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The Definitive Outline For Professor Sterk’s Copyright
© 2000 Richard Maluga

Please Note Before Reading: By naming this the “definitive outline,” the author does not purport to represent his work as the best way to study for Professor Sterk’s Exam in Copyright. In fact, the author neither admits nor refutes having ever attended a copyright class taught by Prof. Sterk. I don’t even acknowledge the existence of anyone named Professor Sterk and vice versa. Finally, the author does not guarantee that any discussion of copyright law exists in this outline – for who is to say what is or isn’t copyright? For example, I may legally change my name to “Copyright” and claim that this outline is about me or say that any rules I devise are laws of copyright. Nevertheless, I would not be able to expect anyone to follow my rules any more than they’d follow federal copyright law. Consequently, copy this outline if you want. Distribute it, perform it, create derivative works from it, stick it in a collective work, record it, make a movie, compose a broadway musical based upon it if necessary. You have my blessing. I admit that much of the preceding may not make sense, but please keep in mind that, like most of this outline, it was written by the author at 3 in the morning with Anna Kournikova on his lap. Best of Luck on your exam! -- Copyright.

I. Copyright law will protect an original work of authorship fixed in any tangible means (now know or later developed) of expression. §102(a)

A. Fixed means: a work’s embodiment is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration. §101
Relevant Case Points on Fixation:
- Video game images are protected, because they can be reproduced by a machine or device. They do not have to exist in fixed form all at the same time. Midway
Sterk Points:
- Publication isn’t required for a work to be considered fixed or to be protected by the Act, but registration must be done prior to filing of suit.
- There is a common law copyright for oral remarks, claimed utterances.
- Proof problems without Fixation requirement.
- If typing exists on a computer screen but is removed without ever being saved, it’s not fixed for more than a transitory duration and even if D memorizes and copies it, P will have no way to prove his claim.
- mechanical authorship problematic b/c no incentive and difficult to determine if similar works are original or copies. Burrow Giles

B. An original work is one with a minimal amount of creativity; novelty and uniqueness not required. Alfred Bell v. Catalda Fine Arts. An original work is NOT an idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of how it is described or fixed. §102(b)
- original independent intellectual creation of the author
- A distinctive arrangement of unoriginal images or works can earn a © so long as a minimal amount of creativity exists. Atari Games
- A personal reaction to something found in nature (circus poster) deserves a copyright regardless of what it’s used for. Bleistein
- Creating an idea for accounting does not entitle you to protection from having it utilized in every possible means of expression when there is a limited amount of ways to express the idea of accounting. Baker v. Selden.
- There is protection for the expression of ideas that do not attempt to advance the understanding of a phenomenon or give a solution to a problem, but which are instead infused with an author’s taste or opinion. CCC Information Systems
- While a mold used to express an unoriginal idea (bee design for a pin) can get a ©, others cannot be prevented from creating expressions that look the same. Herb Rosenthal
- If merged idea and expression could be copyrighted, there would be 1) authors taking forever to think new things up, 2) authors/investors seeking out only those ideas with the most possible expressions, and 3) lots of litigation
- Works of the U.S. government can’t get ©, but government can receive and obtain © transferred to it. §105

II Works of Authorship
A. Copyright protection extends to 1) literary works, 2) musical works, 3) dramatic works, including any accompanying music, 4) pantomimes and choreographic works, 5) pictorial, graphic, and sculptural works, 6) motion pictures and other a/v works, 7) sound recordings, and 8) architectural works. §102(a)
- Facts, although they may be researched, are not generated by an author and cannot receive a ©. One’s style of presenting facts (i.e. from perspective of a single person involved with the facts) can, but it involves adding something original. Miller v. Universal Studios
- Hypothesis is a building block of knowledge and not subject to © laws
- Reporters and researchers have as incentives the ability to break a story first or simply to get paid for reporting.
- A character in a copyrighted book isn’t necessarily itself protected.
- So long as there are many ways to express instructions necessary to work all computer operating systems via object code (fixed literary work), a computer manufacturer can obtain a copyright for the instructions to its specific operating system with no obligation to license its use to companies wishing to make software for its o/s via the object code instructions. Apple Computer and §117
- Maps are not capable of © unless they contain certain combinations or arrangements of known facts that ARE NOT mere trivial variations of those facts.
- A work unworthy of a patent isn’t automatically disqualified from © protection. Mazer v. Stein
- When the only artistic and aesthetic features of a work are required for it to serve its utilitarian function, there is no ©. Carol Barnhardt
- To get a © over something that is functional, there must be conceptual separability – it must be able to exist apart from its function and its function must be attainable through many other means. Mazer
- The fact a mask is made to induce laughter in those who perceive it, doesn’t make its appearance functional and thus incapable of ©. Masquerade
- When a © is challenged, the owner has burden of proving originality. Richmond Homes
- An architectural work is any tangible means of expression for the design of a building (plan, drawing, the actual house, etc.) §101
- Original house designs or those that are a combination of unoriginal components can get © protection even if they serve utilitarian functions. All P has to do is prove that the slight amount of originality in the combo will keep others from confusing it with other designs. Richmond Homes
- After Richmond, the best way to sue for infringement of architectural design is 1) prove there is a ©, 2) prove the © is good and your work is original, 3) show that infringer’s work wasn’t copied by showing a great availability of P’s designs all around and refute possibility of D copying from other homes that have common design aspects but not © or possibility of D independently coming up wit the idea.
- There’s no good justification for giving © protection to architect as incentive to keep creating, but Berne Convention dictates it.
- If an architect draws up plans as per buyer’s wishes, buyer can build house. However, architect owns a © in plan merely by drawing it up. Consequently, if another buys the plans from original buyer, no building can occur without architect’s permission.

B. The subject matter if © as specified in §102 includes compilations and derivative works; §103
i. Derivative works
- A derivative work is not created every single time an original work is altered (framed or mounted) by its purchaser, especially when the original wasn’t worthy of © protection. Lee v. A.R.T.
- A purchaser of a work can resell it regardless of whether it is copyrighted due to the first sale doctrine. Lee and §109(a)
- Making a three dimensional version of a protected work is infringement/copying. Durham v. Tomy.
- One can copy those parts of a derivative work that belong to the public domain and were changed only slightly by the author. Matthew Bender v. West
- While works in the public domain (not original or expired ©) get no protection, a person’s original variation (deriv. work) on those works (i.e. dialogue in David Copperfield play) can get a ©. §103
- Derivative work protection exists so that authors have incentive to resurrect old or preexisting works with no © (ex. Cliff Notes).
- For the most part, licensees of the same copyrighted work (a cartoon character) cannot sue each other when they create similar looking derivative works (toys). There is a problem of proof, since both are working off of the same original work. - If there is one exclusive licensee with right to create derivative work and D copies it, only the © owner can sue D.
- Buying a magazine and changing the order of its contents is a violation of ©. §106(2)
- Merely buying issues of a magazine, then binding and selling them isn’t infringement, because there is no substantial change that results in a derivative work. Furthermore, in neither case has anyone’s market or incentive to create magazine been destroyed (a new mkt has been created)
- Copying something you buy and then changing it in some fashion for resale is infringement.
ii. Compilations
- There is protection over an arrangement of facts only if it has some unique quality (telephone book must be in more than alphabetical order). Feist
- Arrangements that contain little skill (bond info cards) don’t deserve a ©. Financial Info.
- Arrangements that are based on statistical or other publicly known criteria (in the case of bb cards), receive no © protection. Eckes
- Arrangements that are original may not be protectable if there are few alternatives to others using them.

III Ownership and Transfers
A. Initial Ownership
i. A work made for hire is either a work prepared by an employee within the scope of his employment or a work specifically ordered or commissioned. §101
- The S. Court’s test for whether a work was made for hire includes weighing the following factors: a) the skill required for the work, b) source of tools, c) location of work, d) duration of relationship, e) whether hiring party can assign additional projects, f) hiring party’s control over when and how long the artist will work, g) method of payment, h) hiring party’s role in hiring and paying any assistants, i) whether work is part of hiring party’s regular business, and j) whether hiring party gave employee benefits. CCNV v. Reid
- The Second Circuit’s comparable Ames test is 1) who controls means and manner of production, 2) did art require great skill, 3) was employer able to assign other tasks at his own whim, 4) did artists get employee benefits, 5) did artists get tax treatment and work hours of employees. See also Carter v. Helmsley Spear
- When factors 3-5 exist, 2d Cir will find a work for hire. Carter v. Helmsley Spear
- Control over work and “traditional employer-employee relationship” aren’t mandatory prereqs to work for hire.
- Mistreatment of artist can be an escape from work for hire doctrine (bad benefits, forced to work like a slave, etc)
- In the 4th Circ., a computer program designer, absent agreement otherwise, retains the right to have a © in any work he creates at home, after hours, and not in pursuit of his corporation’s goals. Avtec
- Also in the 4th, When an employee creates a prgrm at home that is of the same quality as that he is hired to make at work, the corporation owns the ©. Cramer
- Absent K, periodicals own the © in their reporter’s work product and in the arrangement of the collective works. §201(b-c)
- Work for hire doctrine exists in part, because worker’s incentive is money he is getting from employer, and employers would pay very little money to workers if they couldn’t own ©. As a result, the many creators of unprofitable but socially and culturally useful works would suffer.
- Academic works are exempted from work for hire in common law cases.
- A computer program’s codes and the images they display are separately copyrightable. So a company that hires programmer to create a certain image may only own the right to images as work for hire.
ii. A joint work is prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. §101
- A joint work will be recognized when there is evidence that the parties involved intended to complete the work and hold undivided interest. This is shown by a K stipulating such a relationship; or by each side contributing something copyrightable without signing away its rights via employment K or as work for hire. Childress
B. Transfer of Rights:
i. A transfer of copyright ownership is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a © or of any of the exclusive rights comprised in a ©, whether or not it is limited in time or place of effect, but not including a nonexclusive license. §101
- While a nonexclusive license can be granted orally and implied from conduct (physical transfer of work), neither a transfer of all rights nor an exclusive license may be granted without writing – regardless of industry custom. Effects Associates
- A transfer of a material object is never by itself a transfer of ©. §202
- An exclusive license to use a work doesn’t in and of itself include a right to sub-license, but it does prevent licensor from licensing to others.
- Someone wishing to obtain right to use something that is under exclusive license must go to both licensee and licensor.
- Where a licensor gives licensee exclusive right to record and copy its work in any manner possible and distribute via t.v. and movie theater, but reserves all other rights, licensee can’t distribute in all of the mediums that he has a right to record in. Cohen v. Paramount
- As a result, while licensor reserves right to distribute film on video, he has no right to record, copy or otherwise manufacture it. A person wishing to distribute via video would have to get permission from each.
- Recordation of rights to copyrighted work serves as constructive notice only when the instrument filed would give a register searcher a specific identification of the transferred work and when the work’s © was registered. §205©
- When two or more parties receive transfer of the same work, and first transferee records within one month (and © is registered), he prevails. Otherwise, it’s whichever GF purchaser records first (so long as §205(c) is followed). §205(d)
- A nonexclusive license is good against a conflicting transfer of © ownership when nonexclusive license is granted before the transfer of © or taken in GF before registration of © transfer. §205(e)

IV Exclusive Rights and Their Limits
A copyright owner has the exclusive right a) reproduce in copies or phono-records, b) prepare derivative works, c) distribute copies or phono-records by sale or other transfer of ownership (i.e. leasing, renting, lending, d) perform the work publicly, e) display publicly, and f) in the case of sound recordings, to perform the copyrighted work publicly by means of digital audio transmission. §106
A. Overview
- Compulsory licenses exist so that certain industries aren’t prevented from growing (public t.v., cable, satellite).
B. Reproduction Right
- A © owner can sue anyone who has permanently cast his work in an intelligible form, regardless of whether the copy was completed or distributed. Walt Disney v. Filmation
- The ©’s in a sound recording and in a musical composition are separate.
- Owner of © in sound recording can only sue when there is direct mechanical reproduction of the recording. §114(b)
- While owner of a musical composition can sue whenever his work is performed publicly without permission (§106(4), owner of sound recording has no such right (114(c).
- Compulsory license doesn’t allow you to reproduce a copyrighted sound recording, just re-make it in your own way without changing basic melody and fundamental character of work. §115(a)
- Owner of © in a musical composition can sue whenever song is recorded by another or copied original recording – unless §115 compulsory license has been obtained.
C. Adaptation Right
- In P.R., buying a copyrighted work (fabric with animation) and creating a product out of it (sheets) that would not itself garner © protection as a derivative work, is not a violation of © law. Precious Moments
- When a © owner makes money off of selling his work to buyers who would only make purchase if they could adapt and re-sell work without adding originality/creating a derivative work, it’s unfair to give owner an infringement action. Precious Moments
- However, be mindful of low threshold for originality.
D. Public Distribution Right
- A person who obtains a stolen copy of a copyrighted work, regardless of whether he is a BFP, cannot resell it without infringing on distribution right, because he is not the real owner of the work. §109(a)
- While copyrighted audio recordings can be resold by buyer, they can’t be rented out unless it’s not for profit. §109(b)(1)(A)
- Different protection for audio than for video or print works, because it’s easier and cheaper to copy it, and audio is re-used far more than other media.
- All civil actions must be brought within 3 years of the time the claim accrued. §507(b)
- Copying of a lawfully obtained copyrighted work without owner’s permission and making it available for public use is a violation of the distribution right, regardless of whether public saw/obtained the work or even knew it was available. Hotaling v. Church of Jesus Christ of Latter Day Saints (4th Cir. 1997)
- Permission to distribute the original of a copyrighted work isn’t the same as a right to distribute copies of it. Furthermore, thinking you were distributing the original instead of copies is no defense.
- First sale doctrine only allows you to re-sell the copyrighted work you bought in the exact same way that it was sold to you. In other words, if P sells D a disk with information, D cannot load data on hard drive and then sell it via e-mail to another OR put data on a website and give it away – both result in lost potential income for P. (It’s hard to enforce these violations though).
E. Public Performance Right
- There’s a violation of public performance right when someone performs a copyrighted work of another in a public/semi-public are where people could hear it – regardless of whether they actually did hear.
- A license to rent a copyrighted work doesn’t entitle holder to make a viewing room available for viewing of film by any member of the public with the renter. Columbia Pictures v. Aveco
- The first sale doctrine is never a defense to violation of public performance right.
- Transmission of a work over cable, satellite, fiber optic wires, etc is distribution, not performance.
- Hotel giving guests vcr’s and films isn’t infringing, but one that keeps films in a computerized bank in lobby is unlawfully transmitting copyrighted works.
- Aiken exception: you can have a radio or tv on in a public place, so long as there is no charge for it. §110(5)
- Size of a business is not determinative of whether its transmission of a work is infringement – unless there is a commercial system being used. Broadcast Music
- The nature of a radio or television transmission is the decisive factor in whether a © is being infringed: When a business uses “home-type” parts/stereo components that would be used to hear or watch a transmission within confines of a home, there is usually no infringement. Broadcast Music
- When ANYTHING is done to amplify the reach of the transmission beyond the size of a home, it is unlawful. Broadcast Music
- If a business transmitting a work has all of its stores transmit the exact same works, there may be infringement (it’s acting like a radio or tv station). Broadcast Music
- Exceptions to public perf. right exist so electronics stores can demonstrate their products, etc.
- Cable is a form of retransmission of a work, but there is compulsory licensing involved. §111
- There is no compulsory licensing of network programming to satellite operators when signals are sent to an area where nets can be picked up via a regular antennae. §119
F. Public Display Right
The owner of a copy of a copyrighted work has a right to publicly display it to viewers at the place where the copy is located. §109(c)
- Public Display right doesn’t permit owner of a copy of a copyrighted work to display it on television, because it would then be viewed by more than just the people at the place where the copy is located. Ringgold
- The de minimis maxim defense is only effective when there is a technical violation too trivial for the law to apply. Ringgold
- When a copy of a copyrighted work appears several times in recognizable parts on a t.v. show, the © is infringed. Ringgold
- In the aforementioned example, a © owner can also argue violation of its right to reproduce and to create derivative work.
- The public rights you get as a purchaser of a copy of copyrighted work do not extend to people you lend it to unless you get permission of original copyright holder. §109(d) Consequently, you can’t lend a copyrighted painting or other work to museum for display without © owner’s consent.
G. Miscellaneous Rights:
- An owner of © in sound recording has exclusive right to perform work publicly and deliver it via digital transmission. §106(6) and Digital Performance Right in Sound Recordings Act (not covered much in class)
- Audio Home Recording Act passed to combat fears that DAT will cause massive at-home copying.
H. Moral Rights
- while they are not all recognized by state or federal law, they include: 1) right to insist that no one destroy or mutilate work (integrity), 2) right to be acknowledged as author (attribution), 3) right to decide when and how work will be presented to public (disclosure).
i. State Art Preservation Acts
- It’s a violation of NY state law 1) to display in a place accessible to public or to publish 2) another’s work of art 3) in altered, defaced, mutilated, or modified form 4) that is displayed, published or reproduced as the work of the artist (there is no requirement of malice in NY). Wojnarowicz
- Mass mailing is publication according to NY law. Wojnarowicz
- Since the aforementioned state law is meant to prevent misrepresentation of an artist, there is no constitutional violation of freedom of speech. Furthermore, since the state protecting against misrepresentation is neither interfering with nor pursuing a Congressional goal, there is no preemption in CASES that TOOK PLACE PRIOR to the VAR of 1990. Wojnarowicz
ii. Visual Artists Act of 1990
- Limited to visual art in single copies of editions of 2000 or less (not posters or other commercially common works)
- Recognizes an author’s right to claim authorship over his work and not be accused of creating something he didn’t make.
- Moral rights can be waived in writing
- VARA preempts state created rights, but not remedies.
- Note that Lanham/Trademark Act gives protection to mislabeling of a work’s origin. §43(a)
- Editing out or taking away a piece of a ©’ed work is a violation of © owner’s right to create a derivative work. Gilliam v. ABC (Monty Python)
- There is also Lanham violation in the above example, because audience are left wondering whether the work embodies the complete expression of author. Furthermore, the work of editors isn’t credited.
- The VARA doesn’t protect artists who make works for hire, since their employers own ©. Carter v. Helmsley-Spear
- VARA is subject to fair use. §106A(a)

V Infringement Actions
A. Framing the Lawsuit
i. Jsd
- A District Court has jsd over cases that are either © claims or unfair competition (state) and ©. Suits against the federal government must be brought in the Court of Federal Claims.
- In the Second Circuit, a court will assert jsd in three instances: 1) When the complaint for a remedy expressly granted by the © Act is concerned with actual infringement of a © holder’s rights, 2) when complaint asserts a claim requiring construction of the Act, and 3) when a distinctive policy of the Act requires that federal principles control the disposition of the claim. T.B. Harms
- When © ownership turns on interpretation of statutory language, #2 is satisfied.
- When a claim contains state and federal issues, the two must be from same nucleus of facts for fed court to hear the 2 issues together. Friedman
- Infringement isn’t the only kind of © claim heard in fed jsd. You can sue for declaratory judgment as to ownership of a ©.
- Mere contractual disputes involving copyrighted works can’t be heard in fed ct unless statutory interpretation of Act is required.
- Even under the Second Circuit “liberal standard,” if case is dominated by state issue it will be dismissed from fed ct.
- Federal courts probably cannot award monetary damages against states.
ii. Other Procedural Matters
- Non-exclusive licensees of a © have no standing to sue anyone. The © owner is the only one who can make all transfers of rights to his works. Consequently, he could face unwanted interference from nonexclusive licensee every time a transfer is made to someone else. Swarovski
- Nonexclusive licensee is insulated from suit by others buying licenses in the same work.
- Authors of a musical score who sell their right to it in return for royalties cannot sue purchaser or its agent when only a derivative work is created and they don’t get paid as a result. Cortner v. Israel
- A properly pleaded infringement claim must allege 1) which specific works are subj of claim, 2) that P owns the © in work, 3) that ©’s have been registered in accordance with statute, and 4) by what acts and during what time the D infringed.
- In an infringement claim, the P has burden of proving ownership. §410(c)
B. Proving the Claim
- Issues to look at: 1) Did D have access to P’s work and produce a substantially similar one, 2) Did D copy and if so, was it of a permissible amount or type or simply improper appropriation.
i. Copying:
- In SDNY, a D infringes when, having heard a song before, he subconsciously creates one with the same melody. Bright Tunes v. Harrisongs
- When you can’t prove D had access to your work, you must establish by preponderance of the evidence that there is proof of similarity so striking that the possibilities of independent creation, coincidence, and prior common source are precluded. Striking similarity alone is insufficient unless it takes place in a unique or complex context. Selle v. Gibb
- Showing no access but striking similarity will only allow P to defeat a motion to dismiss. Who wins is a question for fact finder and Sterk says access isn’t necessarily the only definitive factor in a court’s decision.
- It helps to have an expert to say that works must have been copied.
- When you represent P, show 1) access, 2) striking similarity 3) the infringement you are claiming isn’t of some quality your work shares with prior authors’ works (use experts) 4) use experts to say that D’s work is so similar he must have copied his work/no way he thought of it by himself.
- When you represent a D, show that 1) there was no access, 2) no similarity, and/or 3)the similarities P is claiming aren’t unique to P’s work and are in the works of other prior authors 4) argue that there is only a limited number of ways to express the particular idea you and P share, and similarities are bound to occur. Baker v. Selden
- J. Posner/7th Cir. says that similarity so close as to be highly unlikely to have been an accident of creation is evidence of access. Ty v. GMA
ii Improper Appropriation often involves 2 approaches:
-1)Subtractive: Find what parts of P’s and D’s works don’t warrant a ©, subtract those parts and analyze what is left. Drawbacks: Jury can’t comprehend this; in addition, one often needs to look at arrangement of parts, not just the parts themselves.
-2) Totality: The feel of all the parts. Experts are excluded, because it’s a matter of similarity as perceived by ordinary people. Drawbacks: Jurors are not in a good position to decide whether P’s and D’s expressions are similar or their ideas.
- Judgment n.o.v. can be overturned by judge when there is a mistake of law by jury. However, juries should only be overturned when a jury overprotects ©/finds infringement too easily.
- Generalized themes and underdeveloped characters are not subject to a ©, and an author will not be rewarded for failing to distinguish and develop characters beyond common stereotypes. Nichols v. Universal
- Twists on a common theme might deserve a ©.
- A great part of whether infringement action will lie is the potential for P to lose sales as a result of D’s work. When P creates vague characters based on stereotypes, his audience isn’t really watching his work for the originality but for their fondness of an abstract concept. Audience might move to other similar works made by D, but the popularity of D’s work is no more attributable to P’s originality than it is to D’s.
- Even a plot with 200 different elements can be unprotectable.
- When D’s design is not an exact replica of P’s, but consumers are likely to overlook the small differences and be attracted by overall appearance and aesthetic appeal found in P’s work and copied by D, it’s infringement. Peter Pan
- In the Second Circuit, when two parties have products with protectable and unprotectable parts, the court will do a side by side analysis. Re-designing a copyrighted work (puzzle) without copying the protectable elements but using same idea is not infringement. Laureyssens v. Idea Group
- Substantial similarity and infringement exist when the ordinary observer can see parts of one work were copied to make D’s work and those parts are protectable. - P’s expression of his view of the world (NYC as center) is protectable, but remember that the idea isn’t protectable (you can still draw NYC as center in different forms of expression). Steinberg
iii. Software Infringement
- A court will use expert testimony to determine which aspects of a program are worthy of copyright and those that are merely functional or based on general scientific knowledge. It’s a 3-step process of 1) breaking down prgrm into structural parts and isolating each level of abstraction, 2) sifting protectable expression from unprotectable material and 3) comparing material structures. Computer Associates
- Court in Computer Assoc. basically subtracted, with expert help, the unprotectable elements of comp. prgrm and compared what remained.
- Those parts of a computer program that are put in for efficiency can’t be copyrighted, because the result would be a hindrance on innovation. Comp Assoc
- When nonliteral components of a rewritten computer prgrm are not substantially similar to copyrighted work, there is no infringement. There must be literal copying of codes for infringement to be found. Comp. Assoc.
- While the codes that make up menu command hierarchies are copyrightable, the commands themselves are only a method of operation within meaning of §102(b). Lotus Development Furthermore, giving a monopoly over key strokes would decrease efficiency of products.
- The aforementioned decision was a 50/50 split in S. Ct., so it’s only binding in 1st Cir.
C. Contributory and Vicarious Infringement
- A vicarious liability claim can only be brought against someone with a right and ability to supervise an infringer. Demetriades
- A contributory infringement claim can only be brought against one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another. Demetriades
- Neither mere knowledge of nor benefit from infringement makes you liable under either type of infringement unless you’re responsible for actor in some way or helped him.
- When a magazine publishes a stolen work with a registered ©, it is a contributory infringer. If the work is unregistered, it is vicariously liable (has no knowledge but is still responsible for its contributors)
- Reasons to find vicarious or contributory liability: so people in a position to control what they sell and select who they deal with use discretion, and do their best to know the origins of income they receive from another party via rent, profits, etc.
- 3 Hypos: 1)Flea mkt that rents to bootlegger may be contributorily liable, because it has ability (and should be encouraged) to know what it’s “tenants” are selling. 2) Operators of concert hall where singer decides to unlawfully perform a cover is vicariously liable, because it had a right to supervise who plays what in its hall (and if band was a big name, hall operator could draft K to make singer liable for its damages). 3) Radio station advertises a music store that sells bootlegs, but whose inventory the station is unaware of. The station isn’t liable vicariously, because it can’t control what advertisers sell. It’s not contributorily liable, because it has no knowledge.

D. Extraterritoriality and Conflict of Laws
- © Act does not give subj matter jsd to fed cts in cases regarding infringement abroad. Furthermore, someone in U.S. who authorizes infringement abroad is no more subject to suit in U.S. than the actor. Subafilms
- P might be able to bring a case in state court or as a diversity claim in federal court.

VI Fair Use and Affirmative Defenses

The four factors a court will look at when a fair use defense is brought are 1) purpose and character of use (educational v. commercial), 2) nature of work, 3) amount and substantiality of portion used compared to the whole, and *4) effect of use on potential market for or value of the work. §107
- The four factors of §107 are based on Folsom v. Marsh, the 1841 case in which the S. Ct. listed as factors 1) nature and object of selection made, 2) value of materials used, 3) quantity and value of materials used, and 4) effect on marketability.
- Rationales for fair use: a) so that knowledge isn’t handcuffed to a ©, b) so that high negotiating costs can be avoided in instances where © holder’s incentive to create or promote creation isn’t really affected adversely. c) free speech
- Copying one recipe out of a 200 recipe book for your own cookbook is not fair use if there are many ways to express the same idea/dish. There can be a © for one recipe and copying of one by another can result in value of cookbook (factor #4)
- Teaching a copyrighted recipe is fair use (factor #1 educational and not likely to reduce mkt value – may increase popularity of cookbook!)
- A publication using excerpts from the previously unpublished memoirs of a public figure is infringing when it interferes with the copyright owner’s pre-publication market for those excerpts. It’s irrelevant whether D made money off of the use or if it used a very small piece, because the price of an “exclusive” that P loses is considerable. Harper & Row v. Nation
- Publishing excerpts after © owner’s publication may be fair use
- The 4 fair use factors apply when unpublished letters are used without permission. Salinger
- Where the heart of a work (song) is used to parody it and the only drop in marketability of the copyrighted work is the result of the critical nature of D’s use, there is no infringement. Campbell v. Acuff-Rose Music
- A weakness of Campbell is that a parody is often created for the purpose of exploiting the same market of people who buy the original work or would have bought original work (i.e. ex-Dallas Cowboy Cheerleaders poster with same pictures as original is a parody of the orig. and will be bought by same audience).
- Wholesale Use of the actual copyrighted work in a parody (i.e. Mickey Mouse porn movie) is not fair use.
- One cannot use fair use as a defense for using a copyrighted work for sole purpose of parodying something unrelated to the text of the work (there is no free speech/critique of copyrighted work at issue). Dr. Seuss v. Penguin
- Where there is good reason for studying or examining the unprotected aspects of a copyrighted computer program, disassembly for purposes of such study or examination constitutes fair use. Sega Enterprises v. Accolade
- Sterk believes that where there is no effect on market of underlying work, there is no impermissible use. The damages you hope to recover should at least exceed cost of litigation.
- Copying isn’t just xeroxing, it’s also taking down excerpts via handwritten notes, etc.
- Where an institution’s copying of articles in P’s publication for archival use of its scientists is done merely for convenience, involves copying of entire articles, and decreases revenues of © owner income from CCC licensing, there is no fair use (3 of 4 factors weigh against D). American Geophysical Union v. Texaco
- I’m unclear on whether there could have been individual infringement in American Geophysical and when professor has university copy articles for him to use in law review articles.
- There’s no fair use when an academic institution hires a for-profit commercial enterprise to copy more than 5% of a copyrighted work, which amounts to a substantially qualitative amount of it. Princeton U.P. v. Michigan Docs
- Even if the copyrighted work that D copies has little or no market value, to deny relief would be to create disincentive for publishers to acquire marginally profitable works with high social value. Princeton U.P. v. Michigan Docs
- Classroom guidelines for fair use indicate that there is no infringement if 1) there is brief copying (1,000 words or less), 2) inspiration and decision to copy at once maximized teaching effectiveness and it would be unreasonable to expect teacher to wait for P’s consent, 3) not more than 9 instances of multiple copying and only limited number of copies of any one author from any single work, 4) notice of © on each work, 5) copy isn’t being used as substitute for books, and 6) kids don’t pay more than cost of copying. Princeton U.P. citing House and Senate Reports
- Princeton doesn’t require all academic used to be licensed.

VII Duration, Renewal, and Termination of Transfers
A. Duration and Renewal
i. Duration: It was originally 2 terms of 28 years, now it’s author’s life plus 75 years.
ii. Renewal:
- Under the 1909 Act, an author could assign his renewal rights to another while the copyright was still in its initial term. The alleged underlying logic is for author to be able to instantly make as much money as possible. Fred Fisher Music
- Dissent in Fred Fisher held that 2 different period created so author could get back his © if he made a bad business decision in first 28 years of ownership. New © Act’s termination right seems to partially support this kind of policy, though you have to wait much longer than 28 years to terminate.
- When an author assigns renewal right to another during initial period but dies before renewal, the © reverts to family. Miller Music
- This applies even when permission was given to produce a derivative work and heirs may try to extort money from initial period purchaser who must now pay up to continue using the work (i.e. movie, musical, book, tv series, etc). Stuart v. Abend
- A conveyance of a © during initial period doesn’t include the renewal period unless there is specific language to this effect. Epoch Producing Corp.
B. Termination of Transfers
§203 of the Act regards the termination of copyrights transferred after 1977. The following is the summary of §203 found in the Patry casebook (using the same outline numbering scheme):
I. Grants Subject to Termination §203(a)
A. §203 applies to any transfer or license of any right in any work, so long as:
1. The grant was executed on or after 1/1/78; AND
2. The grant is made by the author
B. The section DOES NOT apply when
1. Transfer regards a work for hire
2. Transfer is made via disposition of will.
II. The following Persons Exercise the Termination Right §203(a)(1) and (2)
A. The author or, in cases of joint authorship, a majority of authors.
B. The author’s survivors, who owns the termination right once the author dies.
1. Those entitled to exercise the right are:
a. Author’s surviving spouse AND
b. Author’s surviving children (or the children of a child acting as a majority.
2. If only wife or only child survives, that party receives entire right to terminate.
3. If only multiple kids are survivors, a majority consensus is necessary for termination.
4. If both widow an children survive, ownership is divided equally among each class and a majority of the total is needed to exercise termination right. Widow can gain majority by getting one child or a majority of her grandchildren from one deceased child to join her.
III. Time to Exercise the Termination Right §203(a)(3)
A. Termination right may be exercised during a 5 year period staring at the end of 3 years from the date of execution of the grant/transfer.
B. BUT IF the grant was of a right of publication, the five year period to terminate begins at the earlier of:
1. 35 years after publication OR
2. 40 years after the grant was made
IV. Notice of Termination §203(a)(4)
A. Must be signed by persons entitled to terminate the grant or by their agents
B. Must be served not less than 2 nor more than 10 years before the proposed date of termination
C. Must be served on grantee or his successor in title, at which point interests in termination vest.
D. Must comply with Copyright Office regulations as to form, content, and manner of service.
E. Must be recorded in © Office prior to effective date.
V. Termination can be done regardless of any agreements made to the contrary by Author (unless the copyright was disposed of via will see above). §203(a)(5)
VI. Effect of Termination §203(b)
A. Upon termination, all of the rights of a copyright revert back to all termination right owners, regardless of whether they voted for it.
B. EXCEPT
1. As to derivative works prepared prior to notice of termination. New derivative works of the old derivative one can’t be made once termination sets in.
2. As to any rights under other federal, state or foreign laws.
C. Further grants of terminated rights:
1. Once right has been recovered, a majority of owners, in the same number and proportion as under II above, may make further grants which bind all owners.
2. No new grants or agreements to make one may be made until termination is effective, except that owners of termination interest can bargain with original grantees.
D. If you don’t terminate at proper time, grantee retains all rights under the grant for the remainder of the copyright.
§304 Terminations regard interests in © transferred prior to 1/1/78.
I. Grants Subject to Termination §304(c)
A. Section 304(c) applies to any transfer or license of renewal rights in a statutory copyright subsisting on the effective date of the 1976 Act, so long as:
1. Grant executed before 1/1/78 AND
2. Grant was made by an author, or the widow, widower or children of an author, or his/her executor or next of kin.
B. It DOES NOT APPLY to
1. Works made for hire
2. Dispositions by will.
II. Persons Who May Exercise the Termination Right §304(c)(1) and (2)
A. Grants by the author.
1. The author or, in cases of joint authorship, each may terminate separately as to his interest in the work.
2. The author’s survivors, who owns the termination right once the author dies.
a. There are two kinds:
i. Author’s surviving spouse AND
ii. Author’s surviving children (or the children of a child acting as a majority.
b. If only wife or only child survives, that party receives entire right to terminate.
c. If only multiple kids are survivors, a majority consensus is necessary for termination.
d. If both widow an children survive, ownership is divided equally among each class and a majority of the total is needed to exercise termination right. Widow can gain majority by getting one child or a majority of her grandchildren from one deceased child to join her.
B. Grants by person or persons other than author. Grant may be terminated only by unanimous action of the surviving person or persons who executed it.
III. Time to exercise the Termination Right §304(c)(3). The termination right may be terminated during a five-year period starting at the later of:
A. The end of the 56th year from date of © OR
B. 1/1/78
IV Notice of Termination §304(c)(4)
A. Must be given by persons entitled to terminate grant or their agents,
B. Must be served not less than two nor more than ten years before the proposed date of termination.
C. Notice must be served on the grantee or the grantee’s successor(s) in title, at which point interests under the termination vest.
D. Must comply with © Office regulations
E. Must be recorded in © Office prior to its effective date.
V Effect of Other Agreements of Termination
A. The 19 year extension to duration of existing works, which Congress created in the 1976 Act, cannot be assigned away by advance grant or an agreement to make a will.
B. The above doesn’t apply to the second 28-year term, which can be transferred.
1. A living author is bound by an advance assignment of the second 28-year term.
2. This assignment isn’t binding on author’s survivors, though they can assign away their interest in the 28-year term.
VI Effect of Termination §304(c)(6)
A. Persons to whom rights revert:
1. Grants by an author revert to him. If he’s dead, survivors get shares based on apportionment of their termination rights
2. Grants by all others revert to all persons entitled to terminate
3. Under both number 1 and 2, the rights to reversion vest upon proper service of termination notice
B. EXCEPTIONS to termination:
1. A derivative work made under authority of grant and prior to notice may continue to be exploited by original grantee (but no new deriv. works may be made by him.
2. Termination only affects rights under © Act, not other federal, state or foreign laws.
C. Further grants of terminated rights:
1. Authors may re-grant rights as to which they have exercised a power of termination. When a grant made by an author’s successor in interest is terminated, all those specified as having termination interests become tenants in common and may make grants as such. Where a dead author’s rights are shared, further grants may be by majority action as to that author’s share and new grants will bind all.
2. No new grant of agreement to make a further grant may be made until termination is effective, except as to dealings with original grantee.
D. Failing to terminate within statutory time, grantee retains all rights under the grant for remainder of extended renewal period.

- When an author grants someone the exclusive right to use all contents of his works in a derivative work, heirs seeking to terminate grantee’s right to use a copyrightable character from those works must terminate © transfer in every work that contains the character – not just the first one. Burroughs v. MGM
- Failure to terminate the © transfer in even one work containing the character within the allotted statutory period means grantee gets to keep using it for statutory period. Burroughs v. MGM
- Hypos on Pre-1976 Transfers: “A” wrote and got copyright in novel in 1968. He conveyed to D the exclusive right to make a motion picture. D produced the film in 1968 and got a separate © in it. 1) If P renews his right to the © in the book in 1996 (28 yrs later), he gets his rights back and can sell them to others. He has no right to the movie D made based on the book, because it has its own ©. However, D would not be able to remake his own film. 2) If P had conveyed to D the rights to his book for the initial and renewal periods, P would be unable to make any more transfers and D could remake his film or license the making of others. 3) If P granted D a right for the initial and renewal periods but died first and heirs didn’t renew, D could remake his original film. 4) If heirs did renew, D would have no rights aside from those in his original movie.

Sega Enterprises v. Accolade (1993 p. 757)

decompiling case. does accolade negatively effect Sega's market.

see Disney v. filmation (infringement) and the case with the cassettes and the bear.

the difference between this and baker v Selden is that there is copying, but court found that unlike Disney, this was the only way to do this.

another case for Sega: apple v franklin: compatibility concerns are not a basis for copying. there, however, the source code was in the new programs. but note that this case suggests a way in which a v f could be overruled.

reaffirmed in a case that where an emulator was created that allowed one to play Sony play station games on a computer.

copyright for encouraging the creation of creative work, this is one of the reasons we give the author a monopoly to ensure enough a return to ensure a return at an optimal level but the broader the monopoly, the harder it is for consumers, and people who would build on copyrighted work if we allow complete blockage of transfer, that would be bad
107 takes the concerns into consideration.: if it looks like the use is transformative, judge is more likely to find fair use. amount of the original work that is used: more means likely it will be used as a substitute and less likely that work will be created in the first place. (blah)

American Geophysical Union v. Texaco (1995 p.772)

variant of AGU: copy a law review article: if that constitutes infringement, then does that harm the author? maybe not. suppose the author of the journal is concerned, and it wants to get every dime it can. would giving the journal protection. for one thing, enforcement would be difficult, for another, the cost, if it were too high would encourage the students to copy by hand.

the research scientist's copying constitutes infringement. the existence of the ccc had a lot to do with it. but in our hypo, the fact that it's an individual student has something to do with it: the lack of technological breakthroughs.

okay, it's possible for them collect these fees. why is it desirable? generating another revenue source should encourage more creation.

suppose Cardozo law school photocopied a list of the latest articles and . . .

one of the reasons we have a fair use doctrine is to allow information to be used

what fair use does is allow information to be used freely when it is impossible or prohibitively expensive, or otherwise unfair. when there is pure copying , there is the possibility that viable technologies can shrink fair use.