Introduction

OSYU v. Choudhury (Yoga)

 Bikram wants protection in a number of sequences of positions that he developed done under high
heat.
 Should he get copyright protection? Looking at the subject matter.
o Policy Considerations:
 Consumer Confusion - Know that actually is Bikram Yoga and not imitation. Might be
better protected by Trademark because TM is about consumer confusion. But, if had
a copyright then would still be able to shut down even though no confusion
 Inventive Incentive - Other know once they created something others will come in
and copy and others will not want to create.
 Cost (all IP protection) - But then others that want to practice yoga will
prevented from practicing. Make less accessible and more expensive.
 Free-riding - is good, competition is good. Lower prices
 But prevents innovator to recoup his investment. If he is not able then
suboptimal inventive to develop and create
 Copyright ensure optimal inventive to help solve free-riding problem
 Cost: Protection create incentive but limits dissemination of the ideas to
consumers or users. Makes the good more expensive and less accessible.
o Equitable Consideration:
 Look at the amount of work he put in. How much cost to develop.
 Can help with incentive problem.
 Cost little then can quickly recoup. But if large amount to develop then no
one would undertake without protection.
 Look at why people innovate in that field (create incentive to create)
 Most - economic man that is motivated by profit
 Yoga - motivated by passing on freely to students. Intrinsic motivation. Most
would innovate either way. But Bikram want to make money.
o But can still leverage reputation and make money. Credit.
o Compare with Choreography
 Yoga not specifically listed.
 Similar to choreographic works. Open list and not exhaustive.
o Paradox for protection - Want to maximize innovation and eventually disseminate to
consumers but also put a limit on the dissemination to create incentive
 Threshold question: Do we get more benefit from creating incentives?
 Consider whether it takes a lot of investment to develop. If high cost then
want more protection.
 Consider if there are other incentives to create even if no IP protection
o Satisfaction from creation, Reputation gains, Social norms in the
field. (People develop Yoga for long time without profit in mind)
o Other incentives other than with IP protection. Reputation gains.
Original. Books etc. This can be enough for people that are
concerned with economic gain.
o Legal Question: Section 102(a) not specifically list yoga.
 Could fit under choreographic works.
  List is non-exhaustive.
o Court Opinion (look at originality)
 No protection in the positions themselves. Not clear why.
 Specific order can be copyrighted. Even though individual motions cannot be
copyrighted
 Effort involved in selecting the arrangement. Original arrangement.
 Can take sum of parts make greater than parts. Take pieces (select) and
then arrange elements may be original provided it shows creativity. (Feist
principle)
o Originaltiy - whether the selection was creative enough to meet the
originality requirement.
 NOTE: Cannot get protection for sports event. Can film at the game. Too
unpredictable. Can get copyright in the film or the recording of the game.
 Sports is unscripted movements. But yoga has specific pattern.
 No protection to utilitarian process. (Baker v. Selden)
 Idea, procedure, process, system, method of operation, concept, principle,
or discovery
 Patents cover
 Not want a backdoor to circumvent patent law.
 Thin protection - describe the scope of protection
 Only protection in the selection and arrangement.
 Ignore utilitarian subject matter instead of aesthetic subject matter.
 Bikram claim the combination is utilitarian instead of aesthetic.

Subject Matter
 Subject Matter - What kind of subject matter can be protected
o Subject matter is a threshold question. Come before questions of validity etc.
 Note: Bikram did not ask the question of whether it was even copyrightable
o Statutory: 1976 Copyright Act (17 USC 102(a))
 What is copyrightable
 Original works of authorship.
 List of 8 example categories:
o Literary works
o Musical works, including any accompanying words
o Dramatic works, including any accompanying words
o Pantomimes and choreographic works
o Pictorial, graphic, and sculptural works
o Motion pictures and other audiovisual works
o Sound recordings
o Architectural works
 Understood as not being exhaustive and instead illustrative.
 Can have subject matter that does not exactly fit a specific category
 Gives some idea of what is covered. Although does not exhaust. Gives
specific examples.
 Classification
  Most of the time not matter what category characterize a copyrightable
work.
 Entitlements
o Copyright is the same only most of the times. Entitlements given
sometimes are different depending on the subject matter.
o Sound recordings - do not have entitlement of public performance.
 Defenses/Exemptions/ Limitations can apply differently to each category.
o Lester v. Warner Bros.
 Lester made sculpture outside bank. Sculptures can be seen
in the movie Batman forever. Sue for infringing copyright
without getting permission.
 Say that it is fair use.
 In this case, the court says they are so incorporated in the
building that becomes architectural instead of just a
sculpture.
 1990 - added architectural works
 17 USC 120 - in regard to architectural works.
o not prevent others from controlling part of
the skyline. Not allow them to prevent the
making, distributing, or public display of
pictures, paintings, photographs, or other
pictorial representations. Seen as going too
far.
o balance copyright with interest of the
building owner. Allow them owner make
changes without consent from author.
o 102(b) - Excludes some other subject matter. What is not copyrightable
 Copyright Duration
o Why limit? (Policy)
 Balance between original work and derivative work.
 Give incentive to create versus hindering others.
o Regular – Life of author + 70
o Works made for Hire – 95/120
 Shorter of 95 yrs from publication or 120 yrs from creation
o Constant expansion - Powerful industries that want extensions. Retroactive.

Constitutional Foundations
 Based on Innumerated Power. US Const. Article 1 Section 8 (IP clause)
o Clause is understood to have dual purpose. Both grant and limitation of power.
 Limitation specific text incorporates boundaries of the power.
 EX: Limited Times. Does not have power to legislate for perpetual copyright
protection.
 Eldred v. Ashcroft
o Like to republish texts electronically on the internet
o Argue that retroactive extension was unconstitutional
o IP clause
 Copyright protection is for “Limited Time” - If done retroactively - then could keep
adding time and no longer limited time. Then potentially we could end up with
perpetually unlimited protection.
 Especially worried because lobby groups already keep getting it extended.
 Only want to let them get one time period not let them perpetual.
 Congress has power to “promote the progress of science” - Continuously extending
does not promote the progress of science
 Utilitarian or economic policy. Stimulate creation.
 Works that are being saved are already created. Cannot create incentive
retroactively
 Since retroactive. Not clear that promotes incentives for anything. Deal with
specific form of copyright.
 Balance creation incentive against social cost of preventing from using.
 Not acting on any new speech. No balance if not achieve anything in terms
of the speech
o First Amendment - look how inhibit freedom of speech
 Limitation of speech can be okay.
 IP clause in the Constitution. When drafting first amendment they knew about the IP
clause. Must have assumed there could have been some copyright protection under
the first amendment.
 Does not protect the ideas. Just the expression of the ideas.
 Not protect everything in the copyrighted work. Not the abstract ideas just
the expression of those ideas.
 Copyright has built in safety valve that achieves balance with the first
amendment. Fair use, term limitation etc.
 Copyright is an engine of speech. Actually there to promote more speech.
Therefore, it is in tune with the first amendment. Harmony between the two.
o Reject Constitutional Challenge
 Level of scrutiny to Congress's legislation. level of deference
 Rational Basis - deference to Congress. General economic legislation. Treat
copyright as any other economic legislation.
 Limited Time
 It is limited time. Only exclude protection that is unlimited
 Reject the perpetual renewal
o Historical practice. Retroactive extensions. No one has previously
challenged, long standing unchallenged practice.
o Nothing to indicate anything about perpetual protection. No
attempt at backdoor around limited time provision
 Promote the progress of science. Rational basis.
 Harmonization with the EU countries. Where the protection is life + 70.
Make sense to harmonize with the EU.
o Can affect international copyright protection. Will affect where the
author publishes first.
 Incentive for publisher to repackage, reissue, restore existing works. Give
incentive for publisher because can make more money.
 o Logic of the system is to give protection to give incentive. But
assumption that after that point should give into the public domain.
 Demographic, economic, and technological changes
o Technology changed and needs longer protection. Not really
explained.
 Reject Fist Amendment Challenge. Copyright is an engine of speech
 No violation because copyright law has built in balance with first
amendment
o Idea expression
o Fair use

 Copyright is not categorically immune from 1st amendment challenges

o As long as within traditional framework, the internal safeguards are
enough and no first amendment problem. This extension was within
the traditional framework.
 What is outside?

o Dissent - Breyer
 Apply to entire extension of time. Not just the retroactive aspect.
 Standard of review
 Majority - rational basis, field of economic regulation (apply usual test).
 Dissent - Make up own standard. Copyright is a strange hybrid. It is
economic regulation but inherently attach on to regulation of speech.
Should be somewhere in between. Not pure economic regulation but
regulation of expression.
o Unconstitutional if: (cost benefit analysis of the extension)
 Regulation bestow only private rather than public benefits
 Regulation seriously threaten the constitutional expressive
values
 Regulation has no justification in any clause related
objective
 Cost benefit analysis
 2 groups of works
o Works where have commercial exploitable. Still in demand (In print)
o Works that are not commercially exploitable (Out of print)
 Cost for both
o Usual cost of copyright protection. Providing protection you are
limiting access. Higher prices. Limit access of people to relevant
works. Esp to those that are commercially viable.
o The chill created by additional future protection. Transaction cost
because of possible legal costs in works. Esp for non-commercially
exploitable.
 Many things have to worry about after the fact. Can be
extremely complicated for photographs. How find the
owner of a photograph.
 Chill or impediment on projects that are looking to gather
information from a period and looking to save them. Will
 end up having to scale back or just not happen at all. Risk of
losing the past.
 Fair Use - exception to copyright protection. First
amendment safe guard. Not relevant because apply to
certain uses but not sure if would be included in digital data
base.
 Benefits
o Minimal creation incentive.
 Cannot create incentives when the incentive was already
given
 Minimal incentive for future creation because of tiny chance
will still be commercially viable after 75 yrs and the small
present day value of the extension.
 Very little public benefit but there must be some private
benefit.
 Private benefit - is the retroactive beneficiaries.
They already know they have commercial value
(mickey mouse).
o Harmonization with EU
 Does not harmonize other areas like works for hire and pre-
1978 works.
 Decision on where to publish is negligible because of the
minimal present value of the extension.
o Incentive to republish. Redistribution is better served by expiration.
 There is substantial cost. No way promote the progress (no incentive).
Motivation is just private as compared to public. Therefore according to
Breyer should be unconstitutional.
 U.S. v. Moghadam (extent Congress can legislate not based on IP clause)
o 18 USC Section 2319A (criminal version) – 1101 - Protection for unfixed musical
performances.
 There is a musical performance and the infringer copies the performance. And then
the later acts to disseminate etc.
 Quasi copyright protection - for live performances
 Necessary because
 Subject matter - absent 1101 live performances was not a subject matter of
copyright. The song may be protected as a musical work (notes and words).
If copy the musical performance (underlying work) then could infringe the
work. But, what happens when the performer is not the owner of the
copyright. Then would not have protection.
 Fixation Requirement - one requirement for copyright is that should be fixed
in a tangible/permanent existence. When music only survives in the
listeners head would not get protection. No fixed medium.
 NOTE: Not all live performances Only musical performances.
o Challenge constitutional validity of 2319/1101
 IP clause - Congress has power to protect writings which imply some sort of fixed
version of work. But live musical performance is not it is unfixed. (fixation)
  Limited times - nothing in the provisions to live musical performances is limited in
time. there is no reference to a limited time. It would be safe to infer perpetual
protection
o Government Justification
 Commerce Clause - allow congress to regulate interstate commerce. The bootleg
versions were being shipped interstate.
 Very relaxed and permissive terms.
 Implying some difficulty - will take awake bite of IP clause completely.
Create an end-around of the IP clause. Nothing left of the limitations of
power.
o Most of the opinion is arguendo - not really hold anything.
 Assuming arguendo that Congress not have power under IP clause.
 Commerce Clause - easily see that no problem justify the legislation under
the commerce clause
 Relationship between the two - balance the force.
o TEST: Commerce clause cannot be used to avoid limitations in IP
clause only where the Commerce Clause is fundamentally
inconsistent with the particular limitation in the IP clause.
 Writings
 Court wants to find that there is not a fundamental
inconsistency. The two protections are
complementary. Basic purpose of IP clause is to
promote progress of sciences and useful arts (fixed
works) and 1101 serves the same purpose
(compliments) to unfixed works.
 But, the specific limitation is writing. Not the overall
purpose.
 Limited Times (exercise in class)
 Arguendo 1101 supply perpetual protection
 Hard to see any consistency.

 Golan v. Holder
o What about cases that seem to be outside of the traditional copyright framework.
o First Amendment Issue
 Deal with crack in Elred, majority said when under traditional framework there is no
First Amendment challenge
 Now, have an untraditional framework.
 Section 104(a) - 1994 after US joined TRIPPs
 Retrieve some works from public domain.
o Some with expired protection and some that never had protection
o Foreign works that fell into public domain for several reasons
 Did not satisfy formality requirements of copyright in US
(copyright notice ©, Renewal of copyright term etc)
 Restore for extra time that they would have had if they had not failed
formal requirements.
 Backward looking provision
  Reliant party - rely on the work falling into the public domain. Create
derivative work or republish.
o Balance mechanism in the interests of the owner and the reliant
parties:
 Must serve notice
 Able to exploit for 12 more month
 For those who made derivative works, able to continue
with the payment of reasonable royalties. Parties agree or
courts set.
o Procedural history
 D.Ct - all out constitutional challenge. Companion to Elred v. Ashcroft.
 D.Ct reject all challenges. Give standard reply for First Amendment just like
in Elred
 10th Cir - uphold rejection of IP clause challenge but not uphold First Amendment
challenge.
 This is a case that goes beyond traditional framework. Retrieving work from
public domain.
 Mean that need to apply a serious First Amendment analysis. Not just
standard engine of speech with built in balances
 D.Ct - on remand. Balance and unconstitutional when dealing with reliant parties
 10th Cir - 4th round. Opinion read.
 Revisit D.Ct analysis of First Amendment.
o First Amendment Analyses
 Whether content neutral or content based regulation. Determines the test to use.
 Content Neutral – Regulate: Commercial Advertising on highways is not allowed
 Regulate speech but not based on the content of the speech.
 Content Based - Regulation that road signs including nudity or support the GOP are
not allowed
 Based on the content.
 Higher degree of scrutiny
 Court finds that the regulation is content neutral. Not based on any aspect of the
speech
 Use intermediate level of scrutiny. 2 part test
o Regulation has to advance some important government interest.
Not just the limitation of speech. Something else
 Besides suppression of speech
 Ct. - meet because there is evidence before Congress,
protection to Am. Authors in foreign countries would only
receive protection if give protection to foreign in the US. Yes
important. Protecting Am. Authors is important. (assuming
that the Am. Have also fallen out because did not meet
requirements)
o Regulation should not burden more speech than is necessary to
achieve interest. Must be narrowly tailored. Should not support
more speech than necessary.
 Should not suppress more speech than necessary to achieve
goal
  Ct. - focus on reliant party; Argue that not protect reliant
parties enough
 Publisher already step in because it was in the
public domain
 Creator of derivative work and not allowed to use
unless pay reasonable royalties
 But, says that it is okay
o Reliant parties in other countries would get
same restrictions in other countries. US
authors would also get same protection and
get maximum
 Argument that retrieve stuff from public domain is
per se unconstitutional
o Court reject. No per se bar. Must apply First
Amendment analysis.
 Content based.
 Strict level of scrutiny
o Compelling government interest
o Narrowly tailored
o Least Restrictive Means

Theoretical Perspective: Economic Analysis

 Public Good - a resource that has 2 qualities. Normal can think as armed forces or lighthouse
o Non-excludable - once it is created and put out there, it is impossible to exclude others from
enjoying the benefit
 Lighthouse - once it is built, other ships can use
o Non-rivalrous - one person's enjoyment of the goods does not restrict the enjoyment of
others. Marginal benefit is zero. Once in place creating one more unit of benefit does not
create more cost
 Not true for goods like car.
 Lighthouse - one ship uses does not affect the use by other ships
 Subject matter protected by copyright is not 100% public good but pretty close. Looking not at the
physical book but the idea
o Hard to exclude
 Moment release a copy of idea. It is extremely hard to exclude others from using
and enjoying.
o Close to non-rivalrous
 Intellectual work in the book. Not actual book. People can enjoy the ideas in the
book at the same time.
 Create a copy with very little investment.
 Because of the two qualities - there is less incentive to produce the first embodiment of the good.
o Creator of the first unit (undertook the initial investment) find it hard to recoop investment.
o People will be under incentivized to proceed
o Lighthouse - will have net public good but builder will not be incentivized to build
 Possible Solutions ( others on slide)
 o Government can step in and provide the good
o Government create legal monopoly and allow creator to help recoop (copyright)
 Benefits of Copyright protection
o Demand curve - downward sloping. Cheaper the price the more people will be willing to pay
for it.
o Marginal cost - cost of producing another unit
 Once R&D is done, the additional cost is very little
o In Absense of copyright
 Once created, competitor will step in and make a copy for marginal cost
 The price will gradually drop almost to the marginal cost.
 Would seem good because allow more people to have access. Full and efficient
supply
 Problem is that there is no incentive to create.
o Now with copyright - assume absolute monopoly.
 The owner would try and make the most money possible. Best would be to charge
the amount the person is willing to pay. (impossible). Perfect price discrimination
 Would be best because everyone gets what they want.
 Partial price discrimination - having a rough division. Some people willing to pay
more and some willing to pay less. Use different tiers.
 Hard cover vs Soft cover
 Solution is that will charge a flat price, but need to create something in between.
Charge price that will allow for maximizing price.

 Effects of copyright solution

 Without ability to determine exactly what each person is willing to pay, copyright owner will charge
one flat price to everyone
o Somewhere between very high price(few people) and a very low price (many people)
o Want to pick price point that will maximize profit.
 Effects - Slide 7
o Monopoly profits - price is higher than under competitive pricing. Profits in monopoly
system that are greater than competitive profits. These are the recoop in the investment.
o Consumer surplus - consumers that value the work at the monopoly price or higher. They
will buy the work and be satisfied. They will also get a benefit. Get the work for a price lower
than willing to pay.
o Deadweight loss (static cost)- main social cost. Total value for consumers where the demand
should have been satisfied but did not. People willing to pay or more the cost to produce.
Despite that willingness they will not be able to get it for that price. Willing to pay marginal
cost or more up to the monopoly price.
 EX: patents - life saving drugs. There will be dead people that could have been
efficiently saved because of the monopoly price.
 Must balance the social benefit and cost
o Policy: what to protect, how long, how broad. Always think about trade off of benefits and
cost.
 Critique - Reward theory (give reward to creator to satisfy incentive problem). - silde 8
o Other or additional social costs (not captured by deadweight loss)
 Cost to future innovation and creation (dynamic cost)
  Creating more burden on future creations. Make harder or more expensive
to create future films or literature
 Almost nothing is created out of nothing. In order to create intellectual
work must draw on existing works. When copyright protects those then
makes it harder for future. Want to put in copyright for incentive to created
but then on the second level creates a larger burden.
 Danger of over-incentive compared to other fields and activities not protected
 Need to look beyond economic area covered by copyright. Need to look at
effects on entire economic spectrum.
 Other areas - people produce something that is not protected
o EX: Teacher - will give some social value. But, will not be able to fully
recoop his benefits.
o EX: Scientist who theorize - scientific theory not protectable. Theory
is highly valuable. Will get salary, but will never fully internalize
social value of activities.
 Need to see relative effect
o Look at if copyright create a much larger ability to recoup as
compared to other areas not protected (significant rate of return)
 If that is the case. Then distortion in economy.
 Attract too many people to come to that field away from
other fields.

Frame Work for analysis

 Help create framework for analysis
o Try to figure out what you get for benefits and compare to the social costs imposed by
aspect of protection
o Used in Elred v. Ashcroft compare social cost and benefit for extending 20 yrs.
o Then will have justification to implement copyright protection.
 Applications
o Reasons for not outlawing independent creation of substantially similar works
 Copyright does not protect against similar works or independent creation (even if
turn out exactly the same). Only against copying.
 If not limited to copying and extend to similar works:
 Benefit - some extra incentive to creator. More protection.
 Cost -
o would be costly to look at everything that is out there to avoid
infringement. Huge transaction costs.
o Problem of free-riding does not exist when independently created.
2nd independent creator does not get to free-ride will have to
invest own R&D cost. Price will not drop quickly. If have to invest
R&D will not be able to charge low cost. Need to recoup cost.
o Reasons for not protecting ideas
 Can get protection for the book(expression), but does not protect the actual ideas
 EX: Protection for Newton's book but not the ideas in the book.
 If allow protection
 Cost
 o Expression is limited but ideas are broad. Would affect much larger
number of future works that are built on.
 EX: fewer people need to draw from Newton's books as
compared to his ideas.
o Wasteful race for protection - when create broad protection, there
will be a big prize/incentive. First one to innovate will get that prize.
But, then will create large inefficient races to get that prize.
 In extreme cases, with the large R&D cost and sheer
number of competitor, then in the end can dissipate all
social cost.
 Benefit
o Some social benefit. But, probably not worth it because such large
cost

Fixation
 Fixation - threshold requirements for copyright protection
 In order to get protection, the work must be embodied in some stable physical form.
o Excludes some works - live performance, dramatic act (improv)
o Never reduced to physical form then no protection only in creator's head
 Some courts ground fixation on Constitution ("writings")
 Also have statutory background
o 17 USC 102(a) - fixed in any tangible medium of expression
 Why this requirement? (Policy)
o Procedural/Evidentiary effect. If no clear physical embodiment, how prove who created first,
or who copied who, or how similar. Much more likely to raise complicated problems if
nothing physical to present to the court.
o Concern of preservation of work.
 Parallel to patent law - patent require much stronger requirements for protection
(disclosure, enablement). Need to provide full written description of invention that
eventually become public. Must teach relevant public to make the invention. Makes
the inventor give the invention to the public. Public can then use that knowledge.
 Fixation achieve little bit of preservation. If want protection must have some
embodiment and not just in your head. Otherwise can perish in their head. A little
bit in ensuring preservation of the knowledge.
 2 significant points
o Fixation is a requirement for copyright protection.
o Infringement (more significant). One way to infringe is by creating copies of the work (right
of reproduction). Only violate if actually created copies. To create copies must fix the work
in a tangible medium.
 Statutory Definition
o 102(a) - requirement for protection
o 101 - Definition section
 Fixed
 Board terms. Not limited to any method of fixation (any tangible
expression).
 o Include both book or even CD (which requires a machine)
 Technologically neutral - not refer to any specific tech or methods of
fixation.
o Does not even matter if the technology is not known. Includes later
developed
 Last sentence of definition of fixation - simultaneous transmission and
fixation is good enough to be considered fixed in real time.
o EX: Super Bowl -> transmit the game to the public while recording.
 But, what if the viewer is also making a copy at the same
time. Argue that was not fixed when he was making a copy.
o Hypo: what if at the game and make own recording even though
they are recording and broadcasting at the same time.
 This would not be copying the fixed medium it would be
copying the actual game.
 Games are not copyrightable subject matter.
 Video of the game okay. The video may even get its own
copyright.
o Hypo: what is improv dramatic show and make a video. Same
simultaneous transmission
 Dramatic work is protected by copyright law unlike the
game. Potentially copyrightable, but need to see if the
dramatic work is fixed.
 Was not previously fixed because was improv.
 But is being fixed simultaneously. Def of fixation even
though simultaneous counts as fixation.
 ANALYSIS
 See if meet subject matter.
 Then see if there is fixation.
o Note: Popular song
 CD - fixes 2 copyrightable works.
o Hypo: Record improv dramatic work but there is no transmission
only recording
 Copyrightable subject matter and being fixed.
 But, if simultaneous fixation counts as fixation why would
they have added that last sentence.
 Imply that simultaneous recording by itself is not
fixation.
 Argue that only needed for sports games because
those are not copyrightable subject matter.
 Copies
 Physical embodiment that embodies the work. Physical object in which the
work is fixed.
 Includes the first embodiment. Does not have to be second or third
embodiment
 Phonorecords
 Subspecies of copy.
 Same as a copy only that embodied work is sound record.
 Exceptions to the fixation requirement
o Possible state protection to unfixed works.
 Normally there is federal preemption of any state protection of copyrightable rights.
 But, state allowed to supply protection to unfixed works.
o Section 1101(a) - protect live musical performances. Act like copyright protection. DO AWAY
WITH FIXATION REQUIREMENTS. Only apply to live musical performances, not apply to
dramatic works.
 Fix sound of live musical performance or reproduces copies
 Transmits or otherwise communicates to the public
 Distributes, sells, rents or traffics any copy
 Protection for person performing the musical work. Not the owner of the copyright
work. \
 Performance rights.
 Williams Electronics v. Artic (Digital technology)
o ROM - read only memory
o Fixing interactive computer programs
o Copyrighted work was a computer game.
 P was maker of the game. Embodied the game in arcade machines using ROM
circuits.
 D made copies of the ROM circuits. Clear that D reproduced the data exactly the
same as in Ps machines.
o 2 copyrightable works
 Computer Code - computer instructions written in computer language. This is what
is actually fixed in the ROM. Machine language.
 Audio Visual - when the code is read, it will generate images and sounds on the
screen. This again is copyrightable work.
o Concerned about the audio visual copyright.
 D argue that was not fixed. It is interactive and changes with the player. Each game
is different. No one version of defender.
 That particular version is not fixed anywhere. It is not fixed in the ROM.
 Note: could have argued who the actual author was. The creator of the
ROM or the player.
 D also argue that what is fixed in the ROM is really code. Not a direct representation
of what appears on the screen and the speakers. The ROM is just instructions to the
CPU.
 EX: Build airplane that is mechanically preprogrammed flight path. And,
while the airplane flies, it emits smoke. Is the image in the sky produced by
the smoke copyrightable.
o Court
 Term fixed should be read to mean "sufficiently permanent or stable to permit it to
be...reproduced or otherwise communicated."
 Audiovisual work was permanently embodied in the computer code on the ROM.
 Player's participation in the game did not withdraw the work from copyright
eligibility, because a substantial portion of the images are the same, regardless of
how the game is played.
 MAI Systems Corp. v. Peak Computer
o RAM - dynamic memory is fixation for purpose of copyright
o MAI made computer software. After the software was installed on a customer's computers
they often maintained the customers' computer systems for an additional cost.
o Peak stole some of MAI's maintenance contracts.
o MAI sued Peak for copyright infringement.
 MAI argued that in order to perform maintenance, you had to run the program.
That entailed making a copy of the program from the hard drive onto the
computer's RAM.
 MAI argued that they had sold a license to the users to make copies, but
that license did not allow third parties like Peak to make copies.
o Court.
 Statutory definition of the word 'copy' in 17 U.S.C. §101 and found that loading the
software onto the RAM met the definition.
 Image on the RAM was "sufficiently permanent or stable to permit it to be
perceived, reproduced, or otherwise communicated for a period of more than
o If RAM is fixation, then huge ramifications in digital work. Blur line between making copies
and using because in order to use on a computer then must make a RAM reproduction.
 Copyright owner was able to gain market power in maintenance. But, this is not a
purpose of copyright.
o Under MAI - the user was not an owner of the computer program. Was only a licensee. 17
USC 117 does not apply.
 17 USC 117 – not infringement
 Making additional copy or adaptation by owner of copy
o Not infringement for owner of a copy to make or authorize another
copy or adaptation if (1) essential step in utilizing computer
program in conjunction with machine and not used in any other
manner or (2) Copy is for archiving purposes only and will be
destroyed in even that possession of computer program cease to be
rightful
 Lease, sale or other transfer of additional copy or adaptation
 Machine maintenance or repair
o No infringement for owner or lessee of a machine to make or
authorize the making of a copy of a computer program if such a
copy is made soley by virtue of the activation of a machine that
lawfully contains an uthorized copy of the computer program for
the purse only of maintenance or repair if (1) new copy used in no
other manner and destroyed immediately after and (2) parts that
are not necessary for machine to be activated should not be
accessed or used other than to make a new copy by virtue of
activation
o 2 more pieces after MAI
 Still good law - RAM reproduction constitute fixation
 Case law - still good law, but how broadly do you read?
o Cartoon Network v. CSC Holdings
 Remote DVR
  Cable television service provider- Will aggregate channels into one signal
and send to consumers. Provider has authority to do so (licenses).
 But, provider will end up splitting the signal and send one to DVR other to
consumer. Will send the signal to a primary buffer and store in RAM for 0.1
seconds.
 Only if consumer request the show then send to next buffer.
 If they do, secondary buffer. Basically RAM. 1.2 seconds. Still short amount
of time. After fraction is reproduced they are quickly deleted.
 The faction is then sent to the hard disk and saved there.
 When subscriber chooses to watch it is streamed to the subscriber.
 Whether the reproduction of the small bits in the buffer is a fixation and a
reproduction and an infringement
 Under MAI - fixation and making of copies. (broadly read)
 Court
o In order to satisfy fixation requirements. 2 independent
requirements.
 Embodiment - work is placed in a medium such that it can
be perceived, reproduced from that medium (MAI)
 Duration - must remain for a period of more than transitory
duration. (new requirement)
 MAI is not inconsistent. There was nothing about
duration. The duration there was not disputed.
Fixed for a period more than transitory duration
o Embodiment - was eventually reproduced
 Could argue that was only in pieces. And not the full work.
o Duration - was too short.
 No given standard. Not long enough. Only transitory.
 NOTE: Projection onto a screen does not satisfy embodiment.
 Statutory
o 17 USC 117 - deal with certain cases of reproductions in computer memory. Only narrow set
of circumstances. Exempt certain acts that would originally be infringement.
 Allowed to make back up copies
 Using the program on the computer and requires it to make a copy on RAM.
(essential step in use). Avoided by licensing.
 Machine Maintenance or Repair
 Reproduction that made for the purpose of machine maintenance or repair.
 Not speak about lawful owner of computer program. Must be owner or
lessee of the machine who authorizes copy which is lawfully contained.
 Copy made solely by the virtue of activation. Turn on.
 Copy not used in any other manner and destroyed immediately after
 Computer program not accessed or used other to make a new copy.
 Not originally in. Reaction to MAI decision
o Storage Tech – 117(c)
 Digital library storage system
 Digital copies stored on cartridge.
 Control unit would then control an arm and put on when want to watch
 Central computer would then control
  D - do maintenance services.
 Turn on device so stored in RAM
 Intercept error messages to fix during service contract
 Did not turn off computer until after the contract
 P argue
 Does not meet requirements of 117
 Did not destroy immediately after maintenance
 Maintenance part of the code was not necessary for the machine to work
 Not used in no other manner (only for maintenance or repair). Were using it
to get the error messages. Machine can be activated without the
maintenance part. But, the maintenance part is accessed and used by the D.
Have computer software that is not necessary for the activation of the
machine.
 Court
 Give broad definition to maintenance
o Applies to an ongoing service. Monitor problems.
o Case - using the maintenance to continually monitor errors.
o When maintenance is over it will be erased.
o Go along with Congress's intention to allow for maintenance and
repair of computers
 Key question is "What is the part of the code that is necessary for computer
to run?"
o Should not give most narrow reading
 Strict - computer only allowed minimal amount of code for
the computer to work
 But, would exclude the monitor drivers,
o Software is necessary when it is necessary to properly carry out the
maintenance or repair function.
 Maintenance code is not a separate piece of code.
o If had not entangled then could have excluded. But too bad that too
entangled.
 Intercepting error messages is part of the maintenance or repair.

Originality
 Basics
o Requirement for Copyright protection
o Source
 Constitution - IP clause, concept is implied by the term "authors"
 Congress has power to give protection to authors. Authors are the original
creator.
 May be unconstitutional to do away with the originality requirement
 Statutory (17 USC 102(a))
 Give protection to works that original works of authorship
 Case Law Definition ( independent creation + modicum of creativity)
 Originality means independent creation. It does not mean novel
o Must be created by the person (not copied).
 o Not require novelty. Does not need to contribute something new.
Not need to look at other things already out there.
 Intent of the creator is irrelevant ( Alfred v. Catalda)
o If intend to copy but then something happen and changes it. That is
copyrightable
 Aesthetic merit does not matter (Bliestein v. Donaldson)
o Not take any substantive evaluation of aesthetic merit.
 DO not care whether the work is commercial (Bliestein v. Donaldson)
o Does not matter if it is commercial or not commercial.
 Modicum of Creativity (Feist)
o Copyright claim in telephone directory
 Include all telephone of all people in area and arranging
alphabetically.
o S.Ct - say that originality needs independent creation.
 Met did not copy from anyone else.
o Also need a modicum of creativity
 Just need a little bit of creativity.
 Very low bar
o Creativity could be satisfied by combining elements that are by itself
not copyrightable elements.
 Example: Specific entries in telephone directory are not
copyrightable but the entire book may be.
 Look at selection and arrangement of the entries.
 Creativity in selection and arrangement.
 Criteria - all people in area
 Arrangement - alphabetically
 Not meet bar.
 Hard case - white pages of Austin area
 Criteria - select people's names that are associated
with vegetables or animals
 Arrangement - most funny name to least
 Can always add other things like drawings etc.
o Need to be careful what copyright is given in. What it extends to.
 What is protected is only the original contribution. (Thin
protection)
 When un protectable elements are combined, the
protection only extends to the original contribution.
 Fictional names (Not protected)
 Represented as fact - take as facts and facts are not
copyrightable
 Name and address is not creative
 Burrow-Giles Lithographic Co. v. Sarony
o Challenge originality of photograph
 Argue that the machine is just a mechanical reproduction of reality
 Ct - says it is original
o Most photographs may not be original
 But, the one in question is original
  Photographer set up everything
 Background, pose, lighting (creative decisions)
o Photographer gave his "mental conception" form by posing Oscar Wilde, choosing the
lighting, wardrobe, etc. All of that made the photograph the author's original work of art,
even though the photograph was mechanically produced.
 Hypo: Traffic Light Camera
o Looking at Burrow-Giles would probably weaken
o Choices would only be the focus, lens, angle
 Argue that even the choices were made for function.

 NOTE: Degree has changed

o The choices made by the photographer requirement has gone way down.
 What would not satisfy originality?
o No idea, bar is very low
o Should be something that does not satisfy
 Hypo: What if Photographer specifically chooses this intersection for artistic value. Satisfy
originality?
o Independent creation
o Creativity?
o Is there a distinction between the cases even though it is the same photo?
 Might be able to make a distinction because of the setup process. Made creative
choices and supplies the missing creativity.
 Oriental Printing v. Goldstar
o Pictures of Chinese food
 Court says no creativity
 Not consider artistic merit or novelty
 Only supposed to look at modicum of creativity. But pretty impossible to
define.
 Court says some just will not satisfy the minimal creativity
o Could argue the selection and arrangement of the menu was modicum of creativity. (as in
Skyy 2)
 Even though each element is not copyrightable. There is only thin protection.
o Since only thin protection, no infringement.
 This protection only protect against exact combination.
 Only extend to replication of the choice to the original.
 Ets-Hokin v. Skyy Spirits
o Commercial photograph for advertising
 Take photo for the company but the photographer retains the copyright
 Do not use the same photographs but get another person to take
 The choices to make the lighting etc makes it creative
o Reconcile with Oriental Printing?
 In skyy there is a little more creative. More choices.
 In Oriental Printing - there is very generic pictures. Just take from any angle
o Court cites that the bar is very low.
 Skyy 2
o Was there infringement by the D?
 No. Basically only very thin protection.
  Only extend to replication of the choice to the original.
o For thin protection can just make a small change. Very easily evaded
 Can get the protection but easy to get around the protection.
o For infringement - process does not really matter
 Just looking if the choices were replicated

 Meshworks v. Toyota
o Meshworks make 2D wire frame of Toyota cars to make it look 3D. End result was the data.
o Toyota never got the copyright of the wire frame representation but uses the images
anyways.
o Toyota argues that was not original
 Only barebones wire frame. Nothing new
o Originality
 Assume there is independent creation
 Modicum of Creativity?
 No, the wire frame is just expressing the raw facts
 There are no individualizing features added by the person
o In photography, the decisions that make it creative are not present
here.
 A change of medium does not necessarily constitute originality
 Labor, skill, and creative process as opposed to result irrelevant.
o Labor and skill is not enough to make creativity. All the labor was
doing was making a copy.
o The final outcome must be creative. Even though skillful labor is not
enough.
 Had to make creative skillful choices to make the outcome.
But, the outcome was not creative.
 Intent of direct reproduction as indicative of result.
o Professed intent of the P was to make as accurate as possible a
representation.
o NOTE: Rule is that intent does not matter. Should be looking at the
outcome.
o Distinguish from Skyy?
 Skyy - protection because of the extra features added by the photography
 after taking away vodka bottle the decisions are still there.

 Meshworks - There is no such choices made by the wire frame. Nothing additional
to the structure of the car. No angle, background, lighting.
 take away car, there is nothing left
 Did not preempt the whole 3D representation.
 Can add other decisions to make creative choices like background, texture
etc
 Hypo - Campbell soup painting - straight forward representation.
o Any protection based on originality
o What kind of protection. What does it extend to?
Derivative Works and Compilations
 Represent a way of creating a new work while relying on preexisting
 17 USC 101 - Derivative works, definition
o Take an existing work. Relying on it (substantial parts). But, transforming and recasting it
in some way. (Sequel, movie adaptation, translation, musical arrangement, dramatization,
fictionalization)
 17 USC 101 - Compilation
o Take preexisting materials, selecting and combining them in some way that creates a
new work.
 EX: Greeting card. Find a graphic shape and add in short phrases. None of which
is created by creator. Selecting and arranging materials
o Subset - collective works
 Works that select and arrange preexisting works
 The preexisting works are expressive works in and of themselves.
 EX: Encyclopedia. Made up of a lot of essays.
 How originality requirement applies to derivative works
o Relevant work must be independently created, but to a large extent they are not
independently created are using preexisting materials.
o Compilation: Additional contribution must satisfy creativity
 Selecting the preexisting materials and arrangement within.
 Sum greater than the whole.
o Derivative works: looking at distinguishable variation.
 As long as there is a distinguishable variation between derivative work and
original work then will satisfy originality.
 
 Derivative Works
 Alfred Bell - derivative work
o mezzotint engravings . Make engraving on prints of well known paintings that was in the
public domain.
 Bad copy? Then constitute a variation
 Different medium? Different colors
o Can't copyright a work in the public domain, you can copyright a translation of a work in
the public domain, but mezzotints were similar to a translation. They were an artistic
interpretation of a public domain work.
 Bridgeman Art Library – not derivative work
o Produced high quality digital copies of the original paintings
 Straightforward copy the digital copies
o D argue that should not get copyright protection because are just copies of the original.
 Digital Copies - No spark of creativity. No protection
o Ct find that there is no distinguishable variation
o In order to qualify, a work must be a distinguishable variation from the original. You
can't make an exact copy that is indistinguishable from the original.
 Distinguish cases
o Different tech - digital copy was better
o There is discretion in applying distinguishable variation that is more than trivial.
 Must have something that does not satisfy.
 Unprotected Original - 2 separate derivative works
o No infringement if neither copied the other. Derived from elements already in the public
domain
 EX: make movie adaptation. Movie was the added element
o Only infringement would be a copy of derivative work that takes the creative elements
added.
 Copy of original elements that were added in the derivative.
 Protected Original
o Permission for derivative work.
 EX: one person make comic book version of hobbit with permission. If another
person comes and makes one without seeing the first there is no infringement. Can
be infringement of the original. But, if make a copy of the original contributions of
the derivative work then would be infringement.
 What if the person that makes the copy of the derivative work never saw the
original protected work but saw the derivative work. Derivative owner would have
infringement claim against third comer (copier). Original owner bring can
infringement claim because third comer (the copier) has seen parts of the original
through the derivative work.
 Copying by derivation. Allow indirect copying to satisfy copying
requirementProtection for original elements.
o No Permission for derivative work
 Pickett v. Prince (same facts)
 Symbol - assume protected by copyright. And Prince is the owner of the
copyright.
 Pickett makes a guitar in the shape of the symbol
o Guitar is the derivative work based on the original symbol.
o But, Pickett never got permission. Showed it to Prince (the owner).
 Prince makes his own guitar that looks exactly like Pickett's guitar.
 Is there infringement against Pickett?
 Pickett is a copyright infringer by creating work without permission.
 Section 103 - copyright does not extend to use of prior material used
unlawfully. Therefore no protection.
 Therefore, copy of the derivative work is not infringement because the
derivative work does not have protection.
 Eden Toys (not accepted)
 Dicta - whether the unlawful use of the material pervades the entire
derivative work.
 Can imagine cases where does not and only the parts that are copied
infringe. Other original parts added can get protection where the copied
parts (unlawfully used parts) do not.
 Rejected in the case.
 Case if use any unlawful use then entire is tainted.
 Derivative Owner cannot sue the other people that make similar guitars. No
infringement. No protection.
 But, original owner can still enforce. Even if never saw the original Prince
symbol, looking at the copying of the derivative substantially like the
original owner's
  Only original owner has the rights to make derivative works. Can also restrict
derivative makers for continuing even though there is original contribution. Ability
to directly control derivatives.
 Copyright owner in the original is the only one that can use the derivative work. If derivative work
owner tries to use then will be infringing. If a copier of the derivative work, does not infringe the
derivative owner but most likely will infringe the original.

 Compilation
 Unprotected original
o Create a compilation that includes the original.
o Someone else can also make their own compilation.
 Not violate anyone's copyright. Not infringe original because it is not protected.
Also, not infringe the first compilation.
o Someone copies the first compilation but the rest of the things in the compilation are
different.
 No infringement. Original in public domain. Also, protection to the compilation only
extends to the original addition (selection). Not the actual poem
o Infringement would be copy of the original contribution (selection and arrangement).
 Easy - verbatim
 Could just for a large part copy the selection and arrangement. Not need to be
verbatim.
 Protected Original
o No permission to use in compilation (ct. treat compilation and derivative works differently)
 Ask if compilation has infringed copyright. Yes, because no permission.
 Verbatim copy of the compilation
 Protection for the compilation? Whatever left in the compilation that is not
infringing can still satisfy requirement for protection. There is valid copyright
for everything that does not infringe.
o Draw line around infringing material.
o Includes protection against the original owner.
 Original owner has infringement claim against compilation. But the
compilation has a claim against everyone for the compilation minus any
infringement even against the original owner.
 Someone else can also make their own compilation.

Ideas, Expressions, Methods, and Facts

 17 USC 102(b) - explicitly say cannot get protection
 Ideas - copyright for specific expression of ideas. But not to the general ideas expressed even if
novel or original
o EX: Newton can get copyright for book but not protection to the theories
o Courts determine on a case by case basis.
o Abstraction Test (nichol v. Universal pictures)
 Assume that was original to the creator but assume that themes were actually
copied.
 Look at relevant protected work thinking on endless level of abstraction
  One extreme - most detailed concrete terms - the play with every specific
details (Characters, twists in plot)
 Next - some characterization of the play but a little more abstract. (omit
some dialogue and some minor characters)
 Most abstract - play about complicated relationship between rival families.
 Draw a line at some level of abstraction.
 Not need to get to most abstract. Line pass somewhere in between
 Two plays shared a number of the same themes and the general plot, the
similarities tended to be general things, universal concepts, and stereotypical
characters. There was nothing unique to Nichols' play that was found in Universal's
movie.
o Scenes a Faire (Alexander v. Haley)
 Copyright does not extent to the incidents, character, or settings that are as a
practical matter indispensable or at least standard in the treatment of a given topic.
(stock)
 EX: all police shows are going to have the same stereotypical characters, but
those similar characters are no copyright violations.
 EX: shootout in a western
 Can be more concrete than just the idea. How indispensible to the genre.
 Allow shootout scene, but at some point the original scene will have enough
details that become specific expressions
 EX: Verbatim copy would be included.
 Methods and Procedures - no protection to utilitarian methods or procedures
o Policy - rule of balance, utilitarian method is covered by patent law
o Baker v. Selden
 Selden - Created a new system of book keeping.
 Published a book describing the system
 Baker - publish own book and describe Selden method.
 Include similar forms. Not identical.
 Difference between the method and expression of the method. Get protection with
the book but not for protection on the actual method enclosed in the book.
 Copyright doses not give an author the right to prevent others from using
the same method.
o Merger Doctrine
 When have a merger of utilitarian and expression. If there is only a few number of
ways of expression, no protection for the forms despite the fact that there was
expressive work
 Policy: if an idea can only be expressed in one way or a few ways, granting a
copyright on that expression would effectively lock up anybody from using
the idea.
 Only no protection for the subject matter that merges.
 If there is expression that is not part of the functionality, that would not
merge and would get copyright protection.
 EX: Sweepstakes competition
 To communicate must have a certain set of rules. Not have to be exactly the
same.
 When such a limited way of expression then is also merger.
  EX: Insurance contracts
 Have to phrase contract is a specific way
 Little way to phrase a little differently and keep the same gist.
 Facts
o Excluded from copyright protection. The specific expression may get protection.
o Facts expression (AA Hoehling v. Universal City Studios)
 Copyright protection for book about Hindenburg
 P write book as historical research and came up with theory. (Sabotage theory)
 Years later, a novel was written, but the second book there was a sabotage thing
going on. Way portrayed is very similar to the first book.
 CT
 Possible that was copied. But, everything was based on factual information.
Fair game and unprotectable by copyright law.
 The Court found that in works devoted to historical subjects, a second
author may make significant use of a prior work, so long as they do not
bodily appropriate the expression of the original.
 Important
 Demonstrate the difference idea/dichotomy and fact/expression dichotomy
o Facts not worry about levels of abstraction.
o If judge on abstraction test - likely that was expression because the
details were concrete.
o Even though concrete and detailed. As long as was factual does not
get copyright protection.
 Can copy the facts in the news report but cannot copy the exact text. But, can use
other language.
 When write a quote in a book. The quote is a fact that merges with the expression.
Still able to copy because of merger
 Policy: Allowing many people to research and produce accounts of historical events.
On the other hand, if a person can't get protection for all their hard work, that
would inhibit people from producing accounts.
o Copyright estoppel
 Circumstances where the created presents the information as factual. And someone
relies on it. Can use it.
 representation of fact, and
 reliance on the representation
 Implicit representation - historical novel (mostly factual?),
o What's a fact (CDN v. Kapes)
 Anything that can be considered factual
 Factual data - telephone numbers, News reports, Historical research
 Policy
 Facts are not original because they do not originate from the author. They
are just discoverers
 Basic judgment of cost against benefit
o The social cost of excluding others from using factual information
outweighs the incentive to find facts
 Room to determine what is a fact
 CDN - a catalog with prices of coins is protectable by copyright
 o Copyright in not just arrangement. Found protection in each specific
price.
o Price sounds like factual data. Each price is not a fact it is a thorough
process and a judgment to make up a price. Estimated market price.
 Thought process with the judgment. Not just the thought
process of finding a fact.
o Cannot distinguish from Hoehling - just different courts. No way to
reconcile.

Interlude: Computer Software

 Copyright protection for Computer Software
 3 different levels of expression
o Source Code
 Program written in high level computer language.
 Readable by humans especially with people with some training.
 Written by humans
o Object Code
 Language computer reads
 Series of 1 and 0
 Machine code, assembly
 Hard to understand virtually unreadable by humans.
 Level between code and output
 Functional elements and protocols
 EX: Word processor - commands in Word. Functional elements. Not the
actual computer code. It is the data structure.
o Program Output
 Expressive output
 POLICY
o Yes, protection to computer software.
o 17 USC 101 - indicate that Congress believe computer code is protected
 Creates various expression and immunities for some copying of computer code.
 Defenses for reproductions of computer code
 If need defenses, then computer code is protected
 Also have a definition of computer program
 Inadequacies of Copyright Law
o Duration of Copyright
 Technology moves so fast - by the time fall into public domain does no good.
o Scope
 Code - highly cumulative activity (programmers rely on knowledge from preexisting
code)
o Market for computer software
 Unique to that area. (Computer software is std. based)
 Computer software is oriented toward one standard. Dictated by the
hardware.
 EX: Use windows must write software to run on windows
 In favor of protection
 o 17 USC 101 - statutory say that computer program is a literary work. Not have to be literary
work in the ordinary sense.
o Computer program is like the video stored on the video tape.
 For music notes - protected the output music. Protect the sheet music from copying.
o Computer program - is mainly focused on the utilitarian
 Literal Copying of object code (Apple v. Franklin)
o D build computer and sold. Made to work exactly the same as Apple computer.
o Operating System
 Code - that is very fundamental. Operate between hardware and all other software.
o D just copied the Apple code. Duplicate substantial part of Apple in object code form.
o D argued
 Object code is not a literary work
 operating system is functional (Baker v. Seldon)
 There is merger and the function completely merges with the functions
o Court
 Object code is literary work and protectable by copyright law
 Operating system is protectable
 Functions are not protected by copyright. Just protect the text.
 Same as extending protection to book that describes how to do something.
 OS is a set of instructions which are expression rather than a process under
102(b) or a machine. Only the instructions are protected.
 Merger Question - computer code function and the text are one in the same
 Really a Method/Procedure v. Expression (not the idea/expression in baker)
 Only have merger in cases where achieving the relevant function can only
be achieved by using this code or a very similar piece of code.
o Evidence suggesting that there were other possible ways to write
the operating system, so there wasn't a single expression, and the
doctrine of merger didn't apply
 Trick - whether the function merges with the expression depends on the
way we define the function. Level of abstraction of the function. When it
gets more narrow then less ways to carry out.
 NOTE: Compatibility is not a function . It is a business or competitive
objective
 Non-Literal Copying of Code (Computer Assoc. v. Altai)
o D set out to create another Adapter code that does not use the old code. Select a few
programmers that had never seen the old code. Define the functionality and make sure they
are not exposed to infringing code. Produce a new Adapter code.
o No literal copying. Does not contain any of the old code. P makes an argument that there is
still substantial similarity on the non-literal level. (selecting similar organization, selection,
structure, characters etc)
o Court
 Computer levels have different levels of abstraction
 Highest - function, identified as the abstract function (word processor, tax
preparation software)
 Middle - subroutines, (one part takes input, one part does calculation, one
part output)
  Break down even further for sub subroutines. And as keep breaking down
will just end up with the specific code (most specific)
 Protection to computer programs extends to non-literal level.
 Computer code falls within literary works. Literal works protected beyond
literal level.
 If can escape infringement just by small amount of change. (minor changes
of the code). Then copyright protection would be very limited and have little
value.
o Scope of the protection – not only are underlying ideas of the work not part of owner’s
copyright, but that aspect of a work which must necessarily be used as an incident to
employing those ideas are also unprotected.
 Baker v. Seldon and 102(b) - deny protection to utilitarian functions.
 Whelan v. Jaslow (3rd circuit) – very broad
 Nonliteral infringement of code.
 Look at whether the code is essential to the function
o The function is efficient management of X (very abstract)
o No code that is essential to that function.
o Most abstract level possible
 Court not want to define so abstractly
 There are other functions. Each subroutine has its own function. Sub
subroutine has own function.
 3 part test (non-literal copying)
 Abstraction - different level of abstraction. At some point will no longer be
an expression and become idea. breaks up the program into different levels,
from very general to very specific
o Most concrete (code) and end with most abstract (most abstract
function - word processor)
o In between many levels of abstraction. Different levels of the
structure.
 At come point goes from being code to function.
o In increasing order of abstraction; these are: individual instructions,
groups of instructions organized into a "hierarchy of modules", the
functions of the lowest-level modules, the functions of the higher-
level modules, the "ultimate function" of the code
 Filtration - On most abstract level that still gets protection, some elements
will be denied protection. Necessary elements will not get protection (not
want people have control over these necessary elements. Do not get
protection:
o Elements dictated by efficiency – merger doctrine
 Design elements that are required for the software to
function to run efficiency. Baker v. Seldon (deny protection
for utilitarian/operation)
o Elements dictated by external factors - Scene Affair doctrine to
computer (deny protection to stock elements in genre)
 Requirements of the computer, compatibility requirements,
general design standards, customer demands, widely
accepted programming practices.
 o Public domain elements
 Comparison - compare original with infringer. Looks at the components of
the program which are not absolutely essential to fulfilling the abstract
function of the program to see if they are substantially similar.
 NOTE: sift out all elements of the allegedly infringed program which was ideas of
dictated by efficiency or external factors, or taken from the public domain in order
to find "a core of protectable expression." At that point the courts should focus on
whether there are substantial similarities between any elements within this core in
the two programs.

o In practice
 Other stages get shoved into the comparison stage. Strange to do abstraction and
filtration before know which elements toward infringement.
 Look at what are the elements that are similar between the two. Then ask the
filtration and abstraction question.
o Very different attitude as compared to apple court.
 Compatibility - Apple (not look at because was a business choice). Altai(need to take
compatibility is relevant and need to be filtered out.
o Softel v. Dragon Medical
 Application of Fiest(telephone directory) to computer software
 D wrote new computer software for a new computer in a new language.
 P claim that copied structural elements.
 Instruction menu
 D.Ct Apply Altai Case
 No infringement
 Found that the similarity should be filtered out and no protection
o Only 4 elements that were copied. And none of them protectable.
No infringement.
 2nd Circuit
 Look at selection and arrangement. Look at the whole. Provided that
selection and arrangement satisfy the requirements of copyright protection
 D.Ct should have analyzed the selection and arrangement of the
unprotectable elements after each element was individually deemed
unprotectable.
 Altai test should be applied to Selection and Arrangement
 Copying of functional elements and protocols (Lotus v. Borland)
o Spread sheet (menus), macros (auto do several commands)
o Borland wrote own program. Had an option to work in a mode that would be like Lotus.
o D.Ct - Copies of the menus and macros (compatibility)- infringement.
o 1st Circuit
 Only looking at macros. Menu hierarchy
 allowed to access Lotus macros that could be used.
 Menu hierarchy was not copyrightable because was method of operation
 The menu commands are simply the method by which the user controls and
operates the program. The Court noted that you can't copyright buttons on
a VCR that say 'play' and 'record', and they analogized that to Lotus' menus.
o Different approaches
  Functional elements and protocols (how the court did it)
 Or use Altai court (other courts)

Theoretical Perspective: Labor Desert Theory

 Extend copyright protection because author's simply have the rights to enjoy the fruits of their
creation
 No real developed theories - instinctive just deserts
 Philosophical theory
o Locke did not imagine that theory would apply to intellectual property
o Was meant for physical property
o People who invest labor and through that labor and appropriate resources held in common
deserve to enjoy rights to those with some limitations. These are just natural right and
government is in place to protect
 Locke theory
o State of nature - this is how humanity used to be.
 State of society before there is organized government. Before any positive laws.
(Not really a historical look). Theoretical
o Even in this state, as a moral matter people have certain rights that are natural rights
 No private property. All resources are held in common.
 Some people will exert labor on resources in the commons and convert the
resources. (chop down tree and make something useful)
 Once people exert some effort they acquire some right in the fruit of their labor.
 Laborer has natural property right in the outcome
 NOTE: Do not weigh cost and benefits
o It is right to give the rights only under certain conditions. Proviso
 Spoilage proviso - Should have property rights so long as do not just use the rights to
spoil.
 EX: get property right in picking apples. But lose the right if just let the
apples rot. Rights become immoral.
 Sufficiency proviso - property rights in the fruits of their labor is only justified if after
created everyone else is left with as good or as much in the common resources
 EX: get rights in apples only if there are enough apples for everyone else to
go and pick apples. Cannot pick the last apple.
 No harm principle - Behavior of people is justified as long as do not cause
harm to other people.
o Transition to Political society (with laws and government)
 Role of government is to recognize pre existing natural rights. To determine, settle,
and enforce natural rights.
o On the other hand can argue from utilitarian perspective
 Want people to create. And create incentive to create.
 Cost and benefits
o Apply to copyright - people invest intellectual labor (parallel to physical labor)
 Intellectual labor should have stronger, broader, more robust property rights as
compared to physical (traditional).
 Intellectual property - only input is intellectual labor. Entire value is
attributable to intellectual labor. Traditional - labor and resources.
  Spoiler proviso - No other resources are spoiled. No way intellectual work
can be wasted or spoiled
 Sufficiency proviso - less applicable to intellectual work. How run out of
ideas? How people worse off if cannot draw on work that was not there
before.
 Air pirates - work is the Disney characters (Mickey mouse etc - clean).
 Take the Disney characters and put them in bad situations. More
murky/dirty.
 People invest in the creation of the characters. Should get some rights.
Disney invest (money, and labor)
 Extent of rights - Not any worse off by not being able to create parodies.
How worse off is Mickey mouse has not yet existed.
 Sufficiency proviso - If give protection to exclude people from using mickey
mouse, is it true that others are left with as much and as good left in the
commons to use.
o Not clear why people have to draw on the Disney characters. And
not see how they would be worse off. Go create own characters.
o Base line - prior to creation of characters. Once the characters are
created they are protected.
 Can argue - analogous to addiction.
 Person add to the water supply some substance
that is beneficial to town. Give benefit to town. But,
the substance has an addictive character. And, if
after being exposed and are then denied they would
suffer.
 They would then be worse off because are addicted
to it. Worse off than even before the substance was
added.
 Some cases - intellectual works occupy such a
dominant place in society that denying access
people would be worse off.
 Example, JFK assassination film. So pervasive that if
deny access people would be worse off. Need the
film because audience is dominated and structured
by the film. Addiction situation. And worse off than
if the film had never existed.
o Impossible to speak on the area without
drawing on that intellectual resource.
 Parallel for Air Pirates?
 Is purpose was just to write a cool comic book -
then not hindered
 Purpose was to criticize and attack the effect of the
Disney characters.
o How do without drawing on characters?
Write article, but this would not be as
effective as the Air Pirates comic. Want
 emotional effect and not the intellectual
criticism
o Purpose was to Turn Disney universe on its
head. Turn over the "squeaky clean"
mentality.
 In order to speak clearly in that area may need to
use the material. Then worse off.
 Similar open questions exist
o What exactly is the labor that justifies copyright proteciton?
o Does it have to add value to society?
o Just creative labor?
o What does the commons mean?
o NOTE: different answers will get to different levels of protection.

Ownership and Authorship

 Distinction between property rights in an intellectual work and property rights in physical works that
embody the work.
o Copyright has a different layer of protection. Two are totally distinct from each other.
o Owner of the physical canl be different from intellectual owner
o Protection will be different. Physical - control, excluding others. Copyright - Section 106, list
of entitlements (reproduction, distributing, public display, public performance, derivative
works).
 Section 202
o Transferring rights in the physical object do not entail anything in other level of protection
(copyright).
 EX: painting, originally own both copyright and physical property right. If sell the
painting then transferred property right in physical object but not say anything
about the intellectual.
 If keep the painting and transfer the copyright, the transfer of the copyright does
not transfer the physical object rights.
 Transfer and division.
o Copyright as a whole could be transferred with no limitations.
o Transfer the whole or divide and transfer parts.
o EX: Write a novel and own entire copyright in the work.
 Can break down copyright. Assign public performing work. Assign publicly displaying
work. Assign make copies.
 Not even have to be along the lines of 106. Can be give right to copies in Texas and
then New York.
 Or give for certain periods of time. Now give one person and later another.
o Owner of any fragment can then break even smaller and assign to another.
 As long as assignment (Transfer of rights) then each person is the owner of the
fragment.
o Section 201(d) - broad and inclusive definition.
 Exclusive license - Considered an assignment and a transfer.
 Non-exclusive license. One person get a license but others can get the same. Not a
transfer.
  Significant when bringing lawsuit. Exclusive license then is an owner and can bring
suit. Licensee without exclusive, they are not owner and cannot sue even if infringe.
o NOTE: 204(a) – transfer of copyright ownership not valid unless instrument is in writing and
signed by the owner or authorized agent.
 Termination of Transfers
o Unique feature of copyright.
o Any transfer of rights (not matter exclusive or non exclusive license) subject to termination
after a certain period.
o 2 kinds of termination rights
 203 - termination proper
 Apply to transfers on or after 1/1/78
 Apply to any transfer of rights (no matter exclusive or non-exclusive)
 Only apply to transfer by author. If author transfer to someone else all the
rights and that person then assigns to 3rd party. The second party does not
have termination rights
 Termination rights do not apply to works made for hire
 Who can terminate
o Author - if alive
o Statute defines a hierarchy of people. Author cannot change.
 Widow
 Children
 Grandchildren
 Executor of estate
 Can exercise after 35 years. A 5 yr window will open up. Window of 35 - 40
years from date of assignment.
 May be effected notwithstanding any agreement to the contrary
o The right is not waiveable.
o Clear outright waiver. But, many ways to get same outcome to get
around waiveability.
 Transfer before 1/1/78 - concern with retroactive extension. Give author a chance
to enjoy extension.
 304(c) termination - beginning in 1976 the copyright term was extended
twice. Look at who gets to enjoy those extensions. Parties could not have
known about the extended protection. Give the authors a chance to enjoy
the extension period. Allow authors to terminate after the initial 56 years
and have entered the extra 20 yrs. Renegotiate.
o Pre - 1976 - up to 56 years
o 1976 - add 20 yrs – author get chance to reclaim the extended
renewal period
 304(d) termination - allow the author to terminate after 76 yrs.
o 1998 - add 20 yrs
o Justification
 Uncertainty of the value of copyright
 Hard to evaluate the value of an intellectual work and the value of the
copyright in that work at an early stage.
 Hard to predict future value and give rise to possibility that author assign
rights for a small amount and the work ends up becoming hugely popular.
  Publishing - buying the risk and the prospect. Thus, not enough to justify by
itself.
 Unequal bargaining power.
 Often the case that authors negotiate with publishers, then parties are at
unequal power.
 Publishers much more sophisticated and create skewed results in the
compensation.
 Turn out grossly unfair.
 Termination is the second bite of the apple. Take back rights and
renegotiate for a fair deal.
 Authorship & Ownership
o Author is the original owner (Section 201)
o Sole Authorship
 Sometimes hard to see who that sole author is.
 Lindsay v. The wrecked and Abandoned Vessel
 Concept and idea was his. Designed the whole film. Story board. Brief
photographer. Create lighting. Select the footage.
o High degree of control
o End result was duplication of original conceptions and visions
 Only thing did not do was actually film.
 What is legal argument made by the D?
o Person that filmed was the author. Lindsay did not actually film it.
o If it was a photograph he was not the one that actually create the
work. The photographers that did not work for him created it.
o Section 101 (not mentioned by court) - a work is created when it is
fixed in a copy or phonorecord for the first time.
 Lindsay did not fix the work.
 X is the author when: (Most times will not be an issue)
o Supply Original Conceptions and visions
o High level of control over the final product.
 EX: get other people to do the work. Not do the glass blowing or not even
really do the designing. But, claim the ownership.
o Make one by 1 original. And a few more reproductions.
o Unclear if he is the sole owner.
o Joint Authorship - Few people that jointly are considered authors of a work.
 Outcome:
 tenancy in common. Each of the joint authors/owners has a part of
ownership in the whole. Own percentage of the whole. Not just the part
contributed.
 In absence of agreement of division, joint owner will be divided in equal
parts. Does not matter the amount of contribution.
 Each co-owner can assign his share of ownership. Not need permission
 Exploit the work in any way. Give non-exclusive license to exploit the work.
Subject to accounting. Must give their percentage of the net profits (after
person compensated for labor).
 101 - work prepared by two or more authors with the intention that their
contributions be merged (on slide)
  There has to be independent contribution by each co-author. (1st req)
o Not a very high bar. Any contribution that is more than completely
negligible.
o Dispute whether the independent contribution would need to be
independently copyrightable. (Courts disagree)
 Satisfy with one person write melody other person write
chorus
 Not - One person actually write play other person supply big
picture vision.
 At the time of creation, there must be intention by all contributors that their
contributions will be combined into a unitary goal. (2 nd)
o EX: if write a poem as a stand alone poem. Later, someone comes
and adds a melody to the poem. No intention.
o EX: One person writes the lyrics one person writes the melody in
the same room. Obvious case.
o No physical proximity requirement
 One in Austin and one in SF. As long as know and intend for
them to mesh together.
o No temporal proximity requirement (No time req)
 Not have to be created at the same time
 EX: Write words intending them to be lyrics for a
song. Intend for a melody to be added. Look for
person for 3 yrs. Finally find someone to write the
melody later. Okay, intention for the part to merge
into a unitary work.
 Because of the time gap, no idea what the other
part would be. Not even know the identity of the
other party
o Stretch to include assignments
 EX: A writes lyrics. At the time he intends for it be matched
with a melody. Not write the melody. A assigns all his rights
in the lyrics to B. Finally, B finds C to write the melody.
 Some courts will still allow them to have a joint work with
joint authors. Joint owner B and C even though B is not an
author.
 All contributing party must be an "author"
 Aalmuhammed v. Lee
 Claim for joint ownership
 Aalmuhammed was hired as a consultant on Islam.
o Actually created two whole scenes. Wrote dialogue.
 Parties never agreed on the status of the parties.
 Want to be credited as a joint owner. Would be 50% because would be
equal to the other author.
o No prior explicit definition.
 Analysis
o Independent contribution - added 2 scenes to the movies. Could
even be independently copyrightable
 o All parties at the time of the contribution intended it to be part of
the unitary whole.
 Policy: if people that are called upon to help in creating creative works
without anyone anticipating that, then people will be scared to draw on
help from others.
o Do disservice to creative process. Hesitant bring in people to help.
 NOTE: Could have just made him sign a contract before bring him in.
 Create the 3rd element. Not enough with just independent contribution and
intent for both parties to unite.
o Also have to be an author. Not everyone that makes a contribution
has the status of author.
o Author
 Express Contract that someone is an author
 or
 Exercise of control - the relevant party is the "mater mind"
behind the project.
 No power of control, not an author.
 Object manifestations of mutual intent - how the parties
see the status of the parties
 Credits at the end of the film. How are they listed.
 If list as an author would see as an author.
 Give minor credit, would cut that they are not.
 Whether the audience appeal turns on both contributions
(contribution by joint contributions) and the share in the
success cannot be appraised.
 Cannot separate appeal from the addition.
 Sort of add a substantial contribution requirement.
o Apply to aalmuhammed
 Not an author because was not the mastermind
 Credit only name his as consultant
 Not mentioned - but Aalmuhammed contributed
something. Stretch to say that the scenes were what drew
the audience. (hard to show)
 Relatively small contribution. Cannot say the overall
success turned on his contributions.
o Work Made for Hire
 One person create work. And an entity that commission or employer that is in
control of the author
 The employer or commissioning entity is considered the author for all copyright.
 Results
 Section 201(b) - work made for hire the employer or other person for whom
the work was prepared is considered to be the author.
 2 different implication
o Assign ownership only as a default rule. If WFH and did not agree
then the author will be employer. Parties can agree otherwise. Can
sign a contract that the employer assigns the rights to the
employee.
 o When work is WFH, subject to different copyright. Legal rules that
apply to WFH is different from others.
 EX: Termination - do not apply to WFH. Explicitly defined.
 Publishers care a lot if there are termination rights.
 Employer is the "author" for all purposes.
 Moral rights not applicable to WFH. Defined that way
explicitly.
 Section 106 - economically exploit
 Moral Rights 106(a) - right of an author to prevent
revision, alteration, or distortion of her work,
regardless of who owns the work.
 Duration is different - 95 years form first publication or 120
yrs from creation whichever comes first.
 Normally is author life plus 70
 Section 105 - no copyright in works created by US
government.
 Any work which was created by US gov does not get
copyright protection
 Not say that they cannot hold copyright
 Can hold the right as an assignee.
 WFH by the US as the employer or commissioning
entity.
o No copyright protection
 Implications cannot really be changed. Can assign back to the creator but
implications cannot change. Will be different copyright.
o Cannot the other consequences of a work made for hire.
 2 implications
 Default rule of ownership.
o Relevant parties can change that arrangement contractually
 Creating certain features that will apply to the work. Different copyright that
applies to it.
 When is it a work made for hire. 2 possibilities.
 Work prepared by employee within scope of employment
o Employee Definition –(CCNV c. Reid)
 CCNV commission a work by Reid
 Some measure of control by CCNV over Reid
o Choose the materials to use
o Make suggestion about the design of the
sculpture
o Right to reject or accept the sculpture
 CCNV argue that want to look at control. Amount of
control exercised by the commissioning entity.
 Reid argue that should use the formal sense of
emloyee
 Reject both test as THE TEST.
 Look at common law agency test. Look at all relevant
factors. Even if not on the list
  Hiring party's right to control --> CCNV controls
 Skill required --> Reid is sculptor
 Sources of the tools --> Reid has own tools
 Location of the labor --> Reid uses own workshop
 Duration of the relationship --> 2 months
 Right to assign additional projects --> no right to
assign more work
 Control over hours of work --> no control
 Method of payment--> flat sum
 Right to hire assistants --> Reid has total discretion
 Business of hiring party --> CCNV is not a sculpture
business
 Employee benefits -- > no payroll of SS taxes
 Tax treatment --> no payroll of SS taxes
 Only one factor weight for CCNV. No employment.
 Not a work performed by an employee.
 Not a work made for hire. Reid is the author.
 S.Ct. says no WFH. Leave open that the work is a joint
ownership.
 Might give them a right in a share of the copyright
as joint owners.
 NOTICE: Doctrines often come together. Can apply
both joint owners or WFH doctrine to same fact
pattern. Could even add in sole authorship.
 NOTE: Nothing about the physical ownership. Can be
different entities. Does not mean the CCNV is not the owner
of the physical object. Reid would still need to return.
 Owner of copyright has a moral right under 106(a)
against physical owner. Limited circumstances.
Enjoin from destroying the work.
 EXAM - need to pursue employment prong - apply this test.
 To get to second prong must have a written
contract.
o Scope of Employment
 Restatement 2nd of Agency: Meet all 3
 Task is within the kind the person is employed to
perform
 Task occurs substantially within the authorized time
and space limits.
o Not include when not at work
 Task is actuated at least in part by a purpose to
serve the master
o Do it with a clear purpose not to serve the
master
o Secretly work on own work and not for the
master. Can get fired but the secret novel
still owned by author.
  Parties written agreement that it is work made for hire(specifically
commissioned). Also fit within 9 specially commissioned works by
independent contractors
o Contribution to a collective work
o Motion picture or audio visual work
o Translation
o Supplementary work
o Compilation
o Instructional text
o Test
o Answer to a test
o Atlas

Entitlements
 106 - broad set of entitlements
 107-122 - take back some
o Outright defense/exemption - Take cases under entitlement and define them as non-
infringement.
 EX: Fair use doctrine. Outright defense or exemption.
o Compulsory license - Not complete control by copyright owner.
 Given certain conditions, if the user of the work goes through a certain procedure
defined in the statute and pays owner certain royalties then the user is allowed to
use the work.
 Statute forces the owner to give a license for the price defined in the statute
 In between full protection and full exemption.
 Entitlements
o Reproduction
o Derivative works
o Distribution
o Public Performance
o Public Display
 Right of Reproduction (106(1))
o Exclusive right to reproduce work in copies
 Copies - tangible object in which the work is fixed (17 USC 101)
 Infringement - D must fix expression in tangible object. Look at whether D fixes the
work.
o 2 meanings
 Mechanical reproduction - photocopy text, CD burner to reproduce movie.
 D relies on the work directly/indirectly to produce a copy that is substantially
similar.
 Direct - Take copyrighted painting put in front and paint
 Indirect - go to museum and see a copyrighted painting. GO home and
based on memory paint substantially similar.
o Elements of infringing entitlements (2 elements). Apply to all entitlements.
 Copying - basically say copied from the original work.
 Fact question - whether D copy anything from P's work.
 o Not apply to independent creation. Not enough that enough that
they are similar or even identical. Must be due to copying from
original.
 Intention is irrelevant to copying. Strict liability.
 Arnstein v. Porter - set up the test. Framework for infringement analysis.
o Direct evidence of copying
 D can admit copying and defend on other grounds
o Indirect Evidence - give rise to reasonable inference
 Evidence of access - work potentially available to D, and
 Substantial similarities between the P's work and D's work
 Two scales work together
 More access need less similarity.
 Stronger the similarity need less amount of access
 Improper appropriation - degree of substantially similar. Independent element
 Quantity and quality of copying must reach a certain level that reaches
infringement.
 Copying alone is not enough to establish infringement.
 2 Requirements
o Some of the material copied is material that is protectable by
copyright. Not all aspects of a protected work are not protected.
Ideas, facts, utilitarian.
 Protect expression and not ideas
 Copy idea of super hero from Superman. Write own super
hero completely different. Only copy idea but did not copy
any of the expression. Details are very different from
Superman.
o Substantial similarity of expression
 Once know what was taken is protectable by copyright, find
substantial similarity
 Formula - know that there is copying. Need to see if the lay
person thinks they are substantially similar.
 Whether the ordinary lay hearer or reader of the
relevant target audience would say that the two are
substantially similar.
 Look as ordinary observer not an expert. And part
of the target audience (adult or 6 yr old)
 General assumption is that there is a trade off between
quantity and quality.
 Some cases the quantity establish substantial
similarity
o Copy everything except last paragraph
 Some cases the quality. Where quantity not large
o Copying was of such an important part of
the work that makes it unique. Then, would
be enough to establish.
o Copy a small detail. If not an important
detail, then no substantial similarity. But, if
 the small detail is a very high quality. What
makes the original distinctive or substantial
part but not that large. Enough that just
took that small quantity of high quality.
 Distribution of Copies
o Distribution right is completely independent of reproduction right
 If acquire unlawful copies and distribute will infringe
 Distribution of lawful copies does not infringe. Only distribution of unlawful copies.
(First sale doctrine) Section 109.
o Rationale: Ability to enforce. Easier to see who is distributing.
o First Sale Doctrine (Section 109)
 Bobbs-Merrill
 Publisher sold copies to dealers. Those copies were lawful.
 But, attached to book a notice that selling below a certain price would be
copyright infringement.
 S.Ct - this is not copyright infringement. No independent right for the
publisher to control the distribution of lawful copies. No power to dictate
price.
 Codified in - Section 109(a) - define specifically outline
o Only an exception to 106(3) - unlawful distribution claim. Not a
defense to any of the other rights.
 Not a defense to preparing derivative works. Or making
copies.
o Relevant person must be owner of copy or someone authorized by
owner of the copy
o Copy must be lawfully made under this title.
o Rationale: When it is a lawful copy, there is no free riding problem.
Owner already compensated for the copy. Problem copyright law is
trying to solve is not there.
 Would give the copyright owner to control secondary
markets. Market for used books.
 Exception to the doctrine - 109(b)
o When computer software or phonorecord (sound recording), such a
copy may not be rented, lending for purpose of commercial
advantage. (exception to exception)
o Limited exception to exception to exception
 Allowed to rent software with the computer
o Rationale: Much easier to copy computer software and
phonorecords. Will induce infringement or at least chances of
copying.
 Rental of these fields will decrease sales. Harder to regain
investment.
o NOTE: Movies are not included. Also not affect reselling.
 Hotaling v. Church of Jesus Christ
 Making available entitlement - What constitutes distribution to the public
that falls under 106(3).
 o Important for file sharing networks. Enough to put it on the network
for others to download.
 Copyrighted work was a collection of genealogical data. NO question of
copyrightability. P owned work and D was Mormon church.
 D bought a lawful copy and in 1991 made unlawful copies and distributed to
their libraries. Discovered by P.
 D destroys some of the unlawful copies and agreed not to make any more
unlawful copies.
 1995 - P discovered that an unlawful copy is made available in one of the
libraries of the Mormon church.
o Assume that was an old copy from 1991.
o Copy was held in the collection. Indexed in the catalog. Users got
access to the work. But, it was not checked out. No record of who
used it in the library.
 No evidence of actual use. How show distribution when no
actual proof of other people using.
 Not a phonorecord or copy of computer program.
o Complicated because reproduction entitlement had passed the
statute of limitations (3 yrs) from moment cause of action
accused( Copyright owner because aware)
 P then argue one of the other entitlements. Distribution of
copies because the library distributes unlawful copy to the
patrons of the library.
 Statute of limitations for distribution entitlement tolls as
long as the copy is available for distribution
 Court
o No requirement to show people actually have to use
o Making available entitlement
 Have the work
 Index the work in the library
 Make available to the patrons
 Equity approach. No need for actual distribution.
o Improper Copy – unable to be protected by first sale doctrine
o Not address the fact that hard to see library use as rental, lease, or
lending.
o Policy: Not want to reward library for not keeping record of who if
anyone is looking at materials
 Capitol Records v. Thomas (Digital media)
 Hard to establish actual distribution but easy to establish making available.
 Part of campaign by recording records to sue specific individual file sharers.
 No specific evidence that Thomas actually distributed the file.
o Only known time is an agent that downloaded the file for the
copyright holder.
o Court finds yes can violate copyright by distributing the material
back to the copyright holder
 Issue: Jury instruction.
 o Not limited to the download by the agent. Would not be a problem
if limited it to the download by the agent. General application of
making available idea.
o This will affect the amount of damages awarded
 If just the agent will get a certain amount
 If making available then probably get wider and higher
statutory damages.
 Possible Problems
o Section talks about actual distribution not about making available.
o Also not sure if fits within specific distribution of the statute.
 In this case, copy on A's computer, when B downloads it will
be available on B's computer. The original copy stays on A's
computer.
 Reject making available argument in file sharing cases.
o No right to make available - need actual distribution. Straight
statutory interpretation.
o No right to authorize distribution - reject the argument.
 In 106 - they have "right to do and to authorize the
following" Tried to make an argument that "to do" is the
actual distribution and "authorize" is to make available
o Circumstantial evidence may be enough to prove actual
dissemination.
 Not need direct evidence for actual distribution.
 Not say how much circumstantial evidence is enough for
actual distribution.
 The second difficulty is not addressed. No amount of direct
or circumstantial evidence would get over it.

o First Sale Issues

 Digital transfers
 How to transfer digital content without making an unlawful copy.
o Need somehow transfer and then delete it. But, even doing that is
making copies.
o Making that copy takes outside of first sale doctrine.

 Sell CD with the software. Do not like the first sale doctrine. Not want
second hand market to compete with.
 Contractual Limitations and preemption
 Contractual Limitations
o Avoid first sale doctrine - Create contractual obligations not to
engage in certain activities. agree not to resell the CD.
 Preemption
o Federal copyright preempts state law that tries to create something
equivalent to copyright.
o Plausible argument that the state would be trying to create
copyright like right using contractual agreement. Copyright minus
first sale. Attempt to use contract law (state) is preempted.
 Licensing - to try and avoid first sale doctrine.
 Copyright owner does not only rely on a contractual agreement. Try not to
transfer physical ownership and only license.
o Condition for first sale is that in order to enjoy they must be the
owner of the copy. With a license they are not the owner and just
allowed to use the software.
o Problem: Not clear that should allow copyright owners to avoid first
sale just by using magic words.
 Not enough to write that is a license. Need more.
 Look at the actual realities of the transaction to determine
whether a licensing transaction or a sale.
 Vernor v. Autodesk
o autodesk owner of software transfer copies of the software to
customers on CDs and attempts to make a licensing through a click
through agreement.
 Only get a license in certain ways and do not get ownership.
 Lay restrictions on how the CD can be used. Geographically,
transfer etc.
o Vernor got a few copies from the customers. Sell copies to others
on ebay.
 Ebay respond to Autodesk complaint
 Iteration back and forth
o Vernor tired of getting taken down and decides to sue. Want a
declaratory judgment that has a right to sell the CDs.
o Vernor Arguments
 Autodesk just calling it a license.
 But, there are restrictions.
 Whether there is permanent or indefinite possession of the
copy then no license. If not and have to give it back then
there is license
o Autodesk Arguments
 Want to look at the label
o Court
 Reject both.
 Not enough just to name it license
 Reject that the only test is the permanent
possession test.
 Multifactor test
 Give weight to the title. Must be called a licensing
deal.
 See whether the agreement significantly restricts
the transfer of the physical copy (restrictions on
transfer)
 Whether the license applies notable use
restrictions. (restrictions on use
o Not allowed to copy, reverse engineer, use
outside of western hemisphere etc.
 o Permanent/non-permanent is a factor
 Indefinite possession, but every
other factor points toward license.
 UMG v. Augusto
o UMG sends promotional CD which they own the copyright to
customers. Attach to the CD promotional use only and not for sale.
o Augusto got some of the promotional CDs and sells on ebay.
o Analysis - should be licensing deal according to Vernor
 Called a license
 Use restrictions - for personal use only
 Transfer restrictions - cannot transfer or sell
o Keep Vernor but makes a few distinctions
 Special statute (unordered merchandise) - ship merchandise
to people then they are to treat as a gift. Want to protect
consumers from being charged.
 Customers receive ownership as a gift.
 If is the turning factor then this is a unique case.
 No sufficient ownership owned by the copyright owner.
 No prior arrangement between the parties.
o Customers did not go to store to make a
purchase.
o Not clear why this is relevant
 Issues with contractual assent.
o Unclear that the customer actually assented
to the terms.
o Not require return of the CDs if do not
agree.
 UMG does not keep track of the copies.

 Derivative Works
o Definition Section 101
 Work that is based on or incorporates the original work but transforms it
substantially.
 Abridgments, making a movie, dramatization, fictionalization
o Reproduction right has overlapped with right to prepare derivative works.
 Most cases does not matter because the copyright owner has both entitlements.
 Some cases clearly reproduction. Duplication of music CD
 Some cases where so remote from the original. Take original and transform rapidly.
 In between. Sequel incorporate much of the original story line and characters.

o Policy: Derivative Work protection
 No substitution. Will not undercut the original in the main market for the original.
 Right to "internalize full social value of work."
 If there is additional value in a secondary market, the copyright owner
should get value in that market as well.Give more monetary incentive.
o EX: Need to invest $10M for making the movie. Tickets + video store
make $7.5M. If that was all the revenue then would not make the
 movie. However, there are secondary markets based on the movie
(action figures, comic books, toilet paper etc). Value in secondary
markets is an additional $7M. Secondary value does not come solely
from the secondary market and comes largely from the value of the
original work. Extend to secondary markets
 Reduce incentive to create derivative work. Impedes future creation and
innovation.
o More expensive to create derivative works.
o Licensing – But problem because often do not know the actual
value.
 Expensive. Find copyright owner and form contract etc. Not
costless. Depends on context.
 Licensing cost is a social cost. Money has been spent.
 Personality Interest - author puts part of his soul in the work. Special
personal connection between the author and the work.
o Should protect this by allowing the author to prevent mutilation of
the work.
o Opposite of free speech. Take preexisting meanings by other people
and change the direction. Clash between two interests.
o Harry Potter Lexicon Case
 Website encyclopedia for the Harry Potter universe.
 Want to publish as a book. Clash against Rowling who wanted to put out her own
encyclopedia.
 Rowling argue copyright infringement. Included quotations from the original.
 Reproduction
o Not exact copy
 Derivative Work
o Different purpose than the original work. Too unlike the original to
be a derivative work.
o Since so remote. Assume original made enough in more similar
markets.
 Analysis of court is bizzarre.
 Not a derivative work because was too different from the original. Needs to
be a certain degree of similarity.
 But it is a copy. Reproduction of original
 Usually think reproduction covers a certain area that would plausibly
considered a copy of the work. Derivative works generally encompass a
larger area.
o Verbatim Copy (exactly the same) -> Reproduction (including
verbatim copy, substantially similar to the original) -> Derivative
Works
 Derivative Work Analysis - Not every work is a derivative simply because it is
based upon preexisting work. Need to have a certain level of similarity.
(Derivative Work)
o Lexicon is so transformative that it is not longer representative of
the original work of authorship.
  Use of plot elements. The use of these are so different from
reading the original stories. Very condensed summaries that
are used in a different purpose.
 D created something completely different with a different
purpose. Not recasting the work in another medium
 Reproduction Analysis
o Copying and improper appropriation. (normal test)
 Took certain parts of the original book. (copying)
 Improper appropriate - must rise to certain degree.
 Substantial similarity from the point of the relevant
target audience.
 This case would not have substantial similarity.
Lexicon (encyclopedia) v. Harry potter (novel).
o Clear that under ordinary test that no improper appropriate. But,
say test not fit. Different formats.
 Quantitative Qualitative Test - ask whether the quantity and
quality rises to a particular level to reach infringement
 Quantity - substantial quantity pages taken. 450
pages out of 4,100. Paraphrases and direct
quotations
 Quality - creative expression of original
o Fictional facts are creative facts of the
original. High quality.
 How much, important, creative, part of creative
expression.
o Micro Star v. FormGen
 FormGen copyright owner of duke nukem. Part of the game includes a build editor
that allows users to create own levels/maps. Maps would be made by users and put
online.
 Microstar collected user created maps and put them on a CD and sold.
 FormGen complains that the output of the game from MAP files is a derivative work.
 Software components
o MAP files - what is created by users and given by Microstar. Map
written in code. Tell what is located where. Painting by numbers
what color to put with each number. Just a list of instructions on
how to print the picture.
o Source art library - import actual images/sounds.
 Microstar only disseminate MAP files.
 No derivative work.
 Rely on Galoob
o game genie, hardware add-on that would alter the information from
game cartridges to the consul. Get different version of the game.
Analogy of putting on different colored glasses.
 Test -
o A concrete or permanent form. Not say fixation and not apply
fixation test.
  Output does not exist anywhere else. No version in the
glasses. Just like looking through the glasses.
o Substantially incorporate protected material from the preexisting
work.
 MAP files are pretty much permanent or concrete form on the CD. Output
might be the same.
 MAP files substantially incorporate material from the original. Create a map
of how to get the content.
o Relationship between MAP file and output is the same as music
notes and music.
 Public Performance and Public Display
o Public Performance 106(4)
 Literary, musical, dramatic, choreographic, audiovisual works
 Sound recordings (via digital audio transmission)
o Public Display 106(5)
 Literary, musical, dramatic and choreographic works, pictorial, graphical, or
sculptural works
 Not everything is on the list. If not then no right. Nothing about architectural design.
No general public performance entitlement for music.
 No for profit requirement. Either direct or indirect. Can get complicated if sing
happy birthday at restaurant.
 Specific exemptions in 110 from general entitlement.
o Performance v. Display - If the action involves some movement or sound then performance.
If not then display.
 Matters because coverage of display entitlement given exemption the performance
entitlement is not.
 109(c) - apply only to display. Owner of a lawful copy may display that
object to the public who is present at that location.
o Not allowed to transmit a still over TV or where the public is
elsewhere. Must be physically present. Allowed to display at a
museum.
o No equivalent exemption for public performance. If own film not
allowed to show people in a theater.
o Definition Publicly - 4 alternatives. 2 performance, 2 transmission.
 Performance done in a place open to the public.
 Very broad. Does not matter if the public is there or not as long as at the
time it is open to the public. Maybe recite monologue.
 NOTE: if it is a song. There are specific exemptions if not commercial.
Narrow requirement for songs. 110(4) - musical performances.
 Performing where a substantial number of people are gathered beyond persons
outside of a normal circle of family and social acquaintances
 Transmission to a place defined in (1) - above two criteria then it is a public
transmission
 Transmit to the public.
 Set up TV station and enable anyone out there with the appropriate
equipment to receive.
 Transmission imply that go from one place to a different place
o Columbia Pictures v. Redd
 Offer customers private show rooms within the store. Choose video and enter
private show room and operator would put the cassette in to show the video.
 Copyright owners sued for copyright infringement.
 D was the lawful owner of the copies. No illegal reproduction. No fair sale
because apply only to distribution not to display.
 Open to public
 Anyone can come and select a movie to watch. When someone actually
purchases then limited to 4, private show room for four people.
 What matters is the video store. Show rooms are private.
o Size of public is irrelevant.
o Video store is open to the public.
 NOTE: case law very inconsistent.
 Transmit to the public
 'transmitted' the movie from the VCRs in the front of the store to the tvs in
the private booths, it met the "transmit or otherwise communicate"
definition in §101 for being a public performance of the work.
 NOTE: did not use first transmission clause. Would have been easy
 Transmit to the public because anyone in the public can come in order the
video store will transmit to them.
 HYPO: hotel that lets customers order videos
 Could look at purpose people are there.
o Issue with viewing at different times
 Radio station that sends the signal to the public.
 Does not matter if receive in the same place or different places
 At the same time or at different times
 Transmission is to the public - any member can go in and reserve the
showing room
o But, they will be receiving it at different times.
o Cartoon Network v. Csc Holdings
 Public performance of the DVR
 D provide DVR. Subscribers use the system to choose which programs to record and
watch at later times. D would then get the signals and sends the signals to the
remote DVR system.
 Primary buffer 0.1 sec and check if any viewer had requested it
 Secondary buffer 1.2 sec
 Hard drive store the show for each viewer. Store copy of the programs
wanted to watch.
 Fixation - focus on whether the buffer would violate the right of reproduction.
 Ruled that there was no infringement because no fixation (embodiment but
no duration - too short)
 Reproduction - Full program is reproduced on the hard drive.
 Yes reproduction but entity that is reproducing is the viewer and not the
cable provider.
 Analogy and use the photocopying machine. Person that is reproducing is
the copier and not the store
 Public Performance - Transmitting the signal from the HD to the consumers.
 o Transmission - program is the work being transmitted to the public.
 Not enough that transmission to the public of the same work. Under
the transmit clause we must examine the potential audience of a
give transmission by an alleged infringer to determine whether that
transmission to be public
 Must be one single transmission potentially received by
several members of the public.
 One work -> once copy -> received by multiple members of
the public.
o Looking at the court's language hard to see when
they are at different times.
o Maybe small time delay for waves to travel
 Look at video store case.
 Same tape different times. Was not one transmission that
could be viewed by different people.
 Court distinguishes the cases. Just have to be one copy that
potentially transmit different times. Not just the same
work has to be the same copy of the work.
 Then easy to see at different times.
o 3 possible argument - can use any of them
 As long as transmission of the same work. Not matter if there is
different copies
 Must be the same transmission that is potentially receivable. (what
the court states)
 Could be different transmissions but must be from the same copy of
the work. (what the court assumes when talking about video store
case)
o Under either definition there is no public transmission.
 Multiple copies stored on customers HD.
 Definitely was not the “same transmission”

Fair Use
 Defenses for infringement. (107-122)
 Even if it is otherwise an infringement, it is not infringement if it is fair use.
o Broad and open ended terms.
 Makes it flexible. Apply to many different cases (strength)
 Makes it hard to apply and predict (weakness)
 Section 107 - broadest and strongest exception to copyright protection/defense.
o Balance protection and freedom for people to use and exploit copyrighted works
o Broad open ended and flexible.
 Encompass new situations
 Vague and hard to apply and predict
o Specific Uses in the section are not strict categories.
 Not everything that calls within those categories are necessarily fair use.
 Some use might not fall within those categories and still be fair use.
 Examples in 107 but they are just illustrative.
  Something may be on the list and may not be fair use. Some things not
listed will be fair use.
o 4 factors -"shall include" Factors are not an exhaustive list. Courts can add more. Open
ended.
 Purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes
 Nature of the copyrighted work
 Amount and substantiality of the portion used in relation to the copyrighted work as
a whole
 Effect of the use upon the potential market for or value of the copyrighted work
o Apply Facts (Campbell - S.Ct.)
 Infringement of copyright in song "Pretty Woman"
 No question of infringement. Copying and improper appropriation.
 Fair use doctrine
 Purpose and character of the use
o To the extent that the use is commercial cut against fair use
o Transformative - when it is transformative point toward fair use.
Most important factor.
 Change original and give something new
 Affects many of the other factors in the analysis. Will
sometimes outweigh all of the other factors.
 Special place reserved for parodies. Considered highly
transformative. No absolute guarantee that all parodies are
fair us
 By definition is highly transformative
 Parody will need to use a large portion of the work.
Need spectator to invoke that image.
 Parody is particularly socially beneficial. As a
category. Not each specific case.
 Copyright owner is reluctant to license to parody.
 If transformative, then will be more social cost (lose benefit)
by impeding.
 Nature of the copyrighted work
 Amount and substantiality of the potion used in relation to the copyrighted
work as a whole
o Generally - more taken less likely fair use.
o Transformative nature of parody changes the internal analysis
 When highly transformative and parody. More leeway for
2nd user to take from the work.
 Might even be justified to take the heart (most distinctive
part)
 Parodies need to invoke the original in minds of
audience
 Even go beyond that. Up until secondary use begins
to become a substitute
o Cannot take so such an amount that would be a substitute. May
even be allowed to take the heart.
  Lyrics - not too much taken. Just what was necessary to
invoke the original.
 Tune - not clear that so much was needed to be taken.
Could start to become a substitution.
 Market Harm
o Hypothetical exercise. If determine the use by the D is fair use and
everyone can engage and the use becomes widespread what will
the market effect be.
o Parodies do not harm the marketability of the original work because
the two serve different market functions.
o Take into account secondary markets (any markets related with the
original work).
 If take to the extreme then will always favor the copyright
owner.
 Parodies are not a secondary market taken into account.
Not take into account the harm from critical bite resulting
from the parody.
o Why not take into account secondary markets for parodies?
 Bill Graham Archives - do not take into account any market
for highly transformative uses. Extension of Campbell.
o Sun Trust bank
 Work is "Gone With The Wind" Very commercially successful.
 D writes "The Wind Done Gone." Criticize "gone with the wind" view of slavery and
the south. Writes novel that reconstructs many parts of the same story from a
different perspective.
 Characters-
o Same characters with some minor changes
o Few new characters. New half sister to main female character. Half
black slave. Written as a diary.
 Plot - 1st half pretty much the same 2nd half continues the story and new
events happen
 Language - short passages reappear .
 Infringement
 Substantially similar for relevant target audience.
o D argue that no infringement because the meaning is changed.
o Court reject. As long as substantial copying.
 Assume copying and infringment under 106
 Fair Use
 Purpose and Character
o Commercial - Selling book.
 Could argue that main purpose is to spread knowledge.
 Not looking at main motivation. Instead, whether stand to
gain commercially.
o Broad definition of parody
 Any work that aims to criticize original work by
appropriating elements in creating a new artistic (as
opposed to scholarly or journalistic) work.
  Highly transformative - adds something new. Add
new meaning or message.
 Satire v. Parody
 When use the original to criticize the original
(Parody)
 When the original work is used to criticize
something else (Satire)
o Not get the same favorable treatment.
 Nature of the copyrighted work
o What extend the original work is highly expressive. Rather than
factual.
 Some minimal requirement of originality to get protection.
Low bar.
 If only minimally creative, that would cut in favor of fair use
and against strong protection.
 Highly creative for GWTW - but the secondary use is highly
transformative.
 Give low weight to this factor in parodies and highly
transformative uses
 Amount and substantiality. Quality and Quantity
o As a parody need to take as much as needed to invoke the original
and then some.
 Effect on the market
o Take into account both effect on primary and effect on secondary
markets. Assume not take into affect on parody markets.
o At least in preliminary injunction state the burden is on the P (claim
not fair use) and that there is harmful market effect. Just under the
4th factor and preliminary injunction.
 Element of the infringement analysis.
o Normally – Fair use normally affirmative D. D carry burden to
establish.
 Reverse engineering of computer code for achieving interoperability (Sega v. Accolade)
 Sega (P) makes game console. Control manufacture of games for the console. Not disclose
technical information to allow it to interact with the console. Not release the protocols to
control the games
 License information to certain group of developers. Assume Sega is the developer
 Accolade (D) want to convert games to Sega console. But, did not license the information.
 Decided to reverse engineer the existing games to extract the relevant information.
 Got legit game cartridge and inserted decompiler. Read all the information
exchange between the cartridge and the console.
o Take the machine language into higher language computer language.
 Made print out of the computer software and reproduce code on computer to run
tests.
 Wrote a development manual for developers that want to program games.
o Nothing specific parts of the game. Not parts protectable by copyright law.
Just how game must be structured to communicate with console
  Develop own games. Not copy any part of the protectable code of Sega. Use
technical information in manual to write own games for console.
o Intermediate copying. Copying is only an intermediate step. Final version
not use copyrighted subject matter.
 Infringement - Intermediate copying
 Yes, infringement.
 Fair Use
 Recompilation is fair use if it provides the only means of access to unprotected
elements of the code that the copier has a legitimate reason for accessing.
o Was technological idea. Looking at functional elements and no protection.
 Purpose and character of the work
o Commercial - Yes, commercial use because use to make competing games.
But, the copied part itself is not part of the commercial product.
 Copying is only intermediary. Final product copying is no longer
involved.
 Accolade ultimate intended to make money selling video games, the
direct purpose in copying Sega's code was simply to study the
functional requirements of the console's compatibility.
o Public benefits (interest) - use by Accolade is highly socially beneficial
 Competition that does not involve copying.
 Completely independently created game. Competition is not based
on copying.
 Interoperability is good. Work on multiple consoles.
o Not talk about the transformative nature of the work.
 Decided in 1992. Campbell was decided in 1994.
 Hypothetically: Transformative
 Change of content
o Decompiler is not transformative. It is exactly the
same
o Need to change the content or the meaning. To add
something.
o Content is not changed.
 Change of function (more controversial)
o Transformative is that in the hand of the D serves a
different and distinct function.
o Rejected by some courts.
o More and more central.
o 9th circuit accept - thumb nail size vs original.
 Facilitate search v. See in detail.
o Google books - allow people to search
 Search function allow people to search.
Claim it is transformative in function.
 Content on the servers is not
transformative .
 Nature of copyrighted work
o Original Creative or factual
 o Accolade copy entire computer program. Entire computer program is
creative, but copy the entire work only to access the functional aspects not
protected by copyright law.
 Creative expressive work but use of creative work is only a detour to
access the functional.
 Amount and Substantiality
o Cut against. Use the Entire work
o No other way could have learned about the functionality of the console
without copying as much as they did copy. While they did copy the entire
code, that didn't mean much because the final product (the video games)
did not contain any infringing material.
 Effect on the Market
o Could be possible because Accolade's games compete against Sega games.
o Draw line which market effect to take into account.
 Harmful effect is from legitimate competition from completely
independent created games.
 Court like the competition.
o Ignore effect for licensing. Want people to enter market without copying
game and increasing the competition.
 Overview
o Purpose and character of the use
 Commercial character disfavored
 Whether D stands to gain financially
 Less applicable to transformative uses
 Transformative character favored
 Transformation of content/transformation of function
 Special protection to parodies
 Social value for transformative character
 Invoking original is essential for parody
 Less chance of licensing
 Public benefits of the use
o Nature of the work
 More protection to unpublished works
 Less protection to factual work as opposed to creative fiction
o Amount and substantiality
 Quality of part taken may outweigh the quantity
 Parodies may need o take even the heart of the original work.
 Subject to transformative uses
o Effects on the market
 Potential effect of the challenged use if it become widespread
 Market
 Include harm to secondary markets of derivative works except for parodies
 Traditional, reasonable, or likely to be developed markets
 Only harm resulting from substitution not from effect of parody or criticism
 No presumption arising from commercial use when not a verbatim reproduction.

 Shepherd Fairley Case

 o Author created stylized poster of Obama.
o Ended up creating T-shirts etc.
o Based poster on news photograph based on picture from associated press.

Digital Copyright
 Copyright as applied to digital technology.
 Comparison with analog technology
o Digital is a particular is way to store and representing information.
 Numeric Based - use discrete units separate from each other with a numeric
value.
 Always a final level.
 To turn into discrete - would need to take analog and impose a grid.
Then use either 1 or 0.
 Quantum based
 Cheaper to great high quality digital copies.
 Easy and relatively easy.
 Only series of numbers that is being copied
 Easier to manipulate
 Digital is the information that computers understand. Very powerful.
 Encryption
 Processed by computers. Strong skins of encryption
 Transmission
 More and better quality. Make information more dense.
 Quality and quantity
 Technologies that are included
 Digitization - ways of converting analog information into digital
information
 Scan a book - analog into digital form
 Processing speed and storage capacity
 Machines that are stronger and faster.
 Compression standards
 More information faster.
 Network : Internet (global network) and program on internet. P2P
sharing.
 Transfer and peripheral tech
 Burners
 Use digital information even though not connected to the
network itself.
 Less important because the distinction between computers and
these devices is less.
o Analog
 Non-numeric -
 Picture
 Sound
 Continuum - no discrete separable unit
 Much harder and expensive to create a quality reproduction.
  Cassette recorder.
 Why care?
o Danger
 Easier to make copies and easier to distribute
 Good quality to good substitute
 Search of the information that is desired
 Harder to enforce copyright laws. Problem that copyright is meant to solve is
made worse.
 Internet is big photocopy machine
 More problems from the copying.
 Make harder to recoup investment. Even more danger.
o Conceptual problem
 Doctrines created without digital in mind. Unclear how they apply.
o Effect on enforceability of the law
 Reduction in effectiveness and enforceability.
 Magnitude of copying.
 Copying is decentralized. Endless number of users.
 Traceability of the copying. Relative anonymity.
 Sue individual users. Not very profitable.
 Personal computers with a global network that no one has control over.
 Global network that connects instantaneously. Jurisdiction issues.
o Positives
 Many new digital outlets to recoup investment. New markets
 Broader access. More and better quality. Quality and quantity.
 Do much more with information. Interact with information in different ways.
 Video, Sound, Images. Manipulate information
 Blur clear distinction between Creators of information and passive
consumers.
 Democratic speech advancement
 Adjustments to digital age
o Adjust current framework of copyright law
 Amend statutes or make different interpretations
o Regulation of intermediaries
 Pressure to find gatekeepers (also apply to tech). Find places to enforce law on
 Do in themselves infringe copyright, but that stand in position of control over
end users that might be infringers
 Files sharing. Allow others to share files of copyrighted works
 Section 512 DMCA - liability of ISPs. Provide internet services.
 Routing services or hosting services
o Regulation of technology
 Direct attempt regulate how tech is designed and which is available
 AHRA - Audio Recorders Act
 Regulate the kind of digital recording technology that is
available to people. Limit copying capability. Instead of regulating people
and intermediaries. Direct regulation of technology. Attempt to shape tech
to achieve outcomes
 DMCA - Sec 1201
  Anti-circumvention. Legal protection to copyright owner that
tries to protect information through technology. Outlaw certain tech that
allows people to circumvent protections.
 
 
 
 Adjustments to deal with New technology (not dealing with)
 Regulation of intermediaries
o Entities that are not themselves copyright infringers. But occupy some type of control.
Gatekeepers
o 3rd party liability - infringement liability on parties that did not themselves infringe
 Contributory liability - enterprise liability. Taking part in a general activity that is
infringing even if the part of the entity itself is not infringing
 Direct infringement - somebody has to be a direct infringer. Not the
entity trying to impose secondary liability. Direct liability by engaging in activity
covered by entitlements
 Knowledge of direct infringing activity by the 3rd party.
 Inducing, causing, or materially contributing to infringement.
 Vicarious liability - respondeat superior. Supervising infringer
 Direct Infringement - somebody has to be a direct infringer. Not the
entity trying to impose secondary liability.
 Right and ability to supervise (control the activity)
 Direct financial interest in the infringement
 NOTE: Does not matter if does not know of the infringement
o Dual Use technology - technology that can be used for different purposes. Some
purposes may be legitimate and some may be infringing.
o Sony v. Universal City
 VCR
 Claim that will interfere with movie industry business model
 VCR will divert money by allowing VCR owners to take the programming
and skip commercials.
 Does Sony simply by manufacturing and selling infringe?
 No, not doing anything that falls within exclusive entitlements.
 P argue some type of 3rd party liability
 Not clear which kind of 3rd party liability
 Rely on Contributory Liability for the infringement of others.
 Direct Infringement - by some of the VCR users
 Knowledge of the direct infringing activity
 Knowledge of the possibility of infringement. No
concrete knowledge of specific infringement by anyone. Constructive
knowledge
 Sony could assume that some uses of VCR are not
infringing. Only some uses are infringing.
 Inducing, causing, or materially contributing to infringement
 Materially contributed. Supply the VCR. Without the
VCR people cannot infringe.
 Balance interests
  Effective protection to copyright owners.
 Development of technology. Technological advancement that has
beneficial uses.
 If anything that could infringe is not allowed then would put
fate of technological innovation in hand of copyright owners.
 Sale of copying equipment does not constitute contributory infringement if the
product is capable of substantial non-infringing uses (analogy to staple article of
commerce doctrine in patent law)
 Only when incapable of non-infringing use will there be contributory
infringement
 Weigh in favor of technology.
 Only says capable of. Potential not current uses
 Substantial non-infringing uses - not say that must outweigh
infringing uses.
 Different uses by end user. VCR capable of substantial non-infringing
uses. 2 categories non-infringing
 Permissive copying - some copyright owners did not mind
viewers recording programs. No infringement.
 Un-permissive copying - some of that recording despite
presumptively infringing would be fair use. Not say all non-commercial
recording is fair use
 Time-shifting is a fair use and hence a substantial non-
infringing use of the VCR
 Time shifting - program VCR to record show and
watch it once. Not building an archive.
 NOTE: Sony only applies to contributory liability and not vicarious liability.
o A&M v. Napster
 Napster still had a central index and central server
 Napster had software. Individuals would have songs on computer. Whenever
the computer was running napster application then would keep index on which files
would be available on the individual computers.
 User would search in key term and computer would send search to Napster and
send back results.
 Then the two computers would communicate and transfer file. No file is ever
stored on Napster file.
 Direct Infringing - No, do not host any files. No derivative works etc.
 Making available - would have to really stretch. In this case did not have
an actual copy.
 Vicarious Liability
 Direct Infringement - Yes. People were downloading songs that were
copyrighted.
 Reproduction. Distribution.
 Right and ability to supervise - could have controlled severs.
 Right - formal legal right. Napster has right to do whatever they
want. User agreement. Can block certain content
 Ability - control the central index. Can block certain stuff. Make
certain stuff unavailable. Block accounts of repeat infringers
  Direct financial interest
 More users would have direct financial interest
 Infringing activity attracts users. Companies more willing to pay
for advertisement.
 Napster is doing it for money. Business model is based on
maximizing number of users. (Ads, collecting info on users and monetizing)
 More attractive content the more users can attract.
 Was direct enough.
 Regulation of Technology
o Attempt to regulate design or architecture to affect people' s ability to infringe
 
 
 
 Napster
o Vicarious Liability
 Direct Infringement
 Right and ability to supervise
 Direct financial interest - business model might not be known but know number
of people is leveraged against profit. Content on Napster will help draw people in.
 NOTE: No knowledge requirement. Sony does not apply to vicarious liability
(capable of non-infringing uses) .
o Contributory liability
 Knowledge - both constructive and actual knowledge
 Material contribution - like a flea market put people together.
 Not really distinguish the different categories. Supply facility and
environment.
 NOTE: Unlike time-shifting not fair use.
 Non-commercial - not fair use
 Sampling - not fair use
 Space Shifting - not fair use
 Permissive Use -> not challenged.
 Could be files in the public domain
 Sony - apply to constructive knowledge for contributory knowledge. In this case
there was actual knowledge.
 NOTE: Capable of significant noninfringing use not limited to current
actual uses.
 
 Grokster
o Kazaa and Morpheus
o Video files
o Kazaa - fast track (2nd generation)
 No central component on server. Had computers as super nodes (number of
computers connected to network - not owned or managed by Kazaa). Super node
function as a local index with information with people in immediate network. Mini-
indexes.
  Files are still residing on the computers. Now when a search is entered it is sent
to a super node. Super node will look at local computer and sent search to other super
nodes.
 Results returned to user.
 No main server maintained by Kazaa.
o Morpheus - completely decentralized
 Computers connected to internet only.
 Search will send search to few other computers and those will keep sending it.
Cascade down the network.
 How does one computer know something about the other computers
 Go to websites not maintained by D and find IP addresses. Not
dependent on service provided by D.
 D just supplies software.
o Decided by 9th circuit (Napster)
 Vicarious Liability
 Direct Infringement
 Right and ability to supervise - not same in Napster. No central
computers managed by D.
 Might have been able to design versions of the software to
some sort of filtering mechanism.
 Could even send around update patches that incorporate
filtering
 BUT, not enough control. No gate keeping point .
 Contributory Liability
 Knowledge - distinguish from Napster. Having concrete specific
knowledge is only relevant when there is an ability to do something about the
infringement.
 Specific knowledge only when there is on going contribution to
infringement. The software updates do not matter.
 So if Sony had known about infringement would not matter.
 Apply sony - only constructive knowledge. There are non-
infringing uses.
 Materially contribute
o S.Ct.
 P made 2 arguments
 Get rid of Sony. Limit application to pre-digital age.
 Apply Sony, but apply and explain "capable of substantial non-infringing
uses"
 90% or more of uses was infringing. 10% was non-infringing.
Want to say 10% was not substantial non-infringing uses.
 Shift from actual knowledge
 Inducement - intention. Intending that people will use the technology or system
in an infringing way.