Introduction to Intellectual Property: Copyright: Introduction to Intellectual Property: Copyright Professor Beth Simone Noveck Room A-1005, bnoveck@nyls.edu, 431-2355


To Every Cow Her Calf: To Every Cow Her Calf Right in Copy Right to Copy


Apropos of Copying: Apropos of Copying Chester Carlson Inventor of the xerox machine Former engineer at Bell Labs Tired of copying prior art for his job Studied patent law to be able to protect his invention At….New York Law School


Theory of ©: Theory of © Reward for the author Stimulate artistic creativity


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: 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 Article 1, Clause 8, Section 8 Noah Webster


Comparison: Comparison W H Y


Categories of © Subject Matter17 USC 102(a): Categories of © Subject Matter 17 USC 102(a) literary works musical works, including any accompanying words dramatic works, including any accompanying music pantomimes and choreographic works pictorial, graphic, and sculptural works motion pictures and other audiovisual works; sound recordings; and architectural works


Subject Matter of Copyright: Subject Matter of Copyright Copyright protection subsists, 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 communicated, either directly or with the aid of a machine or device 1 2 3 4 5


Original Works of Authorship: Original Works of Authorship Independent Creation Modicum of Originality


Feist Publications c. Rural Telephone Service: Feist Publications c. Rural Telephone Service The “Telephone Book” Case


Why is Rural’s Telephone Book Not Deserving of © Protection: Why is Rural’s Telephone Book Not Deserving of © Protection 1. 2. 3. 4. 5. 6.


Take Away: Take Away Rejects “sweat of the brow” Must read Copyright Act in conjunction with the Constitution Sine qua non of copyright is originality Infringement requires Valid © Copying of original elements Facts are not copyrightable Copyright in compilations is “thin”


Electronic Compilations: Electronic Compilations Section 201(c) - copyright in a collective work (e.g. edited volume) Owner of the rights to the compilation may reproduce and distribute the underlying contributions as “part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” What about on-line publication of materials from a compilation?


Tasini v.New York Times: Tasini v.New York Times Can a publisher with compilation rights put the compilation on-line when articles can be downloaded individually? n.b. Book is wrong


Slide15: PROBLEM p. 368 Armstrong, a heavy metal musician, performs an unscheduled jam session in an outdoor concert in 1993, featuring songs never before recorded. Unbeknowst to Armstrong or his producers, Fan records the concert and begins to sell copies of the recording. Armstrong sues Fan for infringement of copyright. Fan replies “What copyright?” Who should prevail?


Formalities: Formalities Notice 1909 1976 Post-1989


Formalities: Formalities Publication 1909 1976 Post-1989


Formalities: Formalities Registration 1909 1976 Post-1989


Formalities: Formalities Deposit 1909 1976 Post-1989


Original Work of Authorship: Original Work of Authorship Work of authorship must be original Fixed in a tangible medium What is original? an independent creation modicum of originality What is fixed?


Fixed: Fixed A work is "fixed" in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration…


Fixation in a Tangible Medium: Fixation in a Tangible Medium Words, numbers, notes, sounds, pictures, any other graphic or symbolic indicia Embodied in a physical object in written, printed, photographic, sculptural, punched, magnetic or any other stable form Why have a fixation requirement?


What Isn’t The Subject Matter of Copyright: What Isn’t The Subject Matter of Copyright Exception 102(b) “In no case does copyright protection for an original work of authorship extend to any idea, procedure , process, system, method of operation, concept, principle, or discovery regardless of the form in which it is described, explained, illustrated or embodied in such a work.”


Baker v. Selden: Baker v. Selden The Idea-Expression Dichotomy


Take Away: Take Away The idea is the “common property of the whole world” The author has the right to express the idea in his own way. Only expression is protectable. Why? Cannot enclose fundamental ideas Copyright is not subject to examination and allowing copyrights of ideas would potentially perpetrate a “surprise and fraud upon the public” (Baker v. Selden)


Three Categories of Unprotectable Ideas: Three Categories of Unprotectable Ideas Animating concept behind the work Functional principles or solutions Fundamental building blocks of creative expression (Paul Goldstein)


Problem 4-3: Problem 4-3 Are the forms copyrightable?


Merger Doctrine: Merger Doctrine The subject matter is not an idea but there are so few ways of expressing the idea that there is a MERGER The expression merges into the idea itself


Morissey v. Procter & Gamble: Morissey v. Procter & Gamble “We cannot recognize copyright as a game of chess in which the public can be checkmated”


What things can be copyrighted17 USC 102(a): What things can be copyrighted 17 USC 102(a) literary works musical works, including any accompanying words dramatic works, including any accompanying music pantomimes and choreographic works pictorial, graphic, and sculptural works motion pictures and other audiovisual works; sound recordings; and architectural works


Categories of © Subject Matter: Categories of © Subject Matter literary works “works other than audiovisual works, expressed in words, number, or other verbal or numerical symbols or indicia, regardless of the nature of the materials or objects, such as books, periodicals, manuscripts, phonorecords, films, tapes, disks, or cards, in which they are embodied” Regardless of literary merit Includes non-literal elements: structure, sequence and organization of the work


Categories of © Subject Matter: Categories of © Subject Matter musical works, including any accompanying words sound recordings


Categories of © Subject Matter: Categories of © Subject Matter dramatic works, including any accompanying music pantomimes and choreographic works Written plays Labanotation of a choreographic work or pantomime Film recording of a choreographic work or pantomime


Categories of © Subject Matter: Categories of © Subject Matter pictorial, graphic, and sculptural works “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…” Regardless of artistic merit Utilitarian function exception


Categories of © Subject Matter: Categories of © Subject Matter Audiovisual works & motion pictures "Audiovisual works" are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied. "Motion pictures" are audiovisual works consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any. Sound track is part of the motion picture


Categories of © Subject Matter: Categories of © Subject Matter architectural works (post Dec 1, 1990) An "architectural work" is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features. Building Plans Drawings Cannot prevent picture taking Cannot forbid alterations


Useful Article Doctrine: Useful Article Doctrine Pictorial, graphic and sculptural works Copyrightable are only those elements that are independent of the utilitarian aspects of the article Identified separately from the useful article


Brandir International v. Cascade Pacific Lumber: Brandir International v. Cascade Pacific Lumber


Exclusive Rights of Copyright Owners: Exclusive Rights of Copyright Owners Reproduce the work Prepare derivative works Distribute copies or phono-records Perform the work Display the work publicly Transmit sound recording digitally


Works for Hire: Works for Hire Rights vest with individual author upon creation Rights vest with corporate author upon publication What about an individual employee or consultant creating for a corporation?


Community for Creative Non-Violence v. Reid: Community for Creative Non-Violence v. Reid 490 U.S. 730 (1989)


Work For Hire Definition: Work For Hire Definition (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 supplementary work, as a compilation, as an instructional text, as a test, as answer 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. For the purpose of the foregoing sentence, a ''supplementary work'' is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an ''instructional text'' is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. 9 categories Of works


Work Made For Hire: Work Made For Hire Exception to the fundamental principle that copyright ownership vests initially in the individual who creates the work. If work made for hire then the employer will be the owner (“pre-assignment”) Two-pronged approach Employee (common law agency definition) Independent Contractor, fulfilling specified conditions Contracting Around the Doctrine


Copyright Duration 302-05: Copyright Duration 302-05


Eldred v. Ashcroft: Eldred v. Ashcroft Constitutionality of Copyright Term Extension


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: 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 Article 1, Clause 8, Section 8 Noah Webster


Exclusive Rights of Copyright Owners: Exclusive Rights of Copyright Owners Reproduce the work Prepare derivative works Distribute copies or phono-records Perform the work Display the work publicly Transmit sound recording digitally


The Right to Reproduce the Work: The Right to Reproduce the Work Right to copy 106(1) Right to prevent others from making exact or “substantially similar” reproductions Law prevents copying but not independent creation How to prove copying? Direct proof Circumstantial evidence Must have substantial copying Lay person test


Arnstein v.Porter: Arnstein v.Porter 154 F.2d 464


Songs At Issue: Songs At Issue Begin the Beguine The Lord is My Shepherd, Mother’s Prayer My Heart Belongs to Daddy A Mother’s Prayer Night and Day I Love You Madly


Slide51: Begin the Beguine When they begin the beguine, It brings back the sound of music so tender, It brings back the night of tropical splendor, It brings back a memory evergreen! I'm with you once more under the stars, And down by the shore an orchestra's playin' Even  the palms seems to be swayin' When they begin the beguine! To live it again, it's past all endeavour, Except when that tune clutches my heart, And there we are swearin' to love forever, And promising never, never to part! What moments divine, what raptures serene, 'Till clouds came along to disperse the joys we had tasted . . . Now, when I hear people curse the chance that was wasted, I know but too well what they mean! So, don't let them begin the beguine, Let the love that was once a fire remain an ember . . . Let it sleep like the dead desire I only remember, When they begin the beguine! Oh yes, let them begin the beguine, make them play! 'Till the stars that were there before return above you, 'Till you whisper to me once more, "Darling, I love you!" And we suddenly know, what heaven we're in, When they begin the beguine! When they begin . . . the beguine!


Test of Infringement for Copying: Test of Infringement for Copying Did Defendant copy from plaintiff’s copyrighted work? Admission Circumstantial Evidence ACCESS SIMILARITY Assuming there was copying, did it constitute improper appropriation Ordinary Lay Hearer Test (“caviar to the general”)


Nichols v.Universal Pictures: Nichols v.Universal Pictures 45 F.2d 119 (2d Cir. 1930) What is Improper Appropriation?


Slide54: Expression Idea Literal Text Levels of Abstraction


Steinberg v. Columbia Pictures Industries, Inc.: Steinberg v. Columbia Pictures Industries, Inc. 663 F.Supp. 796


Steinberg v. Columbia Pictures Industries, Inc.: Steinberg v. Columbia Pictures Industries, Inc. What were the protected elements of the work under Copyright law? Were those elements copied by Columbia? Did they copy Steinberg’s compilation of unprotectable elements? What other arguments could be made for Columbia Pictures? Counter-arguments?


Limitations on Exclusive Right to Copy: Limitations on Exclusive Right to Copy Library or Archive Broadcasters Musical Compositions Audio Home Recording Act


Rights of Copyright Owners: Rights of Copyright Owners Right to Copy Right to Make Derivative Works Right to Distribute (106-3) “.. the owner of copyright under this title has the exclusive rights to …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;”


Anderson v. Stallone: Anderson v. Stallone Right to Prepare Derivative Works


Distribution Right and First Sale Doctrine 109(a): Distribution Right and First Sale Doctrine 109(a) “Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” Exception to the right to control distribution Cannot control use of the lawfully sold copy


602(a): 602(a) Importation into the United States, without the authority of the owner of copyright under this title [17 USCS Sects. 101 et seq.], of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106 [17 USCS Sect. 106], actionable under section 501 [17 USCS Sect. 501].


Exception to First Sale Doctrine: Exception to First Sale Doctrine 109 (b)(1)(A) .. unless authorized by the owners of copyright in the sound recording or the owner of copyright in a computer program … neither the owner of a particular phonorecord nor any person in possession of a particular copy of a computer program (including any tape, disk, or other medium embodying such program), may, for the purposes of direct or indirect commercial advantage, dispose of, or authorize the disposal of, the possession of that phonorecord or computer program (including any tape, disk, or other medium embodying such program) by rental, lease, or lending, or by any other act or practice in the nature of rental, lease, or lending. .. Exception for sound recordings and computer programs (law by lobby)


Right of Public Performance and Display: Right of Public Performance and Display .. the owner of copyright under this title has the exclusive rights to … (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; and (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.


Display and Performance: Display and Performance Display To "display" a work means to show 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. Perform To "perform" a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.


Display Right: Display Right Control over display of work is limited by 109-c Does not include the right to control public display in the place where the copy is located


Performance Right: Performance Right Right is to control public performance not private When does a performance become public?


Statutory Limits on Performance and Display Rights: Statutory Limits on Performance and Display Rights Fair Use – TBD Public Interest (Section 110) Live educational performances and displays Transmissions to classrooms Religious performances and displays Face-to-face performances of non-dramatic literary or musical works for free or charitable purposes


Statutory Limits on Performance and Display Rights: Statutory Limits on Performance and Display Rights Compulsory Licenses Cable retransmission of broadcast 111 Satellite retransmission to “unserved households” 119 Cover license to record previously recorded musical work 115 Jukebox owners may publicly perform the works contained therein 116 Public broadcasting stations may transmit musical and artistic works subject to negotiation 118 Digital sound recordings are subject to a compulsory license scheme 114


Moral Rights: Moral Rights Extend beyond ownership of economic control Protect the “personality” of the author and the work from unauthorized change Right of attribution Right of integrity Artist’s right to claim authorship To prevent use of her name on works she did not create To prevent the use of her name on works that have been modified or distorted


Contributory Infringement: Contributory Infringement Knowledge, actual or constructive, is a requirement. Liability for Internet Service Providers Liability for device manufacturers


Fair Use: Fair Use 17 USC 107 Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords 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. Not an exhaustive list


Harper & Row Publishers v. The Nation: Harper & Row Publishers v. The Nation 471 U.S. 539 (1985)


Two Questions: Two Questions Can fair use apply as a defense in the case of an unpublished work? Can fair use apply as a defense in the case of an about-to-be published work?


Fair Use Test: Fair Use Test In determining whether the use made of a work in any particular 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 purposes; (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.


Purpose of the Use: Purpose of the Use What was the nature of the use? Was it commercial? Was there good faith and fair dealing?


Nature of the Work: Nature of the Work What was the work at issue? What was the nature of the material copied?


Amount and Substantiality of the Portion Use: Amount and Substantiality of the Portion Use In Absolute Terms? Qualitative Nature? Role in the Infringing Work?


Effect on the Market: Effect on the Market Impairment of marketability? If it became widespread practice?


Sony v. Universal City: Sony v. Universal City Question: Does the sale of video tape recorders (VTRs) to the public violate the Copyright Act? Can a theory of liability be made out for those who sell “circumvention” devices? Why hold manufacturers liable? Why not sue the broadcasters? Why not sue the infringing consumers? What does Sony argue in its defense?


Sony, cont’d.: Sony, cont’d. Court borrows from patent law to create a standard for copyright Standard must balance protection of © owner and freedom of others to engage in substantially unrelated areas of commerce No contributory infringement if Product widely used for legitimate, unobjectionable purposes Device capable of substantial non-infringing uses


Sony’s Defense: Sony’s Defense Substantial Numbers of Copyright Holders Would Consent Time-Shifting is a Non-Commercial Use Of Material Broadcast Free to Air Private Activity In the Home Serves the Public Interest of Increasing Access to TV Programming


Revenge of Betamax: Revenge of Betamax Technology eroded control of content owners and shifted it to the individual user “I am opposed to people being programmed by others.” Mister Rodgers. Encryption Technologies and Para-copyright are shifting the control back?


American Geophysical Union v. Texaco: American Geophysical Union v. Texaco F.3d 913 (2d Cir. 1994)


Fair Use Test: Fair Use Test In determining whether the use made of a work in any particular 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 purposes; (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.


Two Theories of Fair Use: Two Theories of Fair Use Harper & Row/Napster Geophysical/Eldred/Wind Done Gone


Factor One: Purpose of the Use: Factor One: Purpose of the Use What was the nature of the use? Was it commercial? Was it transformative? Was it customary practice?


Factor Two: Nature of the Work: Factor Two: Nature of the Work What was the work at issue? What was the nature of the material copied?


Third Factor: Amount and Substantiality of the Portion Use: Third Factor: Amount and Substantiality of the Portion Use In Absolute Terms? Qualitative Nature?


Fourth Factor: Effect on the Market: Fourth Factor: Effect on the Market Impairment of marketability? If it became widespread practice?


Slide92: www.copyright.com


Revenge of Geophysical: Revenge of Geophysical Does the ruling enforce the technological status quo unnecessarily? Does new technology, whereby each copy and each printout can be controlled, render Geophysical irrelevant? DMCA? Alternative business models Differential Pricing – price for multiple users Database Model – subscription-based, make all the copies you want Freeware -- why do content authors need publishers (ie. middle-men)? Why not just post to the Web for free with no controls?


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


Factor One: : Factor One: Was it Was it


Factor One: Take Away: Factor One: Take Away Presumption against fair use as a result of commerciality is reduced Commerciality by itself is not dispositive Focus not only on for-profit status but on the use Sliding scale test No given use is presumptively fair use


Factor Two:: Factor Two: What What


Factor Two Take-Away: Factor Two Take-Away Feist Over Fiction Idea/expression dichotomy Public interest rationales for allowing the use of certain kinds of work Even though copyright in expressive work is “thicker”


Third Factor:: Third Factor: What was the What was the


Third Factor Take-Away: Third Factor Take-Away Extent of permissible copying varies with the purpose and character of the use Not only quantity but quality that matters Do not purloin “Expressive heart” or the “Essence of the Original” Inquire as to how it factors in the new work Parody’s art lies in the tension between a known original and its pardodic twin “Market failure” argument


Fourth Factor:: Fourth Factor: Effect on And on


Fourth Factor Take-Away: Fourth Factor Take-Away Commercial use does not imply de facto a harm to the market Have to inquire about harm to market for original and derivative works Have to inquire about the widespread effects Where they may be a market, it must be protected Suppression of the market is not the same thing as usurpation


Suntrust Bank v. Houghton Mifflin, 268 F.3d 1257: Suntrust Bank v. Houghton Mifflin, 268 F.3d 1257 The Wind Done Gone Case 11th Cir. 2001


Suntrust – Purpose of Copyright: Suntrust – Purpose of Copyright 1 2 3 4


Suntrust - Discussion: Suntrust - Discussion Review Test for Preliminary Injunction Test for Copyright Infringement Test for Copying Test for Fair Use Defense


Other Defenses: Other Defenses Independent Creation Consent/License Inequitable Conduct Copyright Misuse First Amendment Immoral/Illegal Statute of Limitations


Remedies: Remedies Liability Rules Property Rules