Fixation:

- Section 102 requires that work be "fixed" in a "tangible medium of expression"

- Fixation plays several roles in Copyright. First, federal copyright protection begins when
a work is “fixed” in a “tangible medium of expression” by the author or someone acting
with her authority §102. Second, copyright infringement may occur when a copyrighted
work is fixed in a copy or phonorecord without the authority of the copyright owner.
Third, infringement analysis often requires comparing the allegedly infringing work to
the copyrighted work to see if copyrighted expression has been copied. Finally,
registration of copyright generally requires depositing a copy of the work. Copyright
protects an original work of authorship as soon as the work has been “fixed in a tangible
medium of expression. §102.
- Another rationale given for the fixation requirement is that it sets boundaries. By putting
the work in tangible form, the author defines what is included in the work.
ii. There are at least four reasons for this requirement.
1. First is the high likelihood that the US Const. requires fixation.
a. Even if fixation was not constitutionally mandated, there are at
least tree policy reasons that support this requirement.
2. First, a central justification for American copyright law is to encourage the
creation and dissemination of artistically and culturally valuable works. -
fixation requirement advances these goals by protecting only works that are
likely to be preserved.
3. Second copyright fixation serves an evidentiary function.
4. Third, fixation ensures that a work's protected expression is fully
delineated which makes that expression easier to separate from any
unprotected ideas the work may contain or represent.
a. Following the piano decision, a work was considered fixed only if
it existed in a form readable by humans not just machines.
b. The white-smith decision meant that copiers could circumvent
copyright protections by creating copies of a work that were unreadable
by humans.
c. Congress overruled white-smith by clarifying that a work is fixed
in a tangible medium of expression so long as the work can be perceived
reproduced or otherwise communicated either directly or with the aid of
a machine or device.
ii.Williams electronics, inc. v. artic international, inc.
1. Defendant claims that the images are transient and cannot be "fixed"
2. The court rejects this and held that the fixation requirement is met
whenever the work is sufficiently permanent or stable to permit it to be
reproduced or otherwise communicated for more than a transitory period.
ii.Cartoon network LP v. CSC holdings, inc.
1. They said that cablevision thru operation of its DVR would directly
infringe their copyrights.
2. Transitory duration- if a work is only embodied in a medium for a period
of "transitory duration" , can it be fixed in that medium and thus a copy? And
what constitutes a period of more than transitory duration.
Authorship:

The U.S. Copyright Act of 1790 covered only books, maps, and charts. Since then Congress has
rapidly expanded the scope of copyright. Now copyright covers books, movies, and songs- but
also advertisements, blueprints, computer programs, diaries, dances, finger paintings, T-shirt
designs, sculptures, speeches. Copyright applies to any original work of authorship fixed in a
tangible medium of expression. Section 102 says: “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. Works of authorship
include the following categories: (1) literary works, (2) musical works, including any
accompanying words, (3) dramatic works, including any accompanying music, (4) pantomimes
and choreographic works, (5) pictorial, graphic, and sculptural works, (6) motion pictures and
other audiovisual works, (7) sounds recordings, and (8) architectural works.

Copyright applies only to original “works of authorship” 17 USC §102(a).

The limitation of copyright to “works of authorship” implies an author. “works” created by

natural processes or by nonhuman animals would also not be “works of authorship”. Lava flows
from volcanoes may form fantastical shapes, but they are not copyrighted, not being the product
of a human author. The Ninth Circuit looks at the structure of the Copyright Act as a whole in
deciding that a monkey, which somehow took a selfie, did not have standing to sue when they
when the photo went viral (Naruto)

The Copyright Office has interpreted the statute to require a human author: “In order to be
entitled to copyright registration, a work must be the product of human authorship. Works
produced by mechanical processes or random selection without any contribution by a human
author are not registerable. Similarly, a work owing its form to the forces of nature and lacking
human authorship is not registerable.

Finally, a person’s identity is also not a work of authorship. One might think of the persona of
some people as their own creation. Someone can create a work imbued with their persona, such
as an autobiography, self-portrait, or ballad. But the work, not the persona would be copyrighted.

The statute also provides that compilations and derivative works are copyrightable subject matter
17 U.S.C. §103(a) → A work can fall into more than one category.

i. Literary Works- a book is a literary work and so is the software code for Minecraft
a. This category includes “works, other than audiovisual works, expressed in words,
numbers, or other verbal or numerical symbols or indicta, regardless of the nature
of the material objects, such as books, periodicals, manuscripts, phonorecords,
film, tapes, disks, or cards, in which they are embodied” U.S.C. §101
i. The definition of literary work for copyright law is very broad: any work
“expressed in words, numbers, or other verbal or numerical symbols”
regardless of the form in which it is fixed.
 b. Software is copyrightable, whether in source code, object code, or other form.
Copyright protects creative expression. Computer programs can be seen as
functional works, as opposed to expressive works. Per the US Constitution
software pervades “the progress of science”

ii. Musical Works, Including Any Accompanying Words- The musical work includes
both the music and words that go with it.
a) A musician who composes music or writes a song is the author of a musical
work.
b) A producer who records some sounds creates a sound recording, a separate
category of work.

iii. Pictorial, Graphic, and Sculptural Works- it includes “two-dimensional and three-
dimensional works of fine, graphic, and applied art, photographs, prints and art
reproductions, globes, charts, diagrams, models, and technical drawings, including
architectural plans” USC §101
c) A “useful article” is protected only to the extent that it has aesthetic features
that are separable from its utilitarian features.

iv. Motion Pictures and Other Audiovisual Works- 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, regardless of the nature of the material objects,
such as films or tapes, in which the works are embodied.” USC §101
a. An audiovisual work by definition requires the use of a machine or device like a
projector or electronic screen to show it.
b. A play or opera performed on stage would not be an audiovisual work, even if it
had pretty dramatic special effects.
c. Category of motion picture and other audiovisual work receives special attention
with respect to works made for hire. If a work is deemed a work made for hire,
there are several consequences:
i. The copyright belongs to the HIRING party there are no moral rights in
works of visual arts, and the duration of the copyright may be different.
ii. The creator does NOT have the statutory right to terminate transfers.
iii. The definition of “work for hire” specifically includes such things as
screenplays, soundtrack compositions, and other works made as part of
motion pictures. It includes “a work specially ordered or commission for
use as a contribution to a collective work, as a part of a motion picture or
other audiovisual work” The practical impact of this is that the owner of a
copyright in a motion picture need not worry about such things as the
possibility that a screenwriter will terminate the transfer of copyright in
the screenplay.

v. Sound Recordings- are “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 audiovisual work, regardless of the nature of the material objects, such as
disks, tapes, or other phonorecords, in which they are embodied.” 17 USC §101
d) This category was added to the copyright statute in 1972. Pre-1972 sound
recordings are excluded from federal copyright protection, but they may be
subject to state copyright protection.
e) One basic matter of terminology is that a sound recording is fixed in a
phonorecord, not in a copy. More substantively, copyright in sound recordings
confers more limited exclusive rights than other categories of works.
f) Record companies persuaded Congress to give protection to sound recordings
starting in 1972.
g) BUT radio companies persuaded Congress to limit the rights, such that radio
stations would not need permission from sound recording copyright holders
(as they already need permission from the music copyright holder).
h) The exclusive right to perform the work are quite limited:
o The exclusive right to make copies extends only to reproductions of
actual sounds (other works are protected also against nonliteral
copying). The exclusive public performance right is limited to
performance via a digital audio transmission.

vi. Architectural Works- “the design of a building as embodied in any tangible medium
of expression, including a building, architectural plans, or drawings. The works
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.” 17 USC
§101
a. An architectural work is the design of a building-before the building is built, and
even if the building is never built. But the definition limits architectural works to
the designs of buildings.
i. By adding the definition of architectural works to the statute in 1990,
Congress made clear that architectural works are copyrightable, even
though many architectural works are made up of nonprotectable elements.
In particular, an architectural work is not subject to the requirement
(applicable to useful articles) that there is protection only for aesthetic
elements that are separable from the utilitarian elements. All the elements
of the design, viewed individually, may be unprotected.

vii. Compilations- A “compilation” is defined as “a work formed by the collection and

assembling of preexisting 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 term “compilation” includes collective works” USC 17 §101.
i. Examples of compilations include a yellow pages telephone directory, a
database of astronomical information, a collection of poetry, and a CD
containing photographs from National Geographic.
ii. The key issues with compilations are often originality and scope of
protection. To be protected by copyright, the compilation must be
sufficiently original. It may be completely composed of nonoriginal
 elements (such as facts or preexisting works), but there may be sufficient
originality in the selection, coordination or arrangement of the elements.
▪ Under Feist that requires just a minimum level of creativity.
The scope of protection becomes an issue when there has been
copying from the compilation but the defendant contends that
only nonprotected elements were copies.

viii. Derivative Works- 2 key issues:

1. First, a derivative work is copyrightable.
2. Second, if a work is under copyright, then the copyright holder has
the exclusive right to make derivative works.
• Example: The holder of the copyright in Evil Genius
has the exclusive right to make sequels, adapt it to a
musical, have it translated, and so on.

Originality

A work is not protected unless it is original: created by the author with at least a minimal spark
of originality. Copyright only protects original creative expression. The originality requirement
has 2 important effects: First, a work that lacks originality is not protected by copyright. A white
pages phone book lacks originality and is not copyrighted.

Cases that set the stage for the Supreme Court’s post-1976 definition of originality in Feist
Publications.
1. Burrow-Giles: An author may use a device in a creative way to produce an original work.
The court rejected the argument that making a photograph was simply a mechanical
process lacking in originality. Defendant argued that the photograph was simply an exact
reproduction of the image of Oscar Wilde. But the photographer had made a number of
creative choices: posing the subject, selecting and arranging the subject’s clothes and
other things in the picture, and choosing the lighting. In addition, the author must
exercise some creativity to qualify for copyright. A photograph may be copyrightable but
only if the author used some creativity in making it. A work made through a purely
mechanical or standard process would not be copyrighted.
a. Rule: U.S. Const. art. I, § 8, is the great repository of the powers of Congress, and
by the eighth clause of that section Congress is authorized 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.
b. Facts: Defendant lithographic company brought a writ of error to the Circuit
Court of the United States for the Southern District of New York. On the
lithographic company's writ of error, the United States Supreme Court reviewed
the record, which indicated that the photographer, under an agreement with the
subject, was the author, inventor, designer, and proprietor of a photograph to
which he had "signed" his name, using only the initial letter of his given name and
his surname. After a bench trial, the district court found for plaintiff photographer
in an action under U.S. Rev. Stat. §§ 4952, 4965, for an infringement of a
copyright in a photograph.
 c. Issue: Was the company liable for infringement of a copyright in the photograph?
d. Conclusion: Yes, The Court held that that the words used sufficiently gave notice
of the copyright. The company was liable under U.S. Rev. Stat. §§ 4952, 4965,
and those sections were valid as they related to photographs. The Court noted that
it was much more important that, when the photographer sued for a violation of
his copyright, the existence of the facts of originality, intellectual production,
thought, and conception on the part of the photographer should be proved, as the
photographer proved, than in the case of a patent right. The findings showed the
photograph to be an original work of art, the product of intellectual invention, of
which the photographer was the author, and belonging to a class of inventions for
which the Constitution intended that Congress should secure to the photographer
the exclusive right to use, publish, and sell.
2. George Bleistein v. Donaldson Litographing Co.
a. Rule: The Copyright Act, however construed, does not mean that ordinary posters
are not good enough to be considered within its scope. The antithesis to
"illustrations or works connected with the fine arts" is not works of little merit or
of humble degree, or illustrations addressed to the less educated classes; it is
"prints or labels designed to be used for any other articles of manufacture."
Certainly works are not the less connected with the fine arts because their pictorial
quality attracts the crowd and therefore gives them a real use - if use means to
increase trade and to help to make money. A picture used for an advertisement is
none the less a subject of copyright.
b. Facts: Members of a company engaged in the lithography business brought an
action for copyright infringement against appellees, alleging that the appellees
copied chromolithographs prepared by it's employees to advertise a circus. The
lower court upheld a directed verdict for appellees on grounds that the works were
not within the protection of the copyright laws. The company appealed.
c. Issue: Were the litographs protected under copyright law?
d. Answer: Yes, The Court held that the works were entitled to copyright protection.
The design belonged to appellants, copyrights were taken out in the proper names
prior to publication, and the works were pictorial illustrations protected by 18
Stat. §§ 78,79 (1874). The Court held that it saw no reason to construe the statute
as protecting only pictorial illustrations "connected with the fine arts," but that
even if it did, the works would be protected, because even ordinary posters used
in advertisements were original works entitled to protection. The Court also said
that appellants' case was not affected by the fact that the lithographs may have
represented actual groups of people and things, and remanded for a new trial.
3. Alfred Bell & Co. v. Catalda Fine Arts
a. Rule: All that is needed to satisfy both the U.S. Constitution and the Copyright Act
is that the author contributed something more than a merely trivial variation,
something recognizably his own. Originality in this context means little more than
a prohibition of actual copying. No matter how poor artistically the author's
addition, it is enough if it be his own.
b. Facts: This case demonstrates just how little "originality" a work needs to find
protection under the copyright laws. Due to exclusive licensing agreements
between Alfred Bell & Co. and various museums, they had sole access to various
 eighteenth and nineteenth century masterpieces. Alfred Bell
created mezzotint reproductions of these paintings for sale. One such painting
covered by this agreement was Thomas Gainsborough's Blue Boy. Unable to
access the public domain artwork, Catalda simply made copies of Alfred Bell's
copies. In court, they argued that the mezzotints were not sufficiently original to
constitute a new, copyrightable work. The court, however, disagreed, stating that
"no large measure of novelty is necessary."
4. Feist: To establish copyright infringement, two elements must be proven: (1) ownership
of a valid copyright, and (2) copying of constituent elements of the work that are original.
a. Respondent sued petitioner for copyright infringement because petitioner had
used information contained in its white pages in the compilation of its own
directory. Summary judgment was granted in favor of respondent because the
selection, coordination, and arrangement of respondent's white pages did not
satisfy the minimum constitutional standards for copyright protection. Petitioner
publishing company sought review by certiorari of a judgment of the United
States Court of Appeals for the Tenth Circuit. The Supreme Court reversed
judgment.
b. Issue: Was the raw data that petitioner copied from respondent "original work"
that constitutes copyright infringement?
c. Answer: No, Alphabetical listings of names, accompanied by towns and telephone
numbers, in telephone book white pages are not copyrightable, because there is no
"original creativity"; thus, nonconsensual copying of listings were held not to
infringe on copyright.
The originality requirement prevents claims of copyright in elements not created by the plaintiff.
It also limits the policy arguments that claimants can make. Even if information has great value,
or has been gathered at great time and expense, there is no copyright unless the requisite
creativity can be shown.

A work must be original to the author to qualify for copyright protection 17 U.S.C. §102(a).
Under Feist, originality has 2 distinct requirements. To be original means that a work is
“independently created by the author (as opposed to copied from other works) and that it
possesses at least some minimal degree of creativity.” Feist held that originality is required not
only by the copyright statute but also by the Constitution. Congress has the power to grant
exclusive rights to “Authors” in their “Writings.” Feist Publications, unable to reach an
agreement with Rural, simply copied the listings into its own regional directory. The Supreme
Court held that Feist did not copy material that is protected by copyright, because there was no
creativity in making the listings. The raw data was not original to Rural. Rather, he information
existed before Rural ever gathered and published it. Rural could have met the originality
requirement if it had selected, arranged, or coordinated the data in an original way. But Rural
simply listed the names in alphabetical order, following common practice. Such an arrangement
failed to show even the “minimal creativity” required for copyright protection. Rural Telephone
did not have copyright in the raw data because of the first requirement of independent creation
and did not have copyright in the selection and arrangement of the data because of the second
requirement of a minimal degree of creativity. Facts are not copyrightable but a compilation of
facts may be if the selection, coordination, or arrangement of facts reflects the necessary
creativity.
Under Feist, the first requirement of originality is independent creation. An author has copyright
protection only in elements of the work that she/he created. Originality requires that one be the
“maker” or “originator” not merely one that discovers and records a fact. Facts are not
copyrightable, but works containing facts may be copyrightable because they contain other
elements created by the author.

Originality does not require novelty. Originality does not require that a work be unique or that it
be different from preceding works. Rather, it requires that the author create the work, as opposed
to copying it from others.

Sweat of the brow is not sufficient to get copyright: The amount of creativity to meet the
originality requirement is not great. However, under Feist, nothing substitutes for creativity. The
author cannot win protection by showing that he invested considerable resources. If copyright
serves as an incentive to produce works. Under a "sweat of the brow" doctrine, the creator of a
copyrighted work, even if it is completely unoriginal, is entitled to have his effort and expense
protected, and no one else may use such a work without permission, but must instead recreate the
work by independent research or effort. The classic example is a telephone directory. In a "sweat
of the brow" jurisdiction, such a directory may not be copied, but instead a competitor must
independently collect the information to issue a competing directory. The same rule generally
applies to databases and lists of facts.

Courts may nevertheless look at other works in deciding the question of originality. Acuff-Rose
Music a songwriter claimed copyright infringement. His song used the phrase “you’ve got to
stand for something or you’ll fall for anything,” which he alleged had been copied by defendant.
The court considered the fact that similar phrases had been used in many different sources. The
court held that plaintiff had failed to show that he had originated the phrase, as opposed to
copying it from someone else. The court did not deny him protection on the basis that he was not
the first one to use such a phrase. Rather, it determined that he failed to show that he came up
with the phrase independently. The nonoriginal phrase was not protected.

Post Feist Decision:

1. Meshwerks, Inc v. Toyota Motor Sales, Inc.
a. Rule: To make a case for copyright infringement, a plaintiff must show that
(1) it owns a valid copyright, and (2) the defendant copied constituent
elements of a work that are original to the plaintiff. If a plaintiff has obtained a
registration certificate from the U.S. Copyright Office, the United States Court
of Appeals for the Tenth Circuit presumes that the plaintiff holds a valid
copyright. 17 U.S.C.S. § 410(c). However, a defendant can overcome this
presumption by presenting evidence and legal argument sufficient to establish
that the work in question was not entitled to copyright protection. Where a
case alleging copyright infringement comes to the court of appeals on a
plaintiff's appeal from a district court's order granting a defendant's motion for
summary judgment, the court reviews the question of whether the plaintiff
holds a valid copyright de novo and will affirm the district court's judgment
only if, viewing all of the facts in the light most favorable to the plaintiff, it is
 able to conclude that there is no genuine issue as to any material fact and that
the defendant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).
b. Facts: Toyota Motor Sales U.S.A. (Toyota) hired Grace & Wild, Inc. (G&W)
to help it develop an advertising campaign for new car models, and G&W
hired Meshwerks, Inc. (Meshwerks) to produce digitized representations of
the models. Meshwerks did that by collecting data points for each model,
mapping those data points onto a computerized grid, and using modeling
software to create a wire frame of each vehicle. Meshwerks obtained
copyrights from the U.S. Copyright Office on its wire frames, and it sued
Toyota, Toyota's advertising agency, Saatchi & Saatchi (Saatchi), and G&W
for copyright infringement, alleging that defendants used the digitized
representations it created in a manner that was not permitted by the parties'
contracts.
c. Issue: Did Meshwerks hold copyright in the digital models it created?
d. Conclusion: No, The Court of Appeals found that Meshwerks did not have a
valid copyright in the digitized models it created. Those models were created
using designs the automobile manufacturer produced, so they were not
original works of art that could be copyrighted, and because there was no
valid copyright, there could be no infringement.

Can works of nature ever be fixed or original? Is there more the originality requirement than the
rule articulated in Feist?
1. Chapman Kelley v. Chicago Park
a. Rule: The Visual Artists Rights Act of 1990 (VARA), 17 U.S.C.S. § 106A,
supplements general copyright protection; to qualify for moral rights under
VARA, a work must first satisfy basic copyright standards. Under the Copyright
Act of 1976, copyright subsists 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. 17 U.S.C.S. § 102(a).
"Works of authorship" include pictorial, graphic, and sculptural works. 17
U.S.C.S. § 102(a)(5). VARA's definition of "work of visual art" is limited to a
narrow subset of this broader universe of "pictorial, graphic, and sculptural
works" that are otherwise eligible for copyright; only a select few categories of art
get the extra protection provided by the moral-rights concept. Protected "works of
visual art" is a narrower subcategory of "pictorial, graphic, and sculptural works,"
protected in § 102(a)(5).
b. Facts: Chapman Kelley was a nationally recognized artist known for his
representational paintings of landscapes and flowers—in particular, romantic
floral and woodland interpretations set within ellipses. In 1984, he received
permission from the Chicago Park District to install an ambitious wildflower
display at Grant Park. "Wildflower Works" was thereafter planted: two enormous
elliptical flower beds, each nearly as big as a football field, featuring a variety of
native wildflowers and edged with borders of gravel and steel. Promoted as
"living art," Wildflower Works received critical and popular acclaim, and for a
while Kelley and a group of volunteers tended the vast garden, pruning and
replanting as needed. But by 2004 Wildflower Works had deteriorated, and the
 City's goals for Grant Park had changed. So the Park District dramatically
modified the garden, substantially reducing its size, reconfiguring the oval flower
beds into rectangles, and changing some of the planting material. Consequently,
Kelley sued the Park District for violating his "right of integrity" under the Visual
Artists Rights Act of 1990 ("VARA"), and also for breach of contract. The district
court held a bench trial and entered a split judgment. The court rejected Kelley's
moral-rights claim for two reasons. First, the judge held that although Wildflower
Works could be classified as both a painting and a sculpture and therefore a work
of visual art under VARA, it lacked sufficient originality to be eligible for
copyright, a foundational requirement in the statute. Second, following the First
Circuit's decision in Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir.
2006), the court concluded that site-specific art like Wildflower Works is
categorically excluded from protection under VARA. The court then held for
Kelley on the contract claim, but found his evidence of damages uncertain and
entered a nominal award of $1. Both sides appealed.
c. Issue: Did the park district’s reconfiguration of the “Wildflower Works” violate
Chapman Kelly’s moral rights under the Visual Artists Rights Act of 1990
("VARA")? Additionally, did it breach the contract entered into by Kelly and the
Park District?
d. Answer: No, The appellate court determined that the VARA claim failed because
the Kelly’s garden could not qualify for moral-rights protection under VARA
since the garden was neither "authored" nor "fixed" in the senses required for
basic copyright. Furthermore, the appellate court held that Kelly’s breach of
contract claim failed because a park district commissioner's offhand remark could
not have created a valid implied-in-fact contract since, under the Illinois Park
District Code and the Chicago Park District Act, there was no evidence that the
park district's board of commissioners authorized the commissioner to enter into a
contract with the artist, and Illinois law provided that ultra vires contracts entered
into by municipal corporations were invalid.

C. Derivative Works and Compilations

i) §101, “a derivative work is a work based upon one or more preexisting
works, such as translation, musical arrangement, dramatization,
fictionalization, motion picture version, sound recording, art reproduction,
abridgement, condensation, or any other form in which a work may be recast,
transformed, or adapted.”
j) §101, “a compilation is a work formed by the collection and assembling of
preexisting 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 term “compilation” includes collective works.”
k) §101, “a collective work is a work, such as a periodical issue, anthology, or
encyclopedia, in which a number of contributions, constituting separate and
independent works in themselves, are assembled into a collective whole.”
l) §103(a) of the Copyright Act provides for the copyrightability of derivative
works and compilations:
 o The subject matter of copyright as specified by section 102 includes
compilations and derivative works, but protection for a work
employing preexisting material in which copyright subsists does not
extend to any part of the work in which such material has been used
lawfully.
1. Derivative Works
m) Following cases explore whether a second comer has added enough new,
original content to a pre-existing work such that the resulting work is a
copyrightable derivative work.
i. L. Batlin & Son, Inc. v. Jeffrey Snyder- The court in Batlin has a
different standard for derivative works. Under this approach, there
would be one test for most works but a slightly higher test when the
new work is based on another work. However, Feist (decided after
Batlin) appeared to set a single standard in all cases. When copyright
is claimed in a work based on an earlier work, the key is whether one
can identify creative choices made that were not dictated by the
desire to put the work into the new medium, but rather were made
for aesthetic or artistic reasons.
• “To support a copyright there must be at least some
substantial variation, not merely a trivial variation such
as might occur in the translation to a different medium.”
1. Rule: Works within the public domain are rendered
noncopyrightable by 17 U.S.C.S. § 8. Although the work within
the public domain is itself excluded from copyright protection,
appellant's reproduction of it is copyrightable if it may be regarded
as an adaptation of a work of art in the public domain, 17 U.S.C.S.
§ 7. It may qualify either as a work of art, 17 U.S.C.S. § 5(g), or as
a reproduction of a work of art, 17 U.S.C.S.§ 5(h). Thus the fact
that an idea is in the public domain does not render an expression
of that idea uncopyrightable.
2. Facts: Appellant, Jeffrey Synder, was the designer of a replica of a
mechanical Uncle Sam bank. He subsequently obtained a
copyright on his version of the bank, claiming it to be a work of
art, and attempted to block appellee, L. Batlin & Son, Inc. from
importing its own plastic version of the bank. Thereafter, L. Batlin
& Son, Inc. received a preliminary injunction against Jeffrey
Synder based upon a finding by the district court that the object of
the purported copyright was not entitled to that protection.
Subsequently, Synder challenged the decision.
3. Issue: Under the circumstances of the case, did the district court err
in granting preliminary injunction in favor of L. Batlin & Son,
Inc.?
4. Answer: Yes, The appellate court reversed the district court’s
decision and vacated the preliminary injunction. The court held
that Synder’s replica of a mechanical Uncle Sam bank satisfied the
criteria for copyrightability in order to qualify as a reproduction of
 a work of art. According to the appellate court, the bank met the
requirements of creativity and originality, and because Synder’s
replica was entitled to copyright protection, the district court erred
when it determined that L. Batlin & Son, Inc. was likely to
prevail.

It is not infringement to copy nonprotected elements of a copyrighted work, such as nonoriginal

elements of the work. Infringement requires copying of original, expressive elements of the
work.

Nonoriginal elements are especially common in 2 categories of works: derivative works (because
they are adaptations of preexisting works) and compilations(which may be collections of facts or
preexisting works_. The statute expressly states that only new elements are protected. §103 listed
above.

Originality Analysis: 2 types of cases: cases involving copying of the entire work and cases
involving copying part of the work.
1. Where the entire work is copied, the issue may be whether the work as a whole
qualified for copyright protection. If the work was unoriginal, then it was not
protected by copyright and even copying of the entire work would not be
infringement.
2. If the work was unoriginal then it was not protected by copyright and even copying
the entire work would not be infringement.
The issue of originality arises where the defendant copied only certain elements from the
plaintiff’s work. The defendant contends that the elements that were copied were not original,
and therefore there was no infringement.

Daniel Shrock v. Learning Curve International, Inc.

a. Rule: To be copyrightable, a derivative work must contain some substantial, not
merely trivial originality. The test of originality is concededly one with a low
threshold in all that is needed is that the author contributed something more than a
merely trivial variation, something recognizably his own. P’s artistic and technical
choices combine to create a two-dimensional image that is subtly but nonetheless
sufficiently his own.
b. Facts: P alleges that producer of Thomas the Tank Engine toys had exceeded its
license to reproduce and distribute P’s photographs of the toys. D states that: P
had no copyright to infringe because the photographs lacked sufficient originality.
c. Issue: Were the images of Thomas the Tank copyrightable?
d. Holding: yes, the court stated that the photographs did not fall into the category of
photographs that can be classified as ‘slavish copies’ that lacked any independent
created expression.
e. Analysis: (1) The originality requirement for derivative works is not more
demanding than the originality requirement for other works; and (2) the key
inquiry is whether there is sufficient nontrivial variation in the derivative work to
make it distinguishable from the underlying work in some meaningful way.
Nimmer says the relevant standard is whether a derivative work contains a “nontrivial” variation
from the preexisting work “sufficient to render the derivative work distinguishable from the prior
work in any meaningful manner” (pg52)

In gracen , the court held that gracen could not maintain her infringement suit because her
painting, a derivative work, was not substantially different from the underlying work to be
copyrightable
- The concern expressed in gracen was that a derivative work could be so similar in
appearance to the underlying work that in a subsequent infringement suit brought by a
derivative author, it would be difficult to separate the original elements of expression in
the derivative and underlying works
- This is true but nothing in the copyright act suggest derivative works are subject to a
more exacting originality requirement than other works of authorship.
- Since gracen the court has held the only "originality" required for a new work to be
copyrightable is enough expressive variation from public-domain to be readily
distinguished.

2. Compilations: The statute is silent on the threshold of originality required by a

compilation. They return to the Feist decision to explore how to assess the originality of
compilations. (pg55)
o Just becuase a work is copyrighted, does not mean that every element of the work
may be protected. Copyright in factual compilations is thin. The statute identifies
three distinct elements and requires each to be met for a work to qualify as a
copyrightable compilation
▪ The collection and assembly of pre-existing material, facts or data
▪ The selection coordination, or arrangement of those materials; AND ---
the key to the statutory definition is the second requirement. It instructs
courts that, in determining whether a fact-based work is an original work
of authorship, they should focus on the manner in which the collected
facts have been selected, coordinated, and arranged.
▪ The creation, by virtue of the particular selection, coordination, or
arrangement of an "original" work of authorship - this third requirement
emphasizes that a compilation, like any other work is copyrightable only if
it satisfies the originality requirement.
a. There is no doubt feist took a substantial amount of factual info,
the question is whether feist in taking names, towns, and phone
numbers, copied anything original to rural.
b. The selection, coordination and arrangement of rural's white pages
do not satisfy the minimum constitutional standards for copyright
protections.
c. Nor can rural claim originality in its coordination and arrangement
of facts.
d. Therefore the stuff was not original to rural and therefore not
protected by the copyright.
D. Idea-Expression Distinction- expression of an idea is protected manner. Section 102(b)
sets up a distinction between protectable expression and unprotectable ideas- the idea-
expression distinction. This distinction is shorthand for the entire list of matter that 102(b)
says is outside the scope of copyright. There are three opinions which help us get at a form of
the idea expression distinction.
1. Process-Expression Distinction:
i. W.C.M. Baker v. Charles Selden: Selden created a condensed ledger to
explain bookkeeping and copyrighted it, Defendant had same kind of
thing but arranged the columns differently and used different headings,
The question is whether the exclusive property in a system of book-
keeping can be claimed under copyright law. Not copyrightable
because it’s like a blank form

- Rule: The copyright protection for a book explaining an art or system

extends only to the author’s unique explanation of it and does not
prevent others from using the system or the forms incidentally used.
- Facts: Selden (Plaintiff) copyrighted a book in which he used in
introductory essay explaining his system of bookkeeping followed by
forms to put the system to use. He had arranged the columns and
headings so that the entire operation of a day, week or month was on a
single page or on two pages facing each other. Baker (Defendant) then
began selling forms with columns and headings arranged differently to
achieve the same result. When Plaintiff successfully sued for copyright
infringement, Defendant appealed. He argued that the forms were non-
copyrightable.
- Issue: Does copyright protection for a book explaining an art or system
prevent others from using the system or the forms incidentally used?
- Holding: The copyright protection for a book explaining an art or
system extends only to the author’s unique explanation of it and does
not prevent others from using the system or the forms incidentally
used. To find that a copyright protected against use of the system itself
or the forms necessary to such use would be to grant protection similar
to a patent without requiring a showing of novelty. Copyright is based
on originality, not novelty, and protects the explanation of the system
and not the use of the system. In this case, therefore, the copyright
Selden (Plaintiff) obtained could not give him the exclusive right to
use the bookkeeping system or the forms necessary to such use.
Reversed and remanded.
- Reasoning: This case has been interpreted by many as allowing
copying for use as opposed to copying for the purpose of explanation.
However, in applying this rule, some courts have gone rather far and
have allowed something to pass as copying for use when there were
alternate ways to arrange the words that could have easily been chosen
to communicate the non-copyrightable system or art. This has
provoked much criticism of the interpretation previously mentioned
regarding the rule of this case.
 2. Idea-Expression Distinction
a. Lars Erickson v. Michael John Blake- Created pi symphony and
registered it with the copyright office.
o Not every constituent element of a copyrighted work is
protected by copyright. Feist.
o Unprotected elements of a copyrighted work can include
1) ideas as opposed to expression;
2) expressions that are indistinguishable from the
underlying ideas;
3) standard or stock elements (scenes a faire) and
4) facts and other public information.
- First, It is axiomatic (unquestionable) that a copyright only protects
expression, not the idea behind expression. In data east , the maker of a
karate video game sued another. The court said there were no
similarities because the similarities were only because its karate.
- Second, is the doctrine of merger. If a non-protectable idea can only be
expressed in one way, the resulting expression will also not be protected
by copyright.
Merger most often applies to claims at high levels of abstraction.
- Third, expressions that are standard are not protectable
- Finally, as a constitutional matter, facts cannot be protected by
copyright feist.
- After the court identifies which similarities are unprotected elements,
it can determine the proper scope of the copyright.
- Thus, setting aside the similarities based on unprotected elements of
pi, very few if any similarities remain.
The first amendment is often cited as a basis for the idea-expression distinction.
3. Historical Fact-Expression Distinction
a. A.A. Hoehling v. Universal City Studios, Inc.
- Rule: To prove infringement, a plaintiff must demonstrate that
defendants copied his work and that they improperly
appropriated his expression. Ordinarily, wrongful appropriation is
shown by proving a "substantial similarity" of copyrightable
expression. Because substantial similarity is customarily an
extremely close question of fact, summary judgment has
traditionally been frowned upon in copyright litigation.
- Facts: Appellant published a book about the adventures of a
famous airship. Appellant studied investigative reports, articles,
and books and conducted interviews. Years later, appellee writer
wrote his book about the famous airship. Appellee writer's
publisher succeeded in negotiations to sell the motion picture
rights to appellee film company. Upon learning of the plans of
appellee film company to release the film, appellant instituted an
action against appellees for copyright infringement and common-
law unfair competition. After discovery, appellees moved for
 summary judgment, which was granted. Appellant challenged the
decision.
- Issue: Taking into account the circumstances of the case, can the
appellants be charged with copyright infringement and common-
law unfair competition?
- Answer: No, The Court held that to prove infringement appellant
had to demonstrate that appellees copied his work and that they
improperly appropriated his expression. In the case at bar, the
Court concluded that appellant's story was based on historical
interpretation, which was not protected by appellant's copyright.
Therefore, the Court held that the appellants cannot be charged
with copyright infringement and common-law unfair competition
because it determined that all similarities in the parties' works
pertained to various categories of non-copyrightable material.

E. Copyrightable Subject Matter

- Copyrightable subject matter
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.
Exclusion of gov. works- 105
1. This restriction is grounded in constitutional and policy considerations
a. Denying copyright protection maximizes access to the law and
government information so citizens can know, discuss, use, and seek to
change the law and the gov. operation. Grounded in the first amendment
b. Second, gov. works are paid for w public funds which might imply
public ownership of those works.

2. Useful Articles- the issue of copyright protection for useful articles arises for the variety
of pictorial, graphic, or sculptural works that also serve some useful purpose.

I. Mazer v. stein 1954 (separability)

▪ Mass-produced articles of utilitarian purpose are eligible for
copyright protection
▪ the controversy centers around the fact that although
copyrighted as works of art, the statuettes were intended for
use and used as bases for table lamps with electric wiring,
sockets and lamp shades.
▪ Can a lamp manufacturer copyright his lamp bases? Actually,
can an artist copyright a work of art for lamp bases?
 ▪ Mass-produced articles of utilitarian purpose are eligible for
copyright protection. So long as artistic expression is original
and fixed in a tangible medium, that expression will not
be denied protection on the basis of its intended purposes.
o Rule: 17 U.S.C.S. § 4 provides: The works for which copyright may
be secured under this title shall include all the writings of an
author. 17 U.S.C.S. § 5 provides in part: The application for
registration shall specify to which of the following classes the work
in which copyright is claimed belongs: works of art; models or
designs for works of art; reproductions of a work of art.
o Facts: This case involves the validity of copyrights obtained by
respondents Stein et al. (Stein), a manufacturer, for statuettes of male
and female dancing figures made of semi vitreous china. The
controversy centered around the fact that although copyrighted as
"works of art," the statuettes were intended for use and used as bases
for table lamps, with electric wiring, sockets and lamp shades
attached. The United States Court of Appeals for the Fourth Circuit
that held that Stein had a valid copyright in statuettes it copyrighted
as works of art and, subsequently, used as bases for table lamps it
manufactured and sold. Petitioners Mazer et al., a competitor
manufacturer, sought review of the court of appeals judgment.
o Issue: Can a lamp manufacturer copyright his lamp bases?
o Answer: Yes, The Court affirmed the order declaring that the
copyright was valid. The subsequent use of a copyrighted work of art
in the manufacturing of lamps did not affect respondents' right to be
protected against infringement of the work of art itself. Legislative
history of the copyright act and the practice of the copyright agency
showed that works of art and reproductions of works of art were
intended by Congress to be copyrighted. The statuettes were original
tangible expressions of an author's ideas. The reproduction of the
statuettes as table lamp bases did not bar or invalidate the statuettes'
registration. Nothing in the copyright statute supported the argument
that the intended use of an article barred or invalidated registration.
The Court also held that the use of a work of art as an element in a
manufactured article was not a misuse of the copyright.

II. Star athletica, LLC v. varsity brands, inc.

▪ When the design is not separable from the utilitarian aspect
of the object to which it relates then there can be no
copyright
▪ A separable design feature must be capable of existing
independently of the useful article as a separate artistic work
that is not itself the useful article.
▪ If the claimed feature could be extracted without replicating
the useful article of which it is a part and the result would be
 a copyrightable artistic work standing alone, then there is a
separable design.
▪ But if extracting the claimed features would necessarily bring
along the underlying useful article, the design is not
separable from the useful article.
• Piracy paradox- apparel industry swift cycle of
innovation
o Rule: The first element of a copyright-infringement claim is
ownership of a valid copyright. A valid copyright extends only to
copyrightable subject matter. The Copyright Act of 1976 defines
copyrightable subject matter as original works of authorship fixed in
any tangible medium of expression. 17 U.S.C.S. § 102(a). Works of
authorship include pictorial, graphic, and sculptural works, 17
U.S.C.S. § 102(a)(5), which the statute defines to 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. 17 U.S.C.S. § 101. And a work of authorship is
fixed in a tangible medium of expression when it is embodied in a
material object from which the work can be perceived, reproduced,
or otherwise communicated.
o Facts: Respondent Varsity Brands, Inc. (Varsity) have more than
200 copyright registrations for two-dimensional designs—consisting
of various lines, chevrons, and colorful shapes—appearing on the
surface of the cheerleading uniforms that they design, make, and sell.
They sued Petitioner Star Athletica, L.L.C. (Star Athletica), who also
markets cheerleading uniforms, for copyright infringement. The
District Court granted Star Athletica summary judgment, holding
that the designs could not be conceptually or physically separated
from the uniforms and were therefore ineligible for copyright
protection. In reversing, the Sixth Circuit concluded that the graphics
could be “identified separately” and were “capable of existing
independently” of the uniforms.
o Issue: Are the graphics copyrightable?
o Answer: Yes, The Court held that the United States Court of
Appeals for the Sixth Circuit did not err when it found that graphics
that were used by a company that manufactured cheerleading
uniforms were copyrightable because they could be identified
separately and were capable of existing independently of uniforms
the company manufactured. The Court also found that the features
incorporated into the design of a useful article were eligible for
copyright protection if they could be perceived as two- or three-
dimensional works of art separate from the useful article and
qualified as a protectable pictorial, graphic, or sculptural work—
either on their own or fixed in some other tangible medium of
 expression—if they were imagined separately from the useful article
into which they were incorporated.

• 4. Architectural Works:
o Until 1990 US copyright law did not provide protection for architectural
works. They could be protected as pictoral graphic or sculptural works but they
were subject to exacting separability analysis as useful articles.
o Now architectural works is a category of authorship
o An architectural work need not be built to qualify for copyright protection
- only need to be fixed in any tangible medium of expression
i. Thomas shine v. david m. childs
Alleges that he created designs for an original skyscraper
which childs saw and later copied in the first design plan for the freedom
tower.
o Architectural ability to be copyrighted
o Defendants claim that shine's models are not architectural works
meriting copyright protections because they are preliminary or
conceptual and do not meet the standard of a design of a building
o Whether a tower actually could be constructed from this model is
irrelevant.
▪ Originality
• They also argue that the two models are not
sufficiently original to warrant protection under
the AWCPA saying that 1) the work in question
should be examined for the presence of original
design elements and if such elements exist and are not
functionally required, the work is protectable.
• It has the mere dash of originality
• They also argue that the original aspect is
functionally required and therefore unprotectable.
▪ This issue is undecided
▪ Some concerns about protecting architectural works under
copyright law include:
▪ A building owner might not own copyright in the building
so may be prohibited from modifying or destroying a
protected building. So congress created an exception.
▪ Another concern is that members of the public might not be
able to take photographs that include a protected building
without infringing the copyright in the building. Congress
created another exception.

Copyright Formalities and Duration

I. Duration and Renewals
• Copyright Act of 1909
• Term = 28 years from publication w/ renewal for another 28 years
 • Copyright Act of 1976 §302(a)-(c( for works published on or after January 1, 1978-
starts from creation and not from publication
• Term of "life plus 50" from creation
• Work for hire- first to expire of 75 years from first publication or 100 years
from creation (employee within scope of employment, or specific assignment)
• For copyrighted works already published as of Jan. 1, 1978 (subsisting
copyrights), a term of 75 years from date of publication.

• §302 Works Created on/after Jan. 1, 1978

• For individual authors- life plus 70
• For joint works of individual authors- life of survivor plus 70
• For Anonymous, Pseudonymous and Works Made for Hire- first to expire of 95
years from year of first publication or 120 years from year of creation. If
author(s) become known, term switches to life-plus 70
• §303 Works created but not published or copyrighted before Jan 1, 1978
• Copyright subsists according to §302, but at a minimum term will subsist until
December 31, 2002. If work published on or before December 31, 2002 term
extends to December 31, 2047
• §304 Duration for Copyrights (subsisting (in C) as of Jan. 1, 1978)
• If copyrighted work in first term (under 1909 Act)
o Entitled to a term of 28 years from original date that copyright was
secured (under 1909, term commenced at time of publication for published
work and upon registration for unpublished works.)
• §304 Duration for Copyrights
Subsisting as of Jan. 1, 1978
• If copyrighted work in first term (under 1909 Act)
o Note that under §304(a)(2)(A) application for the extended renewal term
(67 yrs) must be made by person entitled to claim the renewal term (see
§304 (a)(1)(B)) and if not made by entitled person, then renewal right
automatically vests in the person entitled to copyright on the last day of
the original term. Same applies for works falling under §304(a)(1)(C) and
the people named as entitled people under §304(a)(1)(C).
• §304 Duration for Copyrights
Subsisting as of Jan. 1, 1978
• If copyrighted work in renewal term as of Jan. 1, 1978 (means work was
copyrighted between Jan. 1, 1923-December 31, 1949)
• Under §304(b) term is 95 years (CTEA) from date copyright originally secured.
Work © in 1945, renewed 1973 (1945+28). Term is 1945+95 = 2040
• Works copyrighted between Jan. 1, 1950 – Dec. 31, 1963 in first 28 year term as
of Jan. 1, 1978 must have been renewed to get the 67 year 2nd term - equaling a
95 yr. If not renewed, they fell into the public domain

Copyright Exclusive Rights

A. Infringement Elements
a. Infringement Elements
 i. Copying in Fact- established by showing that the defendant actually used
some elements of the plaintiff’s work to make the defendant’s allegedly
infringing work.
1. First part of the infringement test asks whether, as a factual matter,
the defendant copied from the plaintiff’s work. Assuming the
answer to the copying in fact inquiry is yes, the copying is
nonetheless only actionable if there is also copying in law.
a. Three Boys Music Corporation v. Michael Bolton
b. Ronald H. Selle v. Barry Gibb
c. Ty, Inc. v. GMA Accessories, Inc.
ii. Copying in Law- established is established when the defendant’s copying
is sufficient- both quantitatively and qualitatively- to provoke legal
liability for infringement.
1. De Minimis Copy- can be found when the defendant’s copying is
minimal in a legally salient way. Two recurring scenarios: First
when the defendant copies the plaintiff’s entire work but it appears
as an insignificant aspect of the defendant’s work and two when
the defendant copies but a minimal part of the plaintiff’s work
a. Itoffee R. Gayle v. Home Box Office- The graffiti was
filmed in such a manner and appears so fleetingly that
there is no plausible claim for copyright infringement.
b. Substantial Similarity Test- opposite of dimini copying: it is copying that is
sufficient to lead to a conclusion of copying in law. The defendant’s copying need
not be exact to constitute a substantially similar copy.
i. Anne Nichols v. Universal Pictures Corporation
ii. Ira Arnstein v. Cole Porter
iii. Saul Steinberg v. Columbia Pictures Industries (2nd Circuit)
o Facts: In March 1976, the New Yorker magazine published a drawing
of New York City (NYC) by Saul Steinberg (plaintiff) on its front
cover. The drawing was meant to depict the New York-centric view
through which New Yorkers tended to experience the world, by
representing four city blocks in the foreground with detail becoming
less visible as the gaze moved toward the background, over the
Hudson River and to other cities and countries. In addition to the
general design, the drawing included several distinctive features,
including the lettering used to label the streets; certain building
facades, which were meant to represent the style of buildings in the
West; and a wide boulevard used as the road ending at the Hudson
River. The executive art director for Columbia Pictures Industries,
Incorporated (Columbia) (defendant), Kevin Nolan, was tasked with
making the movie poster for Moscow on the Hudson. Nolan admitted
that he had seen Steinberg’s New Yorker cover and that he kept a
print of the cover in his office. The movie poster for Moscow on the
Hudson ultimately showed four city blocks, with more detail at the
foreground and less detail as the viewer’s gaze moved toward the
background, over the ocean to other cities and countries. The
 Hudson River was depicted in the foreground, some NYC landmarks
were added in the represented city blocks, and the names of the
streets were changed. However, the lettering used and some building
facades looked like those in Steinberg’s drawing, and the main
boulevard extending to the water was also wide to allow for two-way
traffic. Steinberg sued Columbia, some of Columbia’s affiliates, and
some newspapers that published the movie poster for copyright
infringement. Steinberg moved for summary judgment.
iv. Judi Boisson v. Banian, Ltd. (2nd circuit)
v. Sid & Marty Kroftt Television Productions (9th Circuit)
vi. Wanda A. Cavlier v. Random House, Inc.
vii. Jacobus Rentmeester v. Nike (9th Circuit)
B. Reproduction Right- copyright holder’s right “to reproduce the copyrighted work in
copies or phonorecords” set out in §106(1) is a central right, and the right most
commonly asserted in infringement actions. A defendant’s work cannot infringe the
plaintiff’s reproduction right unless the work is fixed, because the plaintiff’s reproduction
right is infringed only if plaintiff’s work is reproduced in copies or phonorecords.
C. Rights to Prepare Derivative Works
D. Fictional Characters and Rights of Reproduction and to Prepare Derivative Works
E. Moral Rights
F. Distribution (& Importation) Rights
G. Rights of Public Performance and Public Display
H. Music Industry- No area of copyright law is more complex, or productive of more
controversy over recent decades, than the tangle of copyright rules and industry practices
that govern the music industry
- Copyright in Musical Compositions Versus Copyright in Sound Recordings
o Sound Recording is a fixation in a phonorecord of a specific
performance of a song.
o Copyright Act defines “phonorecord” as material objects in which
sounds, other than those accompanying a motion picture or other
audiovisual work, are fixed by any method now known or later
developed, and from which the sounds can be perceived, reproduced,
or otherwise communicated, either directly or with the aid of a
machine or device.
▪ Interestingly, sound recordings were not protected at all by
federal copyright law until 1972.
- 2nd Circuit
- 9th Circuit

Fair Use- reflects the codification of section 107 of the 1976 Copyright Act that provides 4
criteria that are to be balanced in a case-by-case analysis of the facts and situation of the dispute.
• applies to all subject matter, exclusive rights.
• an affirmative defense: thus burden on the infringer.
• 17 U.S.C. §107
 • The fair use of a copyrighted work . . . For purposes such as criticism,
comment, news reporting, teaching, scholarship, or research, is not an
infringement of copyright. In determining whether the use made of a work
in any particular case is a fair use of the factors to be considered shall
include0
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.
• 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.
• The use must benefit the public with something valuable- such as
criticism, comment, news reporting, teaching, scholarship, or
research. A use that is largely self-serving and commercially
motivated will rarely be designated as fair unless the benefits it
brings to the public are so great that the law excuses the selfishness
and money-grubbing.
• Campbell v. Acuff-Rose
• 2 Live Crew Parody of Orbison’s “Pretty Woman.” Fair use found.
1. first factor: despite fact that use was commercial, fact that it was
“transformative” and a “reasonably perceived parody” weighed for FU.
2. Second factor: significant --> defendant said: need enough for a parody
3. third factor: fact that 2LC used only enough to “conjure up” original
weighed in their favor
4. fourth factor: held little risk of substitution, since parody very different
from original, and that “market for parody” doesn’t exist. --> NOT a
market substitute
• Court said factors are to be balanced against each other. No single factor is the
key factor anymore (commercial vs. noncommercial uses used to be the key
factor; now it is just one of the factors.)
o RULE: 17 U.S.C.S. § 107(3) asks whether the amount and
substantiality of the portion used in relation to the copyrighted
work as a whole, or whether the quantity and value of the
materials used, are reasonable in relation to the purpose of the
copying. The extent of permissible copying varies with the
purpose and character of the use.
o Issue: Did the court err when it concluded that the commercial
nature of petitioners' parody had rendered it presumptively
unfair?
o ANSWER: Yes, The Court found that it was error for the court
below to have concluded that the commercial nature of
petitioners' parody had rendered it presumptively unfair. The
 Court held that no such evidentiary presumption was available
to address either § 107(1), the character and purpose of the use,
or § 107(4), market harm, in determining whether
transformative use, such as parody, was a fair one. The Court
held that a parody's commercial character, which tended to
weigh against a finding of fair use, was only one element that
should be weighed in a fair use enquiry. Therefore, the court
below was found to have given insufficient consideration to the
nature of the parody under the fair use factors as set forth in §
107 in weighing the degree of copying.
Harper and Row v. The Nation Fair use NOT found
o RULE: The fact that a publication was commercial as opposed to
nonprofit is a separate factor that tends to weigh against a
finding of fair use. Every commercial use of copyrighted material
is presumptively an unfair exploitation of the monopoly
privilege that belongs to the owner of the copyright.
o Facts: Petitioners were contracted by the President to publish his
yet unwritten memoirs. Copyright was given to the petitioners.
As the memoirs were nearing completion, the petitioners
negotiated a prepublication licensing agreement which would
authorize Time Magazine to publish excerpts from the memoirs
in exchange for a fee. But before the Time article’s scheduled
release, an unauthorized source provided another magazine
company, the respondent, with the unpublished manuscript. The
respondent published excerpts from the President’s memoirs in
their article. As a result, Time Magazine reneged its agreement
with the petitioners, while the latter sued the respondent for
copyright infringement. The respondent set up the defense of
fair use and that their use of the material was excused by the
public’s interest on the matter. The lower court ruled for the
respondents.
o Does lifting excerpts on the unpublished memoirs of the
President amount to fair use?
o ANSWER: No, Respondents failed to establish that their
unauthorized use of quotations from a public figure's
unpublished manuscript was sanctioned by the fair use doctrine.
Respondents admitted to lifting verbatim quotes. The
unpublished nature of book was a key factor that negated the
defense of fair use. The four statutory factors relevant to
determining whether the use was fair were not satisfied.
Respondents use had the intended purpose of supplanting
copyright holder's commercially valuable right of first
publication. The use infringed upon the copyright holder's
interest in confidentiality and creative control. Respondents took
what was essentially the heart of the book and copied much of it
verbatim. Finally, the use of copyrighted material had an actual
 effect on the market for first rights to publish excerpts from the
book.
• fact that Ford’s work was unpublished, and that Ds had acted wrongfully to
obtain it (“knowingly purloined”), that copied part a substantial part of article
(and the “heart” of it), and that use commercial, weighed against FU.
1. Right of first publication is IMPORTANT and this being scooped irritated
the majority and had the Nation waited until the article was out then this
would not be the same outcome.
2. What the Nation did not ruin the whole book, but pulled out the rug from
the Times
• Reason they don’t mention the "unpublished shall not itself bar a finding of fair
use" is because this did not exist at the time of this case.
1. First Factor: Commercial/"To Scoop" --> Defendant said: news reporting
2. Second Factor: Memoir--> Defendant said: Fact
3. Third Factor: Substantial "heart" of the work --> Defendant said: tiny
part/300 words out of 200,000
4. Fourth Factor: Lost time and $$$$ --> Defendant said: not a market
substitute and the Nation did not get a big increase in subscriptions
• dissent: strong public interest in news-reporting weighs for FU.
Bill Graham Archives Fair Use FOUND
• First Factor: Commercial --> Defendant said: transformative use because the
poster is there in its entirety
• Second Factor: Creative--> Defendant said: History? No real response really
• Third Factor: Substantial/entire thing --> Defendant said: much smaller and in a
different context
• Fourth Factor: Lost royalties (only if it is determined as fair use) --> Defendant
said: not a market substitute
Koons NOT FAIR USE
• Koons gets ahold of the 2 dimensional postcard and will create a 3d sculpture
based on the postcard
1. First Factor: Commercial --> Defendant said: transformative use
2. Second Factor: Creative and advertising --> Defendant said: History? No
real response really
3. Third Factor: Substantial/fair amount --> Defendant said: much smaller
and in a different context
4. Fourth Factor: Lost royalties (only if it is determined as fair use) -->
Defendant said: not a market substitute
• Held to be an infringement on the postcards --> Second circuit rejected parody
argument from Koons
• Blanch is a photographer
Andrea Blanch v. Jeff Koons (after Acuff-Rose) FAIR USE FOUND
• Blanch takes photos for a fashion company and Koons takes this idea and calls
it "Niagara Falls"
• Blanch says she recognizes this and sues
1. First Factor: Commercial --> Defendant said:
 2. Second Factor: Creative--> Defendant said: History? No real response
really
3. Third Factor: Substantial/fair amount --> Defendant said: smaller
4. Fourth Factor: Wants her licensing fees --> Defendant said: no real market
she is going to have
Cariou v. Prince NOT FAIR USE
• Produces the book and distributes it and it does not sell very well
• Prince takes the picture and edits it
1. First Factor: Commercial --> Defendant said: transformative use because
the aesthetic changed
2. Second Factor: Creative--> Defendant said:
3. Third Factor: Substantial/fair amount --> Defendant said: smaller
4. Fourth Factor: Wants her licensing fees --> Defendant said: no real market
Sony Corporation v. Universal City Studios FAIR USE
• Betamax VCR case
• Allegation against Sony is not that they are direct infringers because it is the
home tappers--> Sony is being charged with contributory infringement
• home “time-shifting” is fair use according to the “equitable rule of reason”
1. (1) Sony “has no right to prevent other copyright holders from authorizing
[recording] of their programs”
2. (2) even unauthorized time-shifting is fair use
• dissent argues that “library building” interferes with the videotape market
1. This is all noncommercial
2. At the time the copyright made no reference to contributory infringement
in any form --> patent law had contributory infringement and people said
it should be in copyright because it is in patent
• He comes up with the Sony rule and this rule is it capable of non
infringing substantial uses?
• sort of a confusing opinion; 5-4, and the dissent is written like a majority
opinion—this is possibly just a matter of technological realities
1. First Factor: Commercial --> Defendant said: noncommercial
2. Second Factor: Creative--> Defendant said:
3. Third Factor: Everything --> Defendant said: Home taping
4. Fourth Factor: Wants her licensing fees --> Defendant said: no real
market
• Cannot have secondary infringement (contributory) unless there is a direct
infringement
1. Direct infringers were not then Sony was OFF the HOOK
2. Direct infringers do NOT have to be defendants
American Geophysical Union v. Texaco Inc. NOT FAIR USE
• Rule:
1. The photocopying of copyrighted material to convert scholarly articles
into a useful format is not a transformative use of the material and
therefore not a fair use.
• Facts:
 1. American Geophysical Union (Plaintiff) and other publishers (Plaintiff) of
scientific and technical journals brought a class action claiming that
Texaco (Defendant) infringed their copyright with unauthorized
photocopying of articles from their journals.
2. Defendant claimed that its copying was fair use under §107 of the
Copyright Act.
3. Following a limited-issue bench trial, the district court held that the
photocopying of eight articles by one of the researchers for Texaco was
not fair use. Defendant appealed.
4. First Factor: Commercial --> Defendant said: doesn’t say anything about
"non-profit"/reseach in preamble to §107
5. Second Factor: Factual, nothing too much to say--> Defendant said:
Factual--> want people to know and to be dispersed
6. Third Factor: Whole Article--> Defendant said: Not the whole issue or
every article
7. Fourth Factor: Lost permission fees (no fees due if it is fair use), lost
subscriptions --> Defendant said: circular, paying extra
• Reasoning:
1. The photocopying of copyrighted material to convert scholarly articles
into a useful format is not a transformative use of the material and
therefore not a fair use.
2. The publishers (Plaintiff) have shown a substantial harm to the value of
their copyrights through Texaco’s (Defendant) copying due to lost
licensing and subscription revenue.
3. Balancing the four non-exclusive considerations bearing on fair use
enumerated in §107 of the Copyright Act,
4. Defendant’s use of the copyrighted material did not establish a fair use.
Affirmed.
Sixto Nunex v. Caribbean Intl. News Corp.
• Facts:
1. Photographer took photos of Miss Puerto Rico to use in her portfolio and
distribute to others
2. After they were taken it was deemed these may have not been acceptable
because she was partly naked
• First Factor: Commercial --> Defendant said: news reporting
• Second Factor: Creative--> Defendant said: Factual
• Third Factor: whole picture --> Defendant said: who cares?
•Fourth Factor: money $$$ --> Defendant said: no evidence of market effect
Cambridge University Press v. Patton
•Facts:
Sega Enterprises Ltd. V. Accolade, Inc.
Oracle America, Inc. v. Google --> NOT ON FINAL
Perfect 10, Inc. v. Amazon.com --> implications of search enginges
•No judge wants to disable search engines --> rule on a policy basis that we do
not want to lose search engines
o RULE: Plaintiffs must satisfy two requirements to present a
prima facie case of direct infringement: (1) they must show
ownership of the allegedly infringed material and (2) they must
demonstrate that the alleged infringers violate at least one
exclusive right granted to copyright holders under 17 U.S.C.S. §
106. 17 U.S.C.S. § 501(a). Even if a plaintiff satisfies these two
requirements and makes a prima facie case of direct
infringement, the defendant may avoid liability if it can establish
that its use of the images is a fair use as set forth in 17 U.S.C.S. §
107.
o FACTS: Perfect 10, Inc. (Perfect 10) markets and sells
copyrighted images of nude models. Among other enterprises, it
operates a subscription website on the Internet. Subscribers pay
a monthly fee to view Perfect 10 images in a "members' area" of
the site wherein said subscribers must use a password to log
into the members' area. Google does not include these password-
protected images from the members' area in Google's index or
database. Some website publishers republish Perfect 10's images
on the Internet without authorization. Once this occurred,
Google's search engine may automatically index the webpages
containing these images and provide thumbnail versions of
images in response to user inquiries. When a user clicks on the
thumbnail image returned by Google's search engine, the user's
browser accesses the third-party webpage and in-line links to
the full-sized infringing image stored on the website publisher's
computer. This image appears, in its original context, on the
lower portion of the window on the user's computer screen
framed by information from Google's webpage. On November 19,
2004, Perfect 10 filed an action against Google that included
copyright infringement claims. This was followed by a similar
action against Amazon.com on June 29, 2005. On July 1, 2005
and August 24, 2005, Perfect 10 sought a preliminary injunction
to prevent Amazon.com and Google, respectively, from "copying,
reproducing, distributing, publicly displaying, adapting or
otherwise infringing, or contributing to the infringement" of
Perfect 10's photographs; linking to websites that provide full-
size infringing versions of Perfect 10's photographs; and
infringing Perfect 10's username/password combinations. The
district court consolidated the two actions and heard both
preliminary injunction motions on November 7, 2005. The
district court issued orders granting in part and denying in part
the preliminary injunction against Google and denying the
preliminary injunction against Amazon.com. Because Perfect 10
has the burden of showing a likelihood of success on the merits,
the district court held that Perfect 10 also had the burden of
demonstrating a likelihood of overcoming Google's fair use
 defense under 17 U.S.C. § 107. Perfect 10 and Google cross-
appealed the partial grant and partial denial of the preliminary
injunction motion, and Perfect 10 appealed the denial of the
preliminary injunction against Amazon.com. On June 15, 2006,
the district court temporarily stayed the preliminary injunction.
o Issue: Does Perfect 10, Inc. have the burden of demonstrating a
likelihood of overcoming Google's fair use defense under 17
U.S.C. § 107?
o ANSWER: No, The Court held that at trial, the defendant in an
infringement action bears the burden of proving fair use.
Because the burdens at the preliminary injunction stage track
the burdens at trial, once the moving party has carried its
burden of showing a likelihood of success on the merits, the
burden shifts to the nonmoving party to show a likelihood that
its affirmative defense will succeed. Accordingly, once Perfect 10
has shown a likelihood of success on the merits, the burden
shifts to Google to show a likelihood that its affirmative defenses
will succeed. In this case, Perfect 10 claimed direct infringement
of its display and distribution rights. Perfect 10 likewise made a
prima facie case that Google’s communication of its stored
thumbnail images directly infringed Perfect 10’s display
right. However, the Court held that Google's fair use defense is
likely to succeed at trial, and therefore the Court reversed the
district court's determination that Google's thumbnail versions
of Perfect 10's images likely constituted a direct infringement.
The Authors Guild v. Google, Inc.
• RULE: The first fair use factor's inquiry is whether and to what extent
the new work supersedes and is transformative. While recognizing
that a transformative use is not absolutely necessary for a finding of
fair use, the goal of copyright, to promote science and the arts, is
generally furthered by the creation of transformative works and that
such works thus lie at the heart of the fair use doctrine's guarantee.
A transformative use is one that communicates something new and
different from the original or expands its utility, thus serving
copyright's overall objective of contributing to public knowledge.

o Facts: Plaintiffs, who are authors of published books under

copyright, sued Google, Inc. (Google), the defendant, for
copyright infringement in the United States District Court for the
Southern District of New York. Through its Library Project and
its Google Books project, acting without permission of rights
holders, Google has made digital copies of tens of millions of
books, including Plaintiffs' that were submitted to it for that
purpose by major libraries. Google has scanned the digital copies
and established a publicly available search function – this was
 alleged to constitute infringement of Plaintiffs' copyrights.
Plaintiffs sought injunctive and declaratory relief as well as
damages. Google defended on the ground that its actions
constitute "fair use," which, under 17 U.S.C. § 107, is "not an
infringement." The district court agreed; thus, the plaintiffs
appealed.
- Issue: Did the defendant’s actions constitute infringement of Plaintiffs’
copyrights?
- Conclusion: The Court held that Defendant's unauthorized digitizing of
copyright-protected works, creation of a search functionality, and
display of snippets from those works were non-infringing fair uses
under 17 U.S.C.S. § 107 because the purpose of the copying was highly
transformative, the public display of text was limited, and the
revelations did not provide a significant market substitute for the
protected aspects of the originals, and defendant's commercial nature
and profit motivation did not justify denial of fair use. Moreover, the
Court posited that Defendant's provision of digitized copies to the
libraries that supplied the books, on the understanding that the
libraries would use the copies in a manner consistent with the
copyright law, also did not constitute infringement, nor was defendant a
contributory infringer.

The Factors:
The purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
• The character and fitness of the use has more weight than the
others. If the purpose and character of the use is commercial, money-
grubbing, and pecuniary in nature, this fact will hurt the score on all
of the other factors.
•wrongdoing or “unclean hands” of D will be weighed against
him (Harper and Row) (at least implicitly)
• Noncommercial use favors fair use
The nature of the copyrighted work;
• Has 2 main points

The copying of the unpublished works- if a work is

unpublished then keep your hands off of it.
•copyrighted work is unpublished, use will rarely be fair
(Harper and Row)
•But: last sentence of §107 makes clear that
unpublished nature not determinative.
The degree to which the first work is wholly original and
creative- courts must consider whether the copyrighted work
that was copied is a purely expressive, wholly created work,
 such as a work of fiction or visual art that is completely
original to the author or artist from start to finish.
The amount and substantiality of the portion used in relation to the copyrighted
work as a whole
• This analysis is heavily dependent on the purpose and character of
the use (factor one) and also on the context the copyist is working in,
and media involved in the copying.
• Courts consider both the quantity and the quality used (Harper and
Row).
• amount used must be “reasonable in relation to the purpose of the
copying” (Campbell). If take more than needed, weighs against FU.
Classic fair use is parody which is a form of comment and
criticism, and comment and criticism is held to be good First
Amendment speech that helps us maintain a robust
constitutional democracy.
•If you can probe that your purpose and character was that
of a parody, you will be allowed to copy a lot of the
original material.
When it is NOT parody, copying too much will get you an
opposite result.
•Simple copying of limited portions for display in class -
sounds fair
•Copying entire chapters for use in class - unfair
The effect of the use upon the potential market for or value of the copyrighted
work.
• look both at the market itself and its effect on potential derivatives.

Direct and Secondary Liability

Fonovisa, Inc. v. Cherry Auction, Inc.

Rule: Contributory infringement originates in tort law and stems from the notion that one who
directly contributes to another's infringement should be held accountable. In other words, the
common law doctrine that one who knowingly participates in or furthers a tortious act is jointly
and severally liable with the prime tortfeasor, is applicable under copyright law. Contributory
infringement is an outgrowth of enterprise liability, and imposes liability where one person
knowingly contributes to the infringing conduct of another.

Facts: The Fresno County Sheriff's Department seized 38,000 counterfeit tapes (copyright
holders unstated) from a swap meet approximately a year and a half before the plaintiff
filed suit. Plaintiff sued defendants for copyright infringement, contributory and vicarious
copyright infringement, and contributory trademark infringement under the Copyright Act,
17 U.S.C.S. § 101 et seq. The district court granted defendants' motion to dismiss pursuant
to Fed. R. Civ. P. 12(b)(6). Plaintiff appealed the dismissal on all claims except the copyright
infringement claim.
Issue: Could the financial benefit prong of the test for finding vicarious liability only be
satisfied if the defendant earned a commission directly tied to the sale of a particular
infringing item?

Answer: No, The court reversed and remanded, holding that vicarious liability existed because
defendants had control over direct infringers and had a direct financial interest in the infringing
activity. The court also held that contributory copyright infringement was established since
defendants knowingly contributed to the infringement by providing the site for the activity.
Finally, the court held that contributory trademark infringement existed because defendants were
"willfully blind" to the ongoing infringement.

• Auction case, selling CDs of P

• CDs sold were counterfeits

o P had options for recovery, could have gone after manufacturer, distributors,
etc
o P decided to file suit here because the auction was a good chokepoint to stop
the sale of the CDs

• Pre-Grokster, 2 kinds of Secondary liability

o Contributory

▪ Actors who are held liable for knowingly assisting or encouraging

infringement

o Vicarious

▪ Actors held liable for benefiting from infringement and have the right
or ability to stop infringement
▪ More appropriate in this case

▪ D benefits and has authority to stop

▪ Developed in 2nd circuit

▪ Built on law of agency and respondeat superior

▪ Shapiro case, used

▪ Landlord tenant cases

▪ Dancehall cases

• Court found D liable for vicarious liability

o D benefits and has authority to stop

Perfect 10, Inc. v. Amazon.com, Inc.

• Google image search included paid for pictures

• P claims direct infringement and contributory infringement

o Contributory

▪ Test is: one who, with knowledge of the infringing activity, induces,
causes or materially contributes to the infringing conduct of another, may be
held liable as a ‘contributory’ infringer
▪ Napster test

▪ if plaintiffs could prove that D knew or should have known

that the act infringed plaintiffs’ copyrights

▪ Actor’s contribution to infringement must be material to warrant the

imposition of contributory liability
▪ Google could be held contributorily liable if it had knowledge that
infringing Perfect 10 images were available using its search engine, could
take simple measures to prevent further damage to Perfect 10’s copyrighted
works, and failed to take such steps

▪ Factual disputes to be settled

o Vicarious

▪ plaintiff must establish that the defendant exercises the requisite

control over the direct infringer and that the defendant derives a direct
financial benefit from the direct infringement

▪ P Fails to meet this test

• Remanded to Dist

Perfect 10, Inc. v. Visa International Service, Association

• Users used Ds product to purchase from infringing sites

• D is a good chokepoint because it cuts off the users payment option
• Contributory

o Personal conduct that assists infringement

▪ Intentionally encouraging direct infringement

▪ Taking steps that are substantially certain to result in

infringement

o Knowledge
 ▪ P did not show knowledge or material contributing

• Court refuses to create new liability theory

• Dissent

o D is helping the infringement occur

▪ Without D, no infringement

Liability of OSPs, Section 512 Safe Harbors

Section 512

• Section 512 provides immunity from secondary infringement liability for an online
“service provider” (OSP)

o Protects OSP from damages but not equitable relief

• Requirements to qualify for safe harbors

o OSPs must not interfere with “standard technical measures” applied by

copyright owners to protect their works.
o OSPs must adopt and reasonably implement a policy providing for
termination of repeat infringers, and they must inform their users of this policy. 17
U.S.C. § 512(i).
o Each safe harbor has its own requirements that the OSP must meet to qualify
for its protection.
o Any OSP that has “actual knowledge” that specific material is infringing or
“aware[ness] of facts or circumstances from which infringing activity is apparent,” is
not eligible for coverage of the safe harbor unless it “acts expeditiously to remove, or
disable access to, the material.”
o OSPs are ineligible for the safe harbor if they obtain a “financial benefit
directly attributable to the infringing activity, in a case in which the service provider
has the right and ability to control such activity.”
o

• 512 Extends to the following activities:

o (1) transitory digital network communications;

o (2) system caching;
o (3) storing information on its systems at the direction of users; and
o (4) providing information location tools like hypertext link

▪ Both 3+4 are subject to Notice and Takedown

▪ OSP must “expeditiously to remove, or disable access to, the

material that is claimed to be infringing.
Viacom International, Inc. v. YouTube, Inc.

• Whether YoutTube is even possible

• Qualifications for 512

o Threshold

▪ The party must in fact be a “service provider,” defined, in pertinent

part, as “a provider of online services or network access, or the operator of
facilities therefor.”

o “Conditions of eligibility,”

▪ including the adoption and reasonable implementation of a “repeat

infringer” policy that “provides for the termination in appropriate
circumstances of subscribers and account holders of the service provider’s
system or network.”
▪ Qualifying service provider must accommodate “standard technical
measures” that are “used by copyright owners to identify or protect
copyrighted works.”

• Actual knowledge of infringing material, awareness of facts or circumstances that

make infringing activity apparent, or receipt of a takedown notice will each trigger an
obligation to expeditiously remove the infringing material
• Whether the DMCA safe harbor at issue requires “actual knowledge” or
“aware[ness]” of facts or circumstances indicating “specific and identifiable infringements.”

o Specificity Req

▪ (i) does not have actual knowledge that the material or an activity
using the material on the system or network is infringing;
▪ (ii) in the absence of such actual knowledge, is not aware of facts or
circumstances from which infringing activity is apparent; or
▪ (iii) upon obtaining such knowledge or awareness, acts expeditiously
to remove, or disable access to, the material

• Actual Knowledge v. Red Flag

o Objective v. Subjective
o Actual knowledge provision turns on whether the provider actually or
“subjectively” knew of specific infringement,
o Red flag provision turns on whether the provider was subjectively aware of
facts that would have made the specific infringement “objectively” obvious to a
reasonable person

• Actual knowledge will disqualify from Safe Harbor protection

• Right and ability to control under vicarious liability
 o Something more than the ability to remove or block access to materials
posted on a service provider’s website

• YouTube is an OSP and is qualified for protection

Mavrix Photographs, LLC v. LiveJournal, Inc.

• Whether D was protected under DMCA because Ps photos were stored at direction of
user

o Must show they were stored at the user direction

o D reviewed and approved the photos before deciding to store

▪ Moderation looks like D is involved in whether the photos are posted

▪ Would lose safe harbor

o Court found genuine issues of material fact whether D was moderator

Stephanie Lenz v. Universal Music Corp.

• 512(f)
• D misrepresented on takedown that video was infringing use of a portion of a song
• Court determined that the statute (107 and 512) requires copyright holders to consider
fair use before sending a takedown notification

o There is a triable issue as to whether the copyright holder formed a subjective

good faith belief that the use was not authorized by law
o shouldn’t be an automated process

• Willful blindness doctrine may be used to determine whether a copyright holder

“knowingly materially misrepresent[ed]” that it held a “good faith belief” the offending
activity was not a fair use

o the defendant must subjectively believe that there is a high probability that a
fact exists and
o The defendant must take deliberate actions to avoid learning of that fact.

Liability of Device Managers

Sony Corporation of America v. Universal City Studios, Inc.

• Dicta on contributory liability

o Taken from patent law

• Test
 o Capable of commercially significant non-infringing uses

A&M Records, Inc. v. Napster, Inc.

• Mp3 central file server

• VCs thought Napster satisfied Sony Test

o This was certainly true but also plenty of infringing uses

• D seemed to believe they would become so big that music companies would partner
with them

o Underestimated music companies resolve

• D claimed to be an ISP

o Therefore it could utilize Notice and Takedown

o Court didn’t buy it

• Court found that Napster knowingly encouraged and assisted its users in infringement

o Had actual and constructive knowledge of infringement

• Why Sony Test does not protect D

o In Sony court stated if liability “is to be imposed on petitioners in this case, it

must rest on the fact that they have sold equipment with constructive knowledge of
the fact that their customers may use that equipment to make unauthorized copies of
copyrighted material.

• Napster’s failure to police the system’s “premises,” combined with a showing that
Napster financially benefits from the continuing availability of infringing files on its system,
leads to the imposition of vicarious liability

o Right and ability to control due centralized server

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.

• Under what circumstances the distributor of a product capable of both lawful and
unlawful use is liable for acts of copyright infringement by third parties using the product
• No centralized server, made money by advertisement, was hands off when it came to
trading music
• Court created new kind of Secondary Liability

o Inducement

▪ One infringes contributorily by intentionally inducing or encouraging

direct infringement
 o Court essentially overrules Sony Rule but pretends it did not

• Court held that one who distributes a device with the object of promoting 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.

Rule: One infringes copyright contributorily by intentionally inducing or encouraging direct

infringement, and infringes vicariously by profiting from direct infringement while
declining to exercise a right to stop or limit it. Although the Copyright Act does not
expressly render anyone liable for infringement committed by another, these doctrines of
secondary liability emerged from common law principles and are well established in the
law.

Facts: Petitioner copyright holders sued respondent software distributors, alleging that the
distributors were liable for copyright infringement because the software of the distributors
was intended to allow users to infringe copyrighted works. The distributors were aware
that users employed their free software primarily to download copyrighted files, but the
distributors contended that they could not be contributorily liable for the users'
infringements since the software was capable of substantial noninfringing uses such as
downloading works in the public domain.

Issue: Are the software distributors liable for the copyright infringement by a third party
using their product?

Answer: Yes, The court held that the distributors could be liable for contributory
infringement, regardless of the software's lawful uses, based on evidence that the software
was distributed with the principal, if not exclusive, object of promoting its use to infringe
copyright. In addition to the distributors' knowledge of extensive infringement, the
distributors expressly communicated to users the ability of the software to copy works and
clearly expressed their intent to target former users of a similar service which was being
challenged in court for facilitating copyright infringement. Further, the distributors made
no attempt to develop filtering tools or mechanisms to diminish infringing activity, and the
distributors' profit from advertisers clearly depended on high-volume use which was
known to be infringing.