but there is no disposition to freeze the doctrine in the statute, especially during a period of rapid technological change. . . . [T]he courts must be free to adapt the doctrine to particular situations on a case-by-case basis. Section 107 is intended to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way.285

          

          284. This final sentence was added in 1992, to deal with the issue raised in several then-recent court of appeals decisions involving biographers’ and historians’ use of unpub-lished letters, diaries and the like.

          285. H.R. Rep. No. 94-1476, at 66 (1976).

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          The Supreme Court has held that “fair use is a mixed question of law and fact.”286 If a district court has found facts sufficient to evaluate each of the statutory factors, the court of appeals may determine, with-out remand, whether the defendant has made a fair use of copyrighted material as a matter of law.

          The opening paragraph of section 107 sets forth a number of illustrative uses that may fall within the fair use privilege. Curiously, the first two Supreme Court decisions that construed section 107 do not appear to comport with the statutory illustrations. In Sony Corp. of America v. Universal City Studios, Inc.,287 the Court sustained a claim of fair use for home videotaping of copyrighted television programs (for more convenient viewing)—a use rather clearly falling outside the enumerated categories. In Harper & Row Publishers, Inc. v. Nation En-terprises,288 involving a news magazine’s quotations from the soon-to-be-published memoirs of President Ford relating to his pardon of President Nixon—a use falling rather clearly within the enumerated category of news reporting—the Court rejected the defendant’s claim of fair use. In explaining the weight to be given to the listing of uses in the first sentence of section 107, the Court in Harper & Row stated that the enumeration “give[s] some idea of the sort of activities the courts might regard as fair use under the circumstances. . . . This listing was not intended to be exhaustive, . . . or to single out any particular use as presumptively a ‘fair’ use.”289 The Court made clear that whether a use is fair in particular circumstances “will depend upon the application of the determinative factors, including those mentioned in the second sentence.”290 Even though the enumerated uses in the first sentence are

          

          286. Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985).

          287. 464 U.S. 417 (1984).

          288. 471 U.S. 539 (1985).

          289. Id. at 561 (citations omitted).

          290. Id. (citing S. Rep. No. 94-473, at 62 (1975)). A court of appeals had concluded, shortly before, that consideration of at least the four factors in the second sentence was a mandated part of the fair use analysis, by pointing out Congress’s use of the phrase “shall include” in that sentence. Pacific & S. Co. v. Duncan, 744 F.2d 1490 (11th Cir. 1984). See also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 581 (1994) (“[P]arody, like any other use, has to work its way through the relevant factors, and be judged case by case, in light of the ends of the copyright law.”).

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          not dispositive and not even presumptive, they have nonetheless come to play an important role in application of the first of the four factors in the second sentence (“purpose and character of the use”), as later elaborated by the Supreme Court in Campbell v. Acuff-Rose Music, Inc., discussed below.

          Supreme Court fair use jurisprudence

          The Supreme Court has decided several cases involving the application of the fair use doctrine and section 107 of the Copyright Act. Despite some initial inconsistencies, the Court’s jurisprudence has crystallized and come to provide intelligible and useful guidelines for analysis.

          In Sony Corp. of America v. Universal City Studios, Inc.,291 decided in 1984, the Court, dividing 5 to 4, reviewed the statutory factors some-what hurriedly and found that home videotaping of copyrighted televi-sion programs, for more convenient time-shifting purposes, constituted a fair use. The Court held that the first factor supported fair use be-cause the home viewer taped the program for personal and noncom-mercial use. The Court majority in fact announced that “every com-mercial use of copyrighted material is presumptively an unfair [use]” and also presumptively demonstrates a likelihood of economic harm to the copyright owner (the fourth statutory factor); “but if [the copying] is for a noncommercial purpose, the likelihood must be demon-strated.”292 The Court acknowledged that, even though typically the entire program was taped (the third factor), this was not particularly damaging to the fair use contention because the program had in any event been broadcast free to the public. Finally, upon examination of the factual record, the Court concluded that there was inadequate evi-dence that home taping for time-shifting purposes would have any material adverse impact upon the market for the plaintiffs’ program-ming, either in its initial exhibition or in later exhibition on television (reruns) or even potentially in motion picture theaters. The four dis-senters strongly disagreed with respect to the application and conclu-sion of the four-factor analysis.

          

          291. 464 U.S. 417 (1984).

          292. Id. at 451.

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          The Court divided again (6 to 3) the following year in Harper & Row Publishers, Inc. v. Nation Enterprises.293 There, the defendant pub-lisher of The Nation magazine secured a purloined copy of the manu-script of President Ford’s memoirs, about to be published by Harper & Row and excerpted in Time magazine; the defendant broke its story about the Ford pardon of Richard Nixon and quoted verbatim some 300 words from the unpublished manuscript. The Court traced the development of the fair use doctrine and noted its nearly nonexistent application to unpublished works under prior copyright law. It rejected the defendant’s claim that First Amendment concerns warranted con-tracting the scope of copyright and concluded, instead, that First Amendment interests are already protected under copyright doctrines such as fair use and the idea–expression dichotomy. The Court also rejected the contention that works of public figures are entitled to lesser copyright protection, and ruled against fair use.

          The Court acknowledged that news reporting was one of the stipu-lated uses in section 107, but invoked the presumption from the Sony case against commercial uses such as The Nation’s so that the defen-dant bore the burden of proving its use to be fair (typically by showing no adverse market impact upon the plaintiff’s work). As to the second statutory factor, the Court conceded that “the law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy,”294 but it concluded that The Nation had copied more than merely objective facts. Moreover, “the fact that a work is unpublished is a critical element of its ‘nature’,”295 a “key, though not necessarily determinative factor” against fair use.296 Although a relatively small part of the Ford manuscript was copied, it comprised a large part of the article in The Nation and, most significantly, was qualitatively among the most important parts of the manuscript, containing the “most pow-erful passages,” the “dramatic focal points” of great “expressive value.” The Court characterized the fourth statutory factor—effect upon the potential market for the copyrighted work—as “undoubtedly the single

          

          293. 471 U.S. 539 (1985).

          294. Id. at 563.

          295. Id. at 564.

          296. Id. at 554.

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          most important element of fair use.”297 It pointed out that the “scoop-ing” by The Nation caused Time to cancel its contract with Harper & Row to publish excerpts. Moreover, “[t]his inquiry must take account not only of harm to the original but also of harm to the market for derivative works,”298 for the statute refers to adverse effect upon the “potential market” for the work.

          Thus, after Sony and Nation, it appeared that there would be a compelling case against fair use should the record show a commercial use by the defendant, or a potentially significant adverse economic impact on the copyrighted work, or an unpublished copyrighted work. Indeed, as to the latter element, a number of court of appeals deci-sions299 gave such great weight, in cases involving biographies, to the unpublished nature of letters, diaries and the like—the core source materials of historical and biographical writings—that Congress stepped in in 1992 to add a new closing sentence to section 107: “The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.”

          In its most recent foray into the waters of fair use,300 the Supreme Court used an arguably unappealing set of facts to dispel some mis-conceptions from the earlier cases and to establish important guide-lines that have since informed the analysis of the lower courts. In Campbell v. Acuff-Rose Music, Inc.,301 a rap group named 2 Live Crew—after requesting and being denied permission to record a rap parody of the well-known rock song by Roy Orbison, “Oh, Pretty

          

          297. Id. at 566.

          298. Id. at 568.

          299. E.g., Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir. 1987). Compare New Era Pubs. Int’l v. Henry Holt & Co., 873 F.2d 576 (2d Cir.), reh’g en banc denied, 884 F.2d 659 (2d Cir. 1989), with New Era Pubs. Int’l v. Carol Publ’g Group, 904 F.2d 152 (2d Cir. 1990).

          300. Stewart v. Abend, 495 U.S. 207 (1990), involved what the Court found to be the unauthorized marketing by the copyright owners of the well-known motion picture Rear Window, over the objection of the owner of copyright in the short mystery story upon which the film was based. The Court rejected the fair use defense: “[A]ll four factors point to unfair use. ‘This case presents a classic example of an unfair use: a commercial use of a fictional story that adversely affects the story owner’s adaptation rights.’” Id. at 238.

          301. 510 U.S. 569 (1994).

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          Woman”—recorded it anyway, borrowing the distinctive opening gui-tar pattern, mimicking the opening “Pretty Woman” phrase in each verse, and adding, to the rhythm of the original, somewhat salacious lyrics. The court of appeals ruled against fair use, relying heavily upon what clearly appeared to be the Supreme Court cases strongly disfavor-ing commercial uses and the copying of the “heart” of a copyrighted work.

          The Supreme Court unanimously reversed. It held that parody— poking fun at an earlier copyright-protected work, as distinguished from poking fun at some extrinsic happening or individual (satire)—is a form of “criticism or comment” listed in the first sentence of section 107; but that sentence is meant to give only “general guidance” about uses commonly found to be fair. As to the four statutory factors, they must not “be treated in isolation, one from another. All are to be ex-plored, and the results weighed together, in light of the purposes of copyright.”302

          In examining the first factor, the Court downgraded the importance of the defendants’ “commercial use,” noting that essentially all fair use claims (and the uses enumerated in the first sentence) are made in the for-profit context of publishing and broadcasting. The key issue is whether the defendant has made a “transformative” use: not one that merely supersedes the objects of the earlier work by copying it, but that “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”303 A court must inquire “whether a parodic character may reasonably be per-ceived,” and no attention should be given to whether it is in good or bad taste (an issue that had been mooted in earlier decisions in the lower courts). As to the second factor, a court must determine whether the copyrighted work falls close “to the core of intended copyright protection” because it is creative (rather than essentially factual): the exemplar “Oh, Pretty Woman” was said to do so. The court of appeals

          

          302. Id. at 578. The Court, through Justice Souter, gave credit to Justice Story, and Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841) (No. 4,901), discussed supra page 139, for fashioning decisional criteria that were essentially incorporated by Congress in section 107 nearly 150 years later.

          303. Id. at 579.

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          had emphasized the third factor, and the taking of the qualitative “heart” of that song, but the Supreme Court—although it acknowl-edged that “quality and importance” of the copied material should count as well as quantity—observed that the lower court had failed to take account of the special nature of parody. “When parody takes aim at a particular original work, the parody must be able to ‘conjure up’ at least enough of that original to make the object of its critical wit recog-nizable. . . . [T]he heart is . . . what most readily conjures up the song for parody, and it is the heart at which parody takes aim. Copying does not become excessive in relation to parodic purpose merely because the portion taken was the original’s heart.”304

          As for the fourth factor, and any adverse market impact that was to be “presumed” under Sony by virtue of the defendants’ commercial use, the Campbell decision significantly altered the standard: A pre-sumption of market harm is not applicable to a case involving some-thing beyond “verbatim copying of the original in its entirety,”305 and thus not to a “transformative” work, particularly for a parody which serves a “different market function.” The Court remanded to allow the lower court to consider further evidence of market harm (flowing from rap-music substitution and not from parodic criticism), the amount of copyrighted material taken and what the defendants added to it, and other elements noted by the Court in its opinion.

          With its decision in Campbell, the Supreme Court on the one hand diluted the helpful litigative presumptions of the earlier cases and em-phasized the complementary and interactive nature of the four statu-tory factors, but pointed toward the “transformative” standard and potential adverse market harm as of central importance to fair use analysis. The Court also noted that in cases of parody and other critical works, in which there is infringement, and a fair use defense is found unpersuasive, an injunction need not automatically issue; the public’s interest in the publication of the later work and the interest of the copyright owner may both be protected by an award of damages.

          

          304. Id. at 588.

          305. Id. at 591.

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          Fair use and the creation of new works

          With the Supreme Court jurisprudence in mind, it is useful to divide the lower court decisions dealing with fair use into two categories: those in which the defendant has borrowed for the purpose of creating a new work, and those in which the defendant has made and dissemi-nated what are substantially copies of an earlier work with the aid of new technologies. In the former situation, the more permissive attitude toward “transformative” works would be expected to result in more frequent findings of fair use. This has in fact been the case, although the Supreme Court’s emphasis in Campbell v. Acuff-Rose Music, Inc.306 upon the case-by-case determination of fair use claims, and the inter-woven nature of the four statutory factors, makes confident predictions of case outcomes all but impossible.

          The courts have indeed given great weight to the transformative aspects of an otherwise infringing work, under the first fair use factor, although the decisions do not form an altogether coherent pattern and there are often inconsistencies in assessing whether a work is indeed transformative (which is essentially another name for a derivative work based on the copyrighted work).

          Examples are several courts of appeals cases involving alleged transformative works in the nature of parodies. The Ninth Circuit, re-jecting a fair use defense, held that it was not transformative to use the well-known “Cat in the Hat” poem of Dr. Seuss as the basis for a fully rewritten poem telling the story of the O.J. Simpson criminal trial.307 The Second Circuit also held against a fair use defense on the part of the publisher of a 132-page book containing some 643 newly written trivia questions designed to test its readers’ recollection of scenes and events from the Seinfeld television series; among other things, the court noted that the trivia game “is not critical of the program, nor does it parody the program; if anything, [it] pays homage to Seinfeld.”308 The

          

          306. 510 U.S. 569 (1994).

          307. Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997).

          308. Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132, 145 (2d Cir.

          1998) (quoting lower court).

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          court also found that the “trivia” market niche is one that the produc-ers of Seinfeld might well wish to develop for themselves in the future.

          On the other hand, that same court held transformative and a fair use a photograph combining the head of a middle-aged male comic actor with a nude pregnant female body meant to duplicate the Annie Leibovitz cover for Vanity Fair magazine showing the actress Demi Moore—even though the doctored photograph was used in an adver-tisement and only marginally “commented” upon the Leibovitz origi-nal.309 And in Suntrust Bank v. Houghton Mifflin Co.,310 decided in 2001, the Eleventh Circuit upheld the fair use defense of The Wind Done Gone (TWDG) against an infringement claim by the owners of copyright in the classic novel Gone With the Wind (GWTW). The for-mer novel borrowed 18 characters from GWTW, made only transpar-ent changes in the character names, and for much of the book re-counted many of the same incidents—but altogether altered the virtues and vices of the white and the black characters, and made concomitant alterations in the story line, so that “the institutions and values roman-ticized in GWTW are exposed as corrupt in TWDG.”311 The court characterized TWDG as a parody in the sense of critical commentary, despite the fact that it lacked a comedic tone and did not take the form of scholarly or journalistic commentary.

          In an influential decision arising in a quite different context— reverse engineering (and thus copying) a computer program embodied in a game console—the Ninth Circuit in Sega Enterprises, Ltd. v. Acco-lade, Inc.312 upheld the defense of fair use. The defendant’s purpose was to create an “intermediate copy” which served as the basis for analysis of the program and ultimately for the design of compatible video games. Reverse engineering was the only practicable way for the defendant to discover unprotectible elements (e.g., ideas and methods of operation) that were embedded in the copyrightable “object code” that operated the game console; to rule otherwise would have allowed

          

          309. Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1992).

          310. 268 F.3d 1257 (11th Cir. 2001) (preliminary injunction denied).

          311. Id. at 1267.

          312. 977 F.2d 1510 (9th Cir. 1992).

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          the plaintiff to preclude public access to its ideas and functional con-cepts, in violation of the core policies of copyright law.

          Because section 107 states that in ruling upon a defense of fair use, the factors considered by the court “shall include” the four already fully discussed here, courts have regularly introduced additional con-siderations into their analysis. For example, courts have inquired into the “amount and substantiality of the portion used” not only “in rela-tion to the copyrighted work as a whole,” but in relation to the defen-dant’s work as well. The Supreme Court, in Harper & Row Publishers, Inc. v. Nation Enterprises,313 pointed out that the 300 words copied from President Ford’s 450-page book constituted 13% of the infringing arti-cle. Courts have tended to be more lenient when the unauthorized use was “incidental,” that is, when the copyright-protected work was cap-tured as part of a larger permissible reproduction or performance, such as a song partially heard in television news footage of a festival event.314 The Second Circuit Court of Appeals gave thorough consid-eration to the doctrine of “incidental use”—and the de minimis doc-trine more generally in copyright—in a case in which a poster of a copyrighted artwork was incorporated in the set of a television program and fleetingly shown.315 The court nonetheless ruled against fair use. Some courts have counted it against a defendant invoking fair use that he or she behaved in an ethically objectionable fashion316 —as exempli-fied by the Supreme Court’s reference to the “purloined manuscript” in Nation—although the Court just as readily held in Campbell that the defendants’ having ignored the copyright owner’s denial of a license to record was immaterial, and that whether “parody is in good taste or bad does not and should not matter to fair use.”317

          

          313. 471 U.S. 539 (1985).

          314. Italian Book Corp. v. ABC, 458 F. Supp. 65 (S.D.N.Y. 1978). But see Schumann v. Albuquerque Corp., 664 F. Supp. 473 (D.N.M. 1987) (broadcast of entire copyrighted songs had “entertainment value”).

          315. Ringgold v. Black Entm’t T.V., Inc., 126 F.3d 70 (2d Cir. 1997) (holding use “deco-rative” rather than “transformative”).

          316. NXIVM Corp. v. Ross Inst., 364 F.3d 471 (2d Cir. 2004).

          317. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 582 (1994).

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          Fair use and new technologies of copying and dissemination

          The four factors set forth in section 107 have been applied not only in cases in which the defendant creates a new derivative work but also when it seeks to employ new technologies that permit the efficient du-plication and dissemination of the copyrighted work. The fair use de-fense is then embedded within an assertion that the rights of the copy-right owner should be counterbalanced by the public interest in in-creasingly inexpensive access and resulting intellectual enrichment that the new technologies can afford. Key cases have involved videotaping of copyrighted television programs, photocopying of literary materials useful in education, and Internet reproduction and transmission of all manner of copyrightable works (particularly musical sound record-ings).

          In Sony Corp. of America v. Universal City Studios, Inc.,318 decided by the Supreme Court in 1984, the central issue was whether Sony, the manufacturer of the first commercially successful videotape recorder (VTR), was secondarily liable for alleged infringements on the part of home viewers who taped copyrighted programs and films shown on television for later viewing at more convenient times (“time-shifting”). The Court held—over a forceful dissenting opinion for four Justices— that such home videotaping for private and noncommercial use was a fair use, and that Sony could not be held liable; Sony’s VTRs were capable of being put to “substantial noninfringing uses.” The Court held that noncommercial uses are presumptively fair and presump-tively do not adversely affect the market of the copyright owner; and the record showed in any event that there was no such market impact of taping for the purpose of time-shifting. That entire copyrighted pro-grams and films were copied, with no “productive” use (or in today’s terminology, “transformative” use) made by the home viewer, “may be helpful in calibrating the balance, but it cannot be wholly determina-tive.” 319

          Several influential decisions of lower courts explored the applica-tion of the fair use doctrine to photocopying technologies. Two proto-

          

          318. 464 U.S. 417 (1984).

          319. Id. at 455 n.40.

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          type situations were the making and sale by commercial copy-shops of multiple copies of so-called coursepacks compiled by college profes-sors (using copyright-protected material without consent); and the making of single copies of journal articles for individuals employed to do research for commercial entities. Although these activities would appear commonly to advance the public interest, and are mentioned in the first sentence of section 107, indeed quite explicitly (i.e., “teaching (including multiple copies for classroom use), scholarship, or re-search”), the trend of the few cases is to find these activities not to fall within the fair use privilege. Not surprisingly, there are concurring and dissenting opinions to be reckoned with.

          In Basic Books, Inc. v. Kinko’s Graphics Corp.,320 the photo-reproduction by the Kinko’s company of teaching materials, using substantial portions of copyrighted books—without securing permis-sion from or paying license fees to the copyright owners—was held by the district court in the Southern District of New York not to be a fair use. The court placed particular weight on the profit-making motive of the defendant. Several years later, in Princeton University Press v. Michigan Document Services, Inc.,321 a sharply divided Sixth Circuit sitting en banc reached the same outcome as the Kinko’s court on simi-lar facts. The majority held, among other things, that the reference in section 107 to “multiple copies for classroom use” was not meant to provide a blanket exemption for such activity (any more than for any of the other activities mentioned there, such as criticism and news re-porting); that the for-profit status of the defendant (a negative under the first fair use factor) is not altered by the nonprofit status of the ul-timate academic users (teachers and students); that the un-“transformed” verbatim duplication of whole chapters and other large portions of the plaintiff–publishers’ books weighed heavily against fair use; and that the photocopying adversely affected not only the publish-ers’ book sales but also the photocopying royalties that they would otherwise be paid by a by-then thriving licensing and collecting agency (the Copyright Clearance Center). (Three separate dissenting opinions emphasized the weight properly to be accorded to educational uses in

          

          320. 758 F. Supp. 1522 (S.D.N.Y. 1991).

          321. 99 F.3d 1381 (6th Cir. 1996) (en banc).

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          the fair use framework in particular and, more generally, in promoting the objectives of copyright.)

          The principal decision considering, and rejecting, the fair use de-fense in connection with single photocopies of short journal articles made to assist researchers is that of the Court of Appeals for the Sec-ond Circuit in American Geophysical Union v. Texaco, Inc.322 Research-ers engaged in developing new chemical products for the Texaco com-pany received copies of scientific-journal tables of contents and indi-cated which articles they wished to read or to retain in their files for future use, so that the articles could be photocopied for them; in most cases, Texaco paid for two or three subscriptions to each journal in order to make the articles more accessible to its research staff. The court (2 to 1) concluded, inter alia, that the use of the photocopies was “archival” and a substitute for purchasing additional subscriptions (or paying photocopying license fees); that it was hardly “transformative”; that the measure for applying the “amount and substantiality” factor in section 107 was the individual journal article and not the entire journal issue (or volume); and that potential lost license fees were to be taken into account because courts should consider “traditional, reasonable, or likely to be developed markets when examining and assessing a sec-ondary use’s ‘effect upon the potential market for or value of the copy-righted work.’”323

          Of course, perhaps the most powerful new technology of reproduc-tion of copyrighted works is the computer and in particular the Inter-net. Not surprisingly, fair use defenses have been asserted in this set-ting. As already noted, the Court of Appeals for the Ninth Circuit held it to be a fair use to “decompile” a computer program in a video game console—thus converting an object-code version into a human-readable source-code version—in order to unearth unprotectible ideas and methods of operation. The defendant’s purpose was to author video games that would be compatible with, and playable on, the plaintiff’s game console.324 The same court of appeals also ruled upon the fair use defense asserted by the compiler of a pictorial (as distin-

          

          322. 60 F.3d 913 (2d Cir. 1994).

          323. Id. at 930.

          324. Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992).

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          Copyright Law

          guished from textual) database, who included without consent the copyright-protected photographs displayed on a photographer’s web-site.325 The court held that small “thumbnail” versions of the photo-graphs could not be enlarged by a computer user with sufficient clarity to result in competitive injury to the photographer;326 moreover (al-though the analysis is debatable), the court held the thumbnail ver-sions to be “transformative” because they were meant to be used not for aesthetic purposes but rather to be a part of an exhaustive pictorial database. The database-compiler’s display on its website of full-size photographic images, however, was determined not to be transforma-tive327 and to threaten economic injury to the plaintiff photographer.328

          Confronted with the question whether so-called peer-to-peer file-sharing of copyrighted music recordings is a fair use, however, the Ninth Circuit held that it is not. In A & M Records, Inc. v. Napster, Inc.,329 the Napster website made available free software that could be utilized for the purpose of searching for and copying recordings lo-cated on other computer hard-drives, and for the purpose of making accessible to others recordings stored on one’s own computer. The contributory liability of Napster depended upon whether the file-sharing computer users were infringing or were engaged in fair uses. Unlike the videotaping of copyrighted television programs for tempo-rary “time-shifting” purposes, found by the Supreme Court to be a fair use,330 the Ninth Circuit held the Internet-facilitated sharing of music files not to be thus privileged. As for the first factor in section 107, the court found the reproduction and distribution of copyrighted music recordings not to be in any way “transformative”; moreover, the com-puter user was engaged in a “commercial” use (“[C]ommercial use is demonstrated by a showing that repeated and exploitative unauthor-

          

          325. Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir. 2002). But compare Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828 (C.D. Cal 2006) (Google’s display of thumbnail photos is not a fair use, in light of its profit motive and the adverse impact on potential royalties from cellphone use).

          326. Id. at 944.

          327. Id. at 947.

          328. Id. at 948.

          329. 239 F.3d 1004 (9th Cir. 2001).

          330. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984).

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          Chapter 7: Fair Use and Other Exemptions

          ized copies of copyrighted works were made to save the expense of purchasing authorized copies.”).331 The musical compositions and sound recordings were “creative,” and file transfer “necessarily ‘in-volves copying the entirety of the copyrighted work.’”332 Under the fourth factor, the court concluded that Napster causes economic harm to the copyright owners by reducing the sale of music compact disks and by creating obstacles to their attempts to enter the market for the legal digital downloading of music for a fee.

          This conclusion was confirmed in a lawsuit directly against a home-computer user who downloaded more than 1,300 recorded songs, claiming that this was a fair use because it merely allowed her to “sample” songs with a view toward possible purchase. The Court of Appeals for the Seventh Circuit concluded that the fourth statutory factor cut heavily against the defendant, in view of the lost revenues for the copyright owner resulting from displaced broadcasting royalties and fees for lawful Internet sampling and downloading.333

          It has also been held not to be a fair use for a website operator (“My MP3.com”) to reproduce on its computer servers tens of thou-sands of compact disks of popular music. These disks could be played over the computer, at or away from home, by subscribers who ac-cessed the website and “proved” there that he or she already owned the CD or would purchase it from a cooperating online retailer; the avowed objective was to allow “place-shifting” of one’s own recordings to a variety of locations in a convenient listening format. The court found a commercial use (through the selling of advertising for the MP3.com website), a nontransformative use, copying of creative re-cordings in their entirety, and injury to the market for such computer-based access to music that was “likely to be developed” by plaintiff recording companies.334

          

          331. Napster, 239 F.3d at 1015.

          332. Id. at 1016 (quoting the district court in Napster, 114 F. Supp. 2d 896, 912 (N.D.

          Cal. 2000)).

          333. BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005). The court noted that the Supreme Court had assumed in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125 S. Ct. 2764 (2005), that the file-sharers there were directly infringing the copyright in the music and sound recordings. BMG Music, 430 F.3d at 889.

          334. UMG Recordings, Inc. v. MP3.Com, Inc., 92 F. Supp. 2d 349 (S.D.N.Y. 2000).

          155

          Copyright Law

          The fair use defense was considered and also rejected, outside the context of music dissemination by the Internet, in a case in which the text of copyright-protected newspaper articles was duplicated in full as a springboard for public commentary on a “bulletin board” website. Despite the nonprofit and “public-benefit” nature of the copying, and the “predominantly factual” nature of the newspaper articles copied, the court found that the Internet copying was not transformative, that it was full-text, and that it diverted potentially paying users from the newspaper’s website and other licensed providers.335

          Exemptions and Compulsory Licenses

          Library copying

          Section 108 gives to certain libraries the right, despite section 106(1), to make single copies and phonorecords of copyrighted works, subject to certain conditions. Most significantly, the library must be open to the public or to specialized researchers, and the copying must not be for commercial advantage. The reproduction must serve one of these pur-poses: preservation and security of an unpublished work; replacement of a copy or record that is damaged, deteriorating, lost or stolen (when an unused replacement is unavailable on the market); furnishing a single periodical article or a “small part” of a larger work to a person using it for private study, scholarship or research; furnishing to a per-son for such private use a copy or record of an “entire work, or . . . a substantial part of it” if the work is not available at a fair price.

          The library’s privileges under section 108 are lost if it “is aware or has substantial reason to believe that it is engaging in the related or concerted reproduction or distribution of multiple copies or phonore-cords of the same material” or if it “engages in the systematic repro-duction or distribution of single or multiple copies or phonorecords” of articles or “small parts” of works for private use. Thus, if a faculty member, instead of making 150 photocopies of a copyrighted article for her entire class, instructs the students to approach the library sepa-rately with requests for individual copies, the library will no doubt be

          

          335. Los Angeles Times v. Free Republic, 54 U.S.P.Q.2d 1453 (C.D. Cal. 2000).

          156

          Chapter 7: Fair Use and Other Exemptions

          found to have “substantial reason to believe” that it is engaging in the “related or concerted reproduction” of multiple copies of the same copyrighted material. There are other limitations on the library privi-lege as well, as set out in detail in section 108.

          A library can insulate itself altogether against liability for copying done independently on the premises by library users. It need only provide a photocopy machine for unsupervised use by library patrons and place a notice on the machine that the making of copies is subject to the copyright law.

          Section 108 has provided guidance to the library community. In effect, it provides a list of “fair uses” that libraries may make of copy-righted materials to preserve their collections and serve their patrons. Section 108 was updated in 1998 to make a number of the copying privileges set forth above available “in digital format” as well as in tra-ditional facsimile form. There appear to be no reported decisions con-struing section 108.

          First-sale doctrine and direct displays

          Despite the exclusive right of the copyright owner to sell or otherwise dispose of copies and phonorecords, the first-sale doctrine (discussed in Chapter 6), set forth in section 109(a), gives an immunity to subse-quent owners who transfer title (or lend) to others. And despite the exclusive right of public display, the owner of a copy is free by virtue of section 109(c) to display it “to viewers present at the place where the copy is located.” Section 109(b) in turn limits the first-sale doctrine by barring the commercial renting of musical recordings and computer software. Congress’s concern was with speedy, inexpensive, and fully accurate duplication by the overnight borrower.

          Educational, nonprofit and other performances and displays

          Section 110 exempts a variety of public performances and displays, typically in the context of educational and other nonprofit uses.

          Section 110(1) exempts face-to-face classroom performances of copyrighted works for teaching purposes in a nonprofit educational institution.

          157

          Copyright Law

          Section 110(2) as originally enacted in 1976 exempted perform-ances of nondramatic musical and literary works through transmissions on what was then known as instructional television, i.e., basically a nonprofit school transmitting to classrooms or to students whose dis-abilities prevented them from getting to a classroom. With the advent of the Internet, however, and a fuller appreciation of its extraordinary (and interactive) capabilities for reaching students, even in their homes, with a mix of text, sound, graphics and film, the original text of section 110(2) became unduly confining. In 2002 Congress amended the Copyright Act by enacting the so-called TEACH (Technology, Edu-cation and Copyright Harmonization) Act, which enlarges the statutory exemption for uses of copyrighted works in what is now known as “digital distance education”—while attempting to protect the copyright owner against the hazards of unauthorized digital retransmissions. Section 110(2) still shelters transmissions by governmental bodies and accredited nonprofit educational institutions, but it now exempts not only the performance of a nondramatic literary or musical work but also “reasonable and limited portions of any other work” (i.e., dra-matic works, motion pictures, television programs) or “display of a work in an amount comparable to that which is typically displayed in the course of a live classroom session.” Exempted transmissions by an educational institution must be at the direction of an instructor, an integral part of instructional activities and “directly related and of ma-terial assistance” thereto, and they must be limited to students officially enrolled in the pertinent course. Moreover, the transmitting institution must, inter alia, apply “technological measures” that prevent students from retaining the copyrighted works “for longer than the class ses-sion” and that also prevent “unauthorized further dissemination” by the students to others (known as downstream transmissions).

          Section 110(3) exempts certain uses of copyrighted works in the course of religious services.

          Section 110(4), a particularly significant provision, largely contin-ues the approach of the 1909 Act toward nonprofit performances of music, and adds other nondramatic works (speeches, lectures, poetry). The subsection is elaborate, but its basic thrust is to exempt live per-formances of such works when there is no commercial purpose, when

          158

          Chapter 7: Fair Use and Other Exemptions

          the performers are not being paid, and when there is no admission charge—or when any admission proceeds “are used exclusively for educational, religious, or charitable purposes and not for private financial gain, except where the copyright owner has served notice of objection to the performance” under certain circumstances stipulated in the subsection. It is this exemption that shelters performances of music and readings of literature in school assembly programs, in ama-teur performances in public parks, and at school literary and athletic events. The exemption does not apply to performances on college radio stations, for these are “transmissions” that are expressly excluded from the section 110(4) exemption. Nor does this particular exemption apply to nonprofit performances of copyrighted dramatic literary or musical works (i.e., plays, operas, musicals).

          Section 110(5) is designed to shelter the playing of radios and tele-visions in order to create a pleasant atmosphere in restaurants, retail establishments, doctors’ offices and the like. Subsection 110(5)(A) has been a part of the statute since its enactment in 1976. It was designed by Congress to endorse the Supreme Court’s decision in Twentieth Century Music Corp. v. Aiken,336 holding that the undefined word “per-formance” in the 1909 Act did not reach the use of simple loudspeakers to amplify radio sounds in a small fast-food restaurant. Subsection 110(5)(A) shelters the “communication of a transmission” from a radio or television set “of a kind commonly used in private homes.” Absent this exemption, the broad definition given in section 101 to the right of “public performance” would make it an infringement for a doctor, barber, or bartender to have copyrighted music or dramatic program-ming emanating from a radio or television set placed in a waiting room, shop, or tavern. With the exemption, simply turning on the set does not infringe. In a situation in which most of some 2,500 retail clothing and shoe stores (all owned by the same parent company) op-erated a radio receiver with two attached shelf speakers to play music broadcasts, the exemption for a “single” receiving apparatus within each store was deemed to apply.337 The exemption is lost, however, if sound-amplification equipment not commonly found in a home is

          

          336. 422 U.S. 151 (1975).

          337. Edison Bros. Stores, Inc. v. Broadcast Music, Inc., 954 F.2d 1419 (8th Cir. 1992).

          159

          Copyright Law

          utilized, or if a direct charge is made to see or hear the transmission, or if the transmission “is further transmitted to the public.”338 The ex-emption applies only to works already being transmitted through a broadcast; it does not embrace, for example, the doctor’s playing of music in her waiting room from a compact-disk player.

          Section 110(5)(B) was added to the statute in 1998 as the Fairness in Music Licensing Act, with a stormy history before and since. As some-thing of a quid pro quo for the 20-year extension of the copyright term, which was designed largely to assist the music industry, restaurant and retail-store owners prevailed upon Congress to enlarge the so-called “home-style equipment” exemption just described—and to exempt the “communication by an establishment of a transmission” from radio or television of nondramatic music in a larger area. The music may law-fully be played throughout an eating and drinking establishment of less than 3,750 square feet, and other retail establishments of less than 2,000 square feet—and also throughout even larger establishments based on certain limits as to the number of loudspeakers (even commercial rather than home-style equipment) and television sets. This obviously represents a significant incursion upon the exclusive public-performance rights of music copyright owners, and was in fact chal-lenged by foreign songwriters and music publishers as a violation of U.S. treaty obligations. A dispute resolution panel of the World Trade Organization held section 110(5)(B) to be inconsistent with the Berne Convention, but the United States has yet to make revisions needed to avoid trade sanctions.

          Subsections 110(6) through 110(10) exempt certain public perform-ances at state fairs, at stores promoting the sale of records of the copy-righted work or of the radio or television sets communicating the works, in transmissions for the blind or other handicapped persons, and at social functions organized by nonprofit veterans or fraternal organizations. Section 110(11), added to the Copyright Act in 2005, exempts the “making imperceptible,” within a private household, of “limited portions” (i.e., sex, profanity, or violence) of a motion picture being viewed there, provided no fixed copy of the altered film is made.

          

          338. Sailor Music v. Gap Stores, 668 F.2d 84 (2d Cir. 1982); Broadcast Music, Inc. v.

          United States Shoe Corp., 678 F.2d 816 (9th Cir. 1982).

          160

          Chapter 7: Fair Use and Other Exemptions

          Cable television and other retransmissions

          Section 111 creates a compulsory license for cable television retrans-missions of copyrighted programs that are shown on broadcast televi-sion. (Otherwise, such retransmission would be an infringing “public performance” of the program.) The section is extremely elaborate and complex, and does not lend itself to easy summarization.

          Section 111 grants a complete exemption from liability for cable systems that bring broadcast programming to subscribers who are near the broadcast source (i.e., within the “must carry” area as set out by the Federal Communications Commission) or that are at a sufficiently great distance that the broadcast programming can be received only by cable. If, however, the cable system carries broadcast signals into dis-tant but already served television markets, the compulsory license ap-plies. The cable operator may do so, but it must pay a royalty for the privilege of this compulsory license. The royalty is based principally on the system’s receipts and the amount of distantly-originated non-network programming that the cable system retransmits to its subscrib-ers. (The statute in effect assumes that the copyright owner has already been fully compensated by the television network for the broadcasts that are viewed wherever the network is accessible, whether through the originating broadcast or through cable retransmissions.) The statute as enacted in 1976 set forth certain royalty rates, which have since been increased by the Copyright Royalty Tribunal (CRT) and, since the CRT’s abolition, these rates are now subject to modification by the Copyright Royalty Judges. The cable system must forward regular statements of account and royalty fees to the Copyright Office, to be later distributed so as to provide fair recompense to owners of copy-righted material retransmitted over cable systems. A cable system that fails to comply with the requirements of the compulsory license provi-sions of section 111 will be fully liable for copyright infringement.

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