Copyright Law William Fisher version 2015.1.25
  III. Entitlements
    Rights
      Economic Rights
        US Statutory Basis
          17 USC 106
            Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
            (1) to reproduce the copyrighted work in copies or phonorecords;
            (2) to prepare derivative works based upon the copyrighted work;
            (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
            (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
            (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
            (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
        Reproduction
          Plaintiff must show:
            (1) Copying
              "copying" includes:
                mechanical reproduction
                having the copyrighted work in mind when creating a substantially similar embodiment
                  includes subconscious copying
                replicating the work in a different medium
              ways of proving "copying"
                (a) Direct Evidence
                  admission
                  testimony by witnesses
                (b) Access + Similarity
                  "probative similarity"
                (c) Striking Similarity
                (d) Common Errors
                  inadvertent
                  deliberate
            (2) What D created
is a "copy"
              17 USC 101
                “Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.
                “Phonorecords” are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “phonorecords” includes the material object in which the sounds are first fixed.
              requirements
                (a) tangible
                (b) fixed
                  Cablevision (CA2 2008)
                (c) intelligible
            (3) Improper
Appropriation
              (a) Comprehensive Copying
              (b) Fragmented Literal Similarity
                The portion copied consists of protected "expression," not facts or ideas
                The portion copies must be a "substantial" part of the plaintiff's work
                  assessed both quantitatively and qualitatively
                  Iowa State (CA2 1980)
                  Larrikin (Australia 2010)
                  The portion copied must be more than "de minimis"
                    Davis (CA2 2001)
                      "The de minimis doctrine is rarely discussed in copyright opinions because suits are rarely brought over trivial instances of copying. Nonetheless, it is an important aspect of the law of copyright. Trivial copying is a significant part of modern life. Most honest citizens in the modern world frequently engage, without hesitation, in trivial copying that, but for the de minimis doctrine, would technically constitute a violation of law. We do not hesitate to make a photocopy of a letter from a friend to show to another friend, or of a favorite cartoon to post on the refrigerator. Parents in Central Park photograph their children perched on Jose de Creeft's Alice in Wonderland sculpture. We record television programs aired while we are out, so as to watch them at a more convenient hour. Waiters at a restaurant sing "Happy Birthday" at a patron's table. When we do such things, it is not that we are breaking the law but unlikely to be sued given the high cost of litigation. Because of the de minimis doctrine, in trivial instances of copying, we are in fact not breaking the law. If a copyright owner were to sue the makers of trivial copies, judgment would be for the defendants. The case would be dismissed because trivial copying is not an infringement."
                    special rules for sound recordings
                      17 USC 114(b)
                        The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 is limited to the right to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording. The exclusive right of the owner of copyright in a sound recording under clause (2) of section 106 is limited to the right to prepare a derivative work in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality. The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording….
                      Bridgeport Music (CA6 2005)
                      Metall auf Metall (Germany 2008)
              (c) Comprehensive Nonliteral Similarity ("Substantial Similarity" test)
                The amount that the defendant may have added to the plaintiff's work is irrelevant
                  Sheldon (CA2 1936): "no plagiarist can excuse the wrong by showing how much of his work he did not pirate."
                Methods for separating protected and unprotected material
                  (i) totality analysis
                  (ii) "more discerning"
ordinary observer
                    Boisson (2001)
                      [In the Folio Impressions case,] part of the plaintiff's fabric was not original and therefore not protectible. We articulated the need for an ordinary observer to be "more discerning" in such circumstances.
                      "The ordinary observer would compare the finished product that the fabric designs were intended to grace (women's dresses), and would be inclined to view the entire dress -- consisting of protectible and unprotectible elements -- as one whole. Here, since only some of the design enjoys copyright protection, the observer's inspection must be more discerning."
                      Shortly after Folio Impressions was decided, we reiterated that a "more refined analysis" is required where a plaintiff's work is not "wholly original," but rather incorporates elements from the public domain. In these instances, "what must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation." In contrast, where the plaintiff's work contains no material imported from the public domain, the "more discerning" test is unnecessary….
                      In applying this test, a court is not to dissect the works at issue into separate components and compare only the copyrightable elements. To do so would be to take the "more discerning" test to an extreme, which would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors and symbols. This outcome -- affording no copyright protection to an original compilation of unprotectible elements -- would be contrary to the Supreme Court's holding in Feist Publications.
                  (iii) filtration
                    Nichols (1930)
                    Kroft (1977)
                    Altai (1992)
                Formulations
                  "same aesthetic appeal"
                    Peter Pan Fabrics (1960)
                    Boisson (CA2 2001): “Generally, an allegedly infringing work is considered substantially similar to a copyrighted work if 'the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.'"
                    Mannion (SDNY 2005)
                  apparent appropriation
                    Ideal Toy Corp. (CA2 1966): "whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work"
                    Steinberg (SDNY1987)
                    Rogers (CA2 1992)
                    variation: "wrongful appropriation"
                      Arnstein
                  "total concept and feel"
                    Kroft (1977)
                    Kisch (SDNY 1987)
                  extrinsic/intrinsic test (CA9)
                    Kroft (1977)
                      extrinsic = "similarity of ideas"
                      intrinsic = "similarity in expression"
                    Cavalier (2002)
                      extrinsic = "objective comparison of specific expressive elements"
                      intrinsic = "subjective comparison"/ "total concept and feel"
                    Swirsky (2004)
                      extrinsic = "whether two works share a similarity of ideas and expression as measured by external, objective criteria"
                      intrinsic = "total concept and feel" to an "ordinary, reasonable person"
          Exceptions
            "Essential step"
              17 U.S.C. § 117(a)(1)
                Notwithstanding the provisions of section 106, it is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided:
                (1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, or
                (2) that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.
              Autodesk (CA9 2010)
            "Cover License"
              17 U.S.C. § 115
                (a)(1) When phonorecords of a nondramatic musical work have been distributed to the public in the United States under the authority of the copyright owner, any other person, including those who make phonorecords or digital phonorecord deliveries, may, by complying with the provisions of this section, obtain a compulsory license to make and distribute phonorecords of the work. A person may obtain a compulsory license only if his or her primary purpose in making phonorecords is to distribute them to the public for private use, including by means of a digital phonorecord delivery. A person may not obtain a compulsory license for use of the work in the making of phonorecords duplicating a sound recording fixed by another, unless:
                  (i) such sound recording was fixed lawfully; and
                  (ii) the making of the phonorecords was authorized by the owner of copyright in the sound recording or, if the sound recording was fixed before February 15, 1972, by any person who fixed the sound recording pursuant to an express license from the owner of the copyright in the musical work or pursuant to a valid compulsory license for use of such work in a sound recording.
                (a)(2) A compulsory license includes the privilege of making a musical arrangement of the work to the extent necessary to conform it to the style or manner of interpretation of the performance involved, but the arrangement shall not change the basic melody or fundamental character of the work, and shall not be subject to protection as a derivative work under this title, except with the express consent of the copyright owner.
                (c)(2) Except as provided by clause (1), the royalty under a compulsory license shall be payable for every phonorecord made and distributed in accordance with the license. For this purpose, and other than as provided in paragraph (3), a phonorecord is considered “distributed” if the person exercising the compulsory license has voluntarily and permanently parted with its possession. With respect to each work embodied in the phonorecord, the royalty shall be either two and three-fourths cents, or one-half of one cent per minute of playing time or fraction thereof, whichever amount is larger.
              for the more complex procedures for determining the compulsory license fees for digital phono record deliveries, see sections (c)(3) and (d)
        Modification
          Statutory provisions
            17 USC 106(2)
              Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:...
              (2) to prepare derivative works based upon the copyrighted work...
            17 USC 101
              A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.
            17 USC 110(11)
              Notwithstanding the provisions of section 106, the following are not infringements of copyright:... (11) the making imperceptible, by or at the direction of a member of a private household, of limited portions of audio or video content of a motion picture, during a performance in or transmitted to that household for private home viewing, from an authorized copy of the motion picture, or the creation or provision of a computer program or other technology that enables such making imperceptible and that is designed and marketed to be used, at the direction of a member of a private household, for such making imperceptible, if no fixed copy of the altered version of the motion picture is created by such computer program or other technology.
            17 USC 115
              (a) Availability and scope of compulsory license.
(1) When phonorecords of a nondramatic musical work have been distributed to the public in the United States under the authority of the copyright owner, any other person, including those who make phonorecords or digital phonorecord deliveries, may, by complying with the provisions of this section, obtain a compulsory license to make and distribute phonorecords of the work. A person may obtain a compulsory license only if his or her primary purpose in making phonorecords is to distribute them to the public for private use, including by means of a digital phonorecord delivery. A person may not obtain a compulsory license for use of the work in the making of phonorecords duplicating a sound recording fixed by another, unless: (i) such sound recording was fixed lawfully; and (ii) the making of the phonorecords was authorized by the owner of copyright in the sound recording or, if the sound recording was fixed before February 15, 1972, by any person who fixed the sound recording pursuant to an express license from the owner of the copyright in the musical work or pursuant to a valid compulsory license for use of such work in a sound recording.
              (2) A compulsory license includes the privilege of making a musical arrangement of the work to the extent necessary to conform it to the style or manner of interpretation of the performance involved, but the arrangement shall not change the basic melody or fundamental character of the work, and shall not be subject to protection as a derivative work under this title, except with the express consent of the copyright owner.
          (rare) circumstances in which difference in the scope of 106(1) and 106(2) matters
            alteration of a lawfully obtained copy of a copyrighted work
              framing
                Mirage Editions (CA9 1988)
                Munoz (CA9 1994)
                Lee (CA7 1997)
              expurgation
                Cleanflicks
                Clearplay
                  but see 110(11)
            absence of fixation?
              House Report
                "[P]reparation of a derivative work, such as a ballet, pantomime, or improvised performance, may be an infringement even though nothing is ever fixed in tangible form."
              Galoob Toys (CA9 1992)
              Micro Star (CA9 1998)
            statutory provisions that treat derivative works more favorably than reproductions
              203 & 304 termination rights
              104A(d)(3)
                (A) In the case of a derivative work that is based upon a restored work and is created—
                  (i) before the date of the enactment of the Uruguay Round Agreements Act, if the source country of the restored work is an eligible country on such date, or
                  (ii) before the date on which the source country of the restored work becomes an eligible country, if that country is not an eligible country on such date of enactment,
                a reliance party may continue to exploit that derivative work for the duration of the restored copyright if the reliance party pays to the owner of the restored copyright reasonable compensation for conduct which would be subject to a remedy for infringement but for the provisions of this paragraph.
                (B) In the absence of an agreement between the parties, the amount of such compensation shall be determined by an action in United States district court, and shall reflect any harm to the actual or potential market for or value of the restored work from the reliance party’s continued exploitation of the work, as well as compensation for the relative contributions of expression of the author of the restored work and the reliance party to the derivative work.
                Dam Things of Denmark (CA3 2002)
          Penalty
            Person who unlawfully makes a derivative work gets no copyright protection in it -- at least so long as the infringing material "pervades" the derivative work
              17 USC 103(a)
                The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.
              Stallone
              Pickett (CA7 2000)
        Distribution
          statutory provisions
            106(3)
              Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:… (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending
            109
              (a) Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.
              Exceptions
                (b)(1)(A) Notwithstanding the provisions of subsection (a), unless authorized by the owners of copyright in the sound recording or the owner of copyright in a computer program (including any tape, disk, or other medium embodying such program), and in the case of a sound recording in the musical works embodied therein, neither the owner of a particular phonorecord nor any person in possession of a particular copy of a computer program (including any tape, disk, or other medium embodying such program), may, for the purposes of direct or indirect commercial advantage, dispose of, or authorize the disposal of, the possession of that phonorecord or computer program (including any tape, disk, or other medium embodying such program) by rental, lease, or lending, or by any other act or practice in the nature of rental, lease, or lending.
                  Nothing in the preceding sentence shall apply to the rental, lease, or lending of a phonorecord for nonprofit purposes by a nonprofit library or nonprofit educational institution.
                  The transfer of possession of a lawfully made copy of a computer program by a nonprofit educational institution to another nonprofit educational institution or to faculty, staff, and students does not constitute rental, lease, or lending for direct or indirect commercial purposes under this subsection.
                (b)(1)(B) This subsection does not apply to—
                  (i) a computer program which is embodied in a machine or product and which cannot be copied during the ordinary operation or use of the machine or product; or
                  (ii) a computer program embodied in or used in conjunction with a limited purpose computer that is designed for playing video games and may be designed for other purposes.
                (b)(1)(C) Nothing in this subsection affects any provision of chapter 9 of this title.
            602(a)
              Importation into the United States or exportation from the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106 actionable under section 501.
              This subsection does not apply to--
                (1) importation of copies or phonorecords under the authority or for the use of the Government of the United States or of any State or political subdivision of a State, but not including copies or phonorecords for use in schools, or copies of any audiovisual work imported for purposes other than archival use;
                (2) importation, for the private use of the importer and not for distribution, by any person with respect to no more than one copy or phonorecord of any one work at any one time, or by any person arriving from outside the United States with respect to copies or phonorecords forming part of such person's personal baggage; or
                (3) importation by or for an organization operated for scholarly, educational, or religious purposes and not for private gain, with respect to no more than one copy of an audiovisual work solely for its archival purposes, and no more than five copies or phonorecords of any other work for its library lending or archival purposes, unless the importation of such copies or phonorecords is part of an activity consisting of systematic reproduction or distribution, engaged in by such organization in violation of the provisions of section 108(g)(2)
            101
              "Publication" is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.
          rights
            exclusive right to sell, give away, rent, lend, or transmit copies to the public
              division among the courts concerning whether making a copy available to the public constitutes distribution -- or whether actual dissemination is necessary
                Nimmer, relying on a article by Peter Menell, exploring the legislative history of 106(3), recently reversed its position on this issue, now holding that making available = distribution
                Diversey (CA10 2014) adopts Nimmer's (new) position, at least with respect to a library adding a work to its collection and making it available to the public
                It remains unclear whether the courts will rely on Nimmer's reversal of position to hold that making a copy available for file-sharing constitutes distribution
                  some district courts have held that it does not
            exclusive right to import
            exclusive right to export
              added in 2008
          limitations
            First Sale Doctrine
              applies when 4 things are true [Nimmer]
                (a) the subject physical product (the "copy") was lawfully manufactured with authorization of the copyright owner;
                (b) that particular copy was transferred under the copyright owner's authority;
                (c) defendant qualifies as the lawful owner of that particular copy; and
                  much litigation over the application of this requirement to software
                  e.g., Autodesk (CA9 2010)
                (d) defendant thereupon disposed of that particular copy (as opposed to, for example, reproducing it)
              exceptions
                commercial rental of phonorecords
                commercial rental of software
            Exhaustion
              "Round-trip" parallel importation
                Quality King (1998)
                  602(a) is limited by 109(a)
                  result: copyright owner may not prevent reimportation of copies of copyrighted work
                  Ginsburg reservation
                    my be limited to situations in which the copies are prepared in US, exported to another country, then reimported
                Congress considers overturning
the result in DMCA, but declines
to do so
              "One-way" parallel importation
                Omega v. Costco (2010)
                  In 2008, CA9 holds that Quality King only applies to cases where "the claims involve domestically made copies of U.S.-copyrighted works"
                    copyright owner may prevent resales in the US of products produced abroad
                    unless the copyright owner has already authorized their sale in the US
                  affirmed by an equally divided Supreme Court (December 2010)
                Kirtsaeng (2013)
                  in 2011, Second Circuit, by a vote of 2/1, follows Omega and refuses to apply first-sale doctrine to one-way parallel importation
                  in 2013, Supreme Court reverses, extending first-sale principle to one-way parallel importation
            Importation or Exportation for personal or archival use
        Performance and Display
          rights
            106: Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following …
              (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
              (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
              (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
            definitions
              101: To "perform" a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.
              101: To "display" a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.
              101: To perform or display a work "publicly" means--
                (1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
                (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.
          limitations
            exceptions
              classroom
                110: Notwithstanding the provisions of section 106, the following are not infringements of copyright: (1) performance or display of a work by instructors or pupils in the course of face-to-face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction
                  unless, in the case of a motion picture or other audiovisual work, the performance, or the display of individual images, is given by means of a copy that was not lawfully made under this title, and that the person responsible for the performance knew or had reason to believe was not lawfully made
              distance learning
                110: Notwithstanding the provisions of section 106,
the following are not infringements of copyright: (2) except with respect to a work produced or marketed primarily for performance or display as part of mediated instructional activities transmitted via digital networks, or a performance or display that is given by means of a copy or phonorecord that is not lawfully made and acquired under this title, and the transmitting government body or accredited nonprofit educational institution knew or had reason to believe was not lawfully made and acquired, the performance of a nondramatic literary or musical work or reasonable and limited portions of any other work, or display of a work in an amount comparable to that which is typically displayed in the course of a live classroom session, by or in the course of a transmission, if--
                  (A) the performance or display is made by, at the direction of, or under the actual supervision of an instructor as an integral part of a class session offered as a regular part of the systematic mediated instructional activities of a governmental body or an accredited nonprofit educational institution
                  (B) the performance or display is directly related and of material assistance to the teaching content of the transmission
                  (C) the transmission is made solely for, and, to the extent technologically feasible, the reception of such transmission is limited to-- (i) students officially enrolled in the course for which the transmission is made; or (ii) officers or employees of governmental bodies as a part of their official duties or employment; and
                  (D) the transmitting body or institution-- (i) institutes policies regarding copyright, provides informational materials to faculty, students, and relevant staff members that accurately describe, and promote compliance with, the laws of the United States relating to copyright, and provides notice to students that materials used in connection with the course may be subject to copyright protection; and (ii) in the case of digital transmissions-- (I) applies technological measures that reasonably prevent (aa) retention of the work in accessible form by recipients of the transmission from the transmitting body or institution for longer than the class session; and (bb) unauthorized further dissemination of the work in accessible form by such recipients to others; and (II) does not engage in conduct that could reasonably be expected to interfere with technological measures used by copyright owners to prevent such retention or unauthorized further dissemination
              religion
                110: Notwithstanding the provisions of section 106, the following are not infringements of copyright: (3) performance of a nondramatic literary or musical work or of a dramatico-musical work of a religious nature, or display of a work, in the course of services at a place of worship or other religious assembly
              nonprofit
                110: Notwithstanding the provisions of section 106, the following are not infringements of copyright: (4) performance of a nondramatic literary or musical work otherwise than in a transmission to the public, without any purpose of direct or indirect commercial advantage and without payment of any fee or other compensation for the performance to any of its performers, promoters, or organizers, if--
                  (A) there is no direct or indirect admission charge; or
                  (B) the proceeds, after deducting the reasonable costs of producing the performance, are used exclusively for educational, religious, or charitable purposes and not for private financial gain, except where the copyright owner has served notice of objection to the performance …
              homestyle
                110: Notwithstanding the provisions of section 106, the following are not infringements of copyright: (5) (A) except as provided in subparagraph (B), communication of a transmission embodying a performance or display of a work by the public reception of the transmission on a single receiving apparatus of a kind commonly used in private homes, unless-- (i) a direct charge is made to see or hear the transmission; or (ii) the transmission thus received is further transmitted to the public
              FMLA
                110: Notwithstanding the provisions of section 106, the following are not infringements of copyright: (5)(B) communication by an establishment of a transmission or retransmission embodying a performance or display of a nondramatic musical work intended to be received by the general public, originated by a radio or television broadcast station licensed as such by the Federal Communications Commission, or, if an audiovisual transmission, by a cable system or satellite carrier, if--
                  (i) in the case of an establishment other than a food service or drinking establishment, either the establishment in which the communication occurs has less than 2,000 gross square feet of space (excluding space used for customer parking and for no other purpose), or the establishment in which the communication occurs has 2,000 or more gross square feet of space (excluding space used for customer parking and for no other purpose) and--
                    (I) if the performance is by audio means only, the performance is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space; or
                    (II) if the performance or display is by audiovisual means, any visual portion of the performance or display is communicated by means of a total of not more than 4 audiovisual devices, of which not more than 1 audiovisual device is located in any 1 room, and no such audiovisual device has a diagonal screen size greater than 55 inches, and any audio portion of the performance or display is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space;
                  (ii) in the case of a food service or drinking establishment, either the establishment in which the communication occurs has less than 3,750 gross square feet of space (excluding space used for customer parking and for no other purpose), or the establishment in which the communication occurs has 3,750 gross square feet of space or more (excluding space used for customer parking and for no other purpose) and--
                    (I) if the performance is by audio means only, the performance is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space; or
                    (II) if the performance or display is by audiovisual means, any visual portion of the performance or display is communicated by means of a total of not more than 4 audiovisual devices, of which not more than one audiovisual device is located in any 1 room, and no such audiovisual device has a diagonal screen size greater than 55 inches, and any audio portion of the performance or display is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space;
                  (iii) no direct charge is made to see or hear the transmission or retransmission;
                  (iv) the transmission or retransmission is not further transmitted beyond the establishment where it is received; and
                  (v) the transmission or retransmission is licensed by the copyright owner of the work so publicly performed or displayed
                challenged successfully by EU as a violation of Articles 11 and 11bis of Berne Convention -- incorporated in TRIPS
                  submitted to binding arbitration
                  US now pages EU roughly $1.4M p.a.
              some webcasts
              real-space displays
                109(c) Notwithstanding the provisions of section 106(5), the owner of a particular copy lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.
                (d) The privileges prescribed by subsections (a) and (c) do not, unless authorized by the copyright owner, extend to any person who has acquired possession of the copy or phonorecord from the copyright owner, by rental, lease, loan, or otherwise, without acquiring ownership of it.
            compulsory licenses
              Public Broadcasting System
              some webcasts
                First Round
                  2002 CARP proposes rates
                  2002 Librarian of Congress modifies
                  2003 CADC upholds
                Second Round
                  2007 Copyright Royalty Board sets new rates
                    uses as benchmarks the negotiated rates between copyright owners and interactive services
                    widely considered excessively high
                      many small web casters report that the resultant fees would exceed their revenues
                  2009 Agreements
                    Sound Exchange negotiates agreements with representative commercial webcasters; cover the period from 2006 to 2015
                      CPR
                      NAB
                      Various small webcasters
                    Copyright Office announces that the terms of the deals are available to all webcasters who meet the eligibility requirements
                  Total Royalties in 2011: $292M
                Third Round
                  2010 CRB sets new rates for 2011-2015
                    again CRB uses negotiated rates with web casters as benchmarks
                    slightly higher than previous rates
                  at same time, CRB approves several settlements reached previously by Sound Exchange and groups of webcasters
              cable retransmissions
              satellite retransmissions
              jukeboxes
      Moral Rights
        Moral Rights in General
          Integrity
          Attribution
          Disclosure
          Withdrawal
          Droit de Suite
        Moral Rights in USA
          Common-law actions
            Defamation
            Right of Privacy
            Unfair Competition
            Contract Interpretation
          Lanham Act 43(a)
            Gilliam (1976)
            but see Dastar (2003)
          State Art-Preservation
statutes
            CA, CT, MA: approach Berne Convention
            NY, LA, ME, NE, NJ, NM, PA, RI: more limited protection for artists
          Visual Artists Rights Act
            text of VARA
              Rights of Attribution and Integrity
                (a) Rights of Attribution and Integrity.— Subject to section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art
                (1) shall have the right—
                  (A) to claim authorship of that work, and
                  (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create;
                (2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and
                (3) subject to the limitations set forth in section 113(d), shall have the right—
                  (A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and
                  (B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.
              Who & what
                (b) Scope and Exercise of Rights.— Only the author of a work of visual art has the rights conferred by subsection (a) in that work, whether or not the author is the copyright owner.
                  The authors of a joint work of visual art are co-owners of the rights conferred by subsection (a) in that work.
                A "work of visual art" is:
                  (1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or
                  (2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.
              Exceptions
                (c) Exceptions.—
                (1) The modification of a work of visual art which is a result of the passage of time or the inherent nature of the materials is not a distortion, mutilation, or other modification described in subsection (a)(3)(A).
                (2) The modification of a work of visual art which is the result of conservation, or of the public presentation, including lighting and placement, of the work is not a destruction, distortion, mutilation, or other modification described in subsection (a)(3) unless the modification is caused by gross negligence.
                (3) The rights described in paragraphs (1) and (2) of subsection (a) [attribution rights] shall not apply to any reproduction, depiction, portrayal, or other use of a work in, upon, or in any connection with any item described in subparagraph (A) or (B) of the definition of “work of visual art” in section 101, and any such reproduction, depiction, portrayal, or other use of a work is not a destruction, distortion, mutilation, or other modification described in paragraph (3) of subsection (a).
              Duration
                (d) Duration of Rights.—
                (1) With respect to works of visual art created on or after the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, the rights conferred by subsection (a) shall endure for a term consisting of the life of the author.
                (2) With respect to works of visual art created before the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, but title to which has not, as of such effective date, been transferred from the author, the rights conferred by subsection (a) shall be coextensive with, and shall expire at the same time as, the rights conferred by section 106.
                (3) In the case of a joint work prepared by two or more authors, the rights conferred by subsection (a) shall endure for a term consisting of the life of the last surviving author.
                (4) All terms of the rights conferred by subsection (a) run to the end of the calendar year in which they would otherwise expire.
              Transfer and Waiver
                (e) Transfer and Waiver.—
                (1) The rights conferred by subsection (a) may not be transferred, but those rights may be waived if the author expressly agrees to such waiver in a written instrument signed by the author. Such instrument shall specifically identify the work, and uses of that work, to which the waiver applies, and the waiver shall apply only to the work and uses so identified. In the case of a joint work prepared by two or more authors, a waiver of rights under this paragraph made by one such author waives such rights for all such authors.
                (2) Ownership of the rights conferred by subsection (a) with respect to a work of visual art is distinct from ownership of any copy of that work, or of a copyright or any exclusive right under a copyright in that work. Transfer of ownership of any copy of a work of visual art, or of a copyright or any exclusive right under a copyright, shall not constitute a waiver of the rights conferred by subsection (a). Except as may otherwise be agreed by the author in a written instrument signed by the author, a waiver of the rights conferred by subsection (a) with respect to a work of visual art shall not constitute a transfer of ownership of any copy of that work, or of ownership of a copyright or of any exclusive right under a copyright in that work.
            Carter (CA2 1995)
            Martin (CA7 1999)
    General Limitations
      Fairness
        Model #1: Fair Use
          USA
            section 107
              Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.
              In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include
                (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
                (2) the nature of the copyrighted work
                (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
                (4) the effect of the use upon the potential market for or value of the copyrighted work.
              The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.
            case law
              Factor #1: Purpose and Character of D's Activity
                Commercial
                  Definitions
                    revenue-generating or profit-making
                    "whether the user stands to profit from the exploitation of the copyrighted material without paying the customary price"
                      Harper & Row (SCt 1985)
                      Letterese (CA11 2008)
                      AV (CA4 2009)
                    repeated and exploitative copying to save the expense of purchases
                      Napster (CA9)
                  uncertainty when unauthorized conduct is an "intermediate step" toward profit
                    Sega (CA9 1992)
                    Texaco (CA2 1994)
                Transformative
                  (i) Parody
                    Campbell (1994)
                    Leibovitz (CA2 1998)
                    Mattel (CA9 2003)
                  (ii) Critical of
plaintiff's work
                    Free Republic (CDCal 2000)
                    Lennon (SDNY 2008)
                  (iii) Physical modification
                    "creative metamorphosis"
                      Princeton
                    Free Republic (CDCal 2000) (dicta)
                    Castle Rock rejects this approach
                    Kelly (CA9 2003) accepts this approach
                    Blanch (CA2 2006) is skeptical of this approach
                  (iv) Socially valuable
                    Sony (1984)
                    Kelly (CA9 2003)
                    Perfect 10 (CA9 2007) (fair use)
                    A.V. (CA4 2009)
                  (v) Different purpose
                    Video Pipeline
                    Nunez CA1 2000)
                    Davis (CA2 2001)
                      "further purpose or different character, altering the first with new expression, meaning, or message"
                    Kelly (CA9 2003)
                    Blanch (CA2 2006)
                    Bill Graham (CA2 2006)
                    Perfect 10 (CA9 2007)
                    Letterese (CA11 2008)
                    AV (CA4 2009)
                Shady
                  "good faith and fair dealing"
                    Harper & Row
                    Nunez
                  little impact on outcomes
                    e.g., NXIVM (CA2 2004)
                      “[J]ust how much weight within the first factor should a court place on this subfactor of bad faith? . . . Campbell provides . . . support for the proposition that while the good or bad faith of a defendant generally should be considered, it generally contributes little to fair use analysis. . . . We believe this analysis further supports our conclusion that a finding of bad faith is not to be weighed very heavily within the first fair use factor and cannot be made central to fair use analysis. The Court recognized the continuing relevance of Harper & Row, but clarified that the bad faith subfactor can be de-emphasized and will not be dispositive of the first factor or fair use.”
                Customary
                  Harper & Row
                    “the fair use doctrine was predicated on the author's implied consent to "reasonable and customary" use when he released his work for public consumption”
                  but negated by advancing technology?
                    Texaco
                    cf. TJ Hooper
              Factor #2: Nature of P's work
                Published/Unpublished
                  Salinger (CA2 1987)
                  Harper & Row (1985)
                Creative/Factual
                  Blanch (CA2 2006)
                    "Two types of distinctions as to the nature of the copyrighted work have emerged that have figured in the decisions evaluating the second factor: (1) whether the work is expressive or creative, such as a work of fiction, or more factual, with a greater leeway being allowed to a claim of fair use where the work is factual or informational, and (2) whether the work is published or unpublished, with the scope for fair use involving unpublished works being considerably narrower."
                  variant: Newsworthy
                    Brennan in Harper & Row
                Computer software
                  need for greater latitude in copying to reveal unprotected functional features
                    Sega
                    Sony
                  availability of patent protection
              Factor #3: Amount
                Quantitative
                Qualitative
                  Harper
                Denominator: each copyrighted work
                  Texaco
                  cf. "takings" doctrine
                Interplay with other factors
                  #1 -- degree of targeting
                    Campbell
                  #4 -- degree of harm
                    Suntrust (CA11 2003)
              Factor #4: Impact on Potential Market
                The following do not count as "harms" cognizable under factor 4:
                  1. Loss of fee that defendant would have paid the plaintiff
                    Fitzgerald
                    Ringold (CA2 1997)
                    Bill Graham (SDNY 2005)
                  2. Ability to charge people interested in making transformative uses
                    Castle Rock
                    Bill Graham (CA2 2006)
                  3. Injuries resulting from criticism
                    borderline case: tarnishing
                      Cat not in the Hat
                      Air Pirates
                  4. Impairment of the markets for other works owned by the plaintiff
                    Consumers Union (CA2 1983)
                Spectrum of Definitions of Potential Market
                  "harm to the value of a product -- either the original work or a derivative product -- that the copyright owner seeks to market"
                    Ryan, dissenting in Princeton
                  market the plaintiff is likely to develop
                    Galoob: focus on whether plaintiff has developed or is likely to develop a particular market
                  "traditional, reasonable, or likely to be developed markets"
                    may emerge through innovations in technology or business models
                      Texaco
                    Bill Graham (CA2 2006)
                  markets plaintiff "would in general develop or license others to develop"
                    Castle Rock
                    AV (CA4 2009)
                  "identified alternative markets"
                    Napster (CA9)
                  any market plaintiff would have been willing to license
                    Mattel
                    concurrence in Suntrust (CA11 2003)
                  any group of people who would pay for access
                    would include a market created by defendant
                    Blackmun in Sony
                    Letterese (CA11 2008) implicitly adopts this test
                      "Even an author who ha[s] disavowed any intention to publish his work during his lifetime [is] entitled to protection of his copyright, first, because the relevant consideration [is] the 'potential market' and, second, because he has the right to change his mind."
                  "value" of the work, even if there is no market
                    Chicago Board
          Israel
            Section 19 of 2007 Copyright Act
              (a) Fair use of a work is permitted for purposes such as: private study, research, criticism, review, journalistic reporting, quotation, or instruction and examination by an educational institution.
              (b) In determining whether a use made of a work is fair within the meaning of this section the factors to be considered shall include, inter alia, all of the following:
(1) The purpose and character of the use;
(2) The character of the work used;
(3) The scope of the use, quantitatively and qualitatively, in relation to the work as a whole;
(4) The impact of the use on the value of the work and its potential market.
              (c) The Minister may make regulations prescribing conditions under which a use shall be deemed a fair use.
            FAPL v. Ploni (2009)
          Singapore
            Copyright Act III.35
              For the purposes of this Act, the matters to which regard shall be had, in determining whether a dealing with a literary, dramatic, musical or artistic work or with an adaptation of a literary, dramatic or musical work, being a dealing by way of copying the whole or a part of the work or adaptation, constitutes a fair dealing with the work or adaptation for any purpose other than a purpose referred to in section 36 or 37 shall include —
              a. the purpose and character of the dealing, including whether such dealing is of a commercial nature or is for non-profit educational purposes;
              b. the nature of the work or adaptation;
              c. the amount and substantiality of the part copied taken in relation to the whole work or adaptation;
              d. the effect of the dealing upon the potential market for, or value of, the work or adaptation; and
              e. the possibility of obtaining the work or adaptation within a reasonable time at an ordinary commercial price.
        Model #2: Hybrid
          Defendant's activity must fall within one of the enumerated categories
          To determine whether the activity is permissible, consider list of factors
          Examples
            UK "Fair Dealing"
              enumerated uses
                research or private study
                criticism or review
                reporting of current events
              particular use is privileged if it complies with common-law criteria
                1) the nature of the work
                2) how the defendant obtained the work
                3) the amount taken from the work
                4) purposes of the use
                5) effect of the use to the market
                6) alternatives to the dealing.
              and adequately acknowledges the plaintiff's work
                incorporates moral right of attribution
                cf. principles of plagiarism
            Canadian "Fair Dealing"
              similar to UK, but with greater latitude in construing the enumerated uses
              CCH Canadian Ltd. v. Law Society of Upper Canada
            Australia
            Taiwan
              enumerated uses in articles 44-63 of the Copyright Law
              article 65(2) lists 4 factors that track US fair use factors
        Model #3: Enumerated Permissible Uses
          EU Copyright Directive, Art. 5 (2001)
            Section 1: Mandatory exception
              Temporary acts of reproduction referred to in Article 2, which are transient or incidental [and] an integral and essential part of a technological process and whose sole purpose is to enable:
(a) a transmission in a network between third parties by an intermediary, or
(b) a lawful use
of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provided for in Article 2.
            Section 2: Member countries may create the following limitations to the right of reproduction
              (a) in respect of reproductions on paper or any similar medium, effected by the use of any kind of photographic technique or by some other process having similar effects, with the exception of sheet music, provided that the rightholders receive fair compensation;
              (b) in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject-matter concerned;
              (c) in respect of specific acts of reproduction made by publicly accessible libraries, educational establishments or museums, or by archives, which are not for direct or indirect economic or commercial advantage;
              (d) in respect of ephemeral recordings of works made by broadcasting organisations by means of their own facilities and for their own broadcasts; the preservation of these recordings in official archives may, on the grounds of their exceptional documentary character, be permitted;
              (e) in respect of reproductions of broadcasts made by social institutions pursuing non-commercial purposes, such as hospitals or prisons, on condition that the rightholders receive fair compensation.''
            Section 3: Member countries may create the following exceptions both to the right of reproduction and to the right to communicate or make works available to the public
              (a) use for the sole purpose of illustration for teaching or scientific research, as long as the source, including the author's name, is indicated, unless this turns out to be impossible and to the extent justified by the non-commercial purpose to be achieved;
              (b) uses, for the benefit of people with a disability, which are directly related to the disability and of a non-commercial nature, to the extent required by the specific disability;
              (c) reproduction by the press, communication to the public or making available of published articles on current economic, political or religious topics or of broadcast works or other subject-matter of the same character, in cases where such use is not expressly reserved, and as long as the source, including the author's name, is indicated, or use of works or other subject-matter in connection with the reporting of current events, to the extent justified by the informatory purpose and as long as the source, including the author's name, is indicated, unless this turns out to be impossible;
              (d) quotations for purposes such as criticism or review, provided that they relate to a work or other subject-matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author's name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose;
              (e) use for the purposes of public security or to ensure the proper performance or reporting of administrative, parliamentary or judicial proceedings;
              (f) use of political speeches as well as extracts of public lectures or similar works or subject-matter to the extent justified by the informatory purpose and provided that the source, including the author's name, is indicated, except where this turns out to be impossible;
              (g) use during religious celebrations or official celebrations organised by a public authority;
              (h) use of works, such as works of architecture or sculpture, made to be located permanently in public places;
              (i) incidental inclusion of a work or other subject-matter in other material;
              (j) use for the purpose of advertising the public exhibition or sale of artistic works, to the extent necessary to promote the event, excluding any other commercial use;
              (k) use for the purpose of caricature, parody or pastiche;
              (l) use in connection with the demonstration or repair of equipment;
              (m) use of an artistic work in the form of a building or a drawing or plan of a building for the purposes of reconstructing the building;
              (n) use by communication or making available, for the purpose of research or private study, to individual members of the public by dedicated terminals on the premises of establishments referred to in paragraph 2(c) of works and other subject-matter not subject to purchase or licensing terms which are contained in their collections;
              (o) use in certain other cases of minor importance where exceptions or limitations already exist under national law, provided that they only concern analogue uses and do not affect the free circulation of goods and services within the Community, without prejudice to the other exceptions and limitations contained in this Article.
          China
            Copyright Law (2010) article 22
              In the following cases, a work may be used without permission from, and without payment of remuneration to, the copyright owner, provided that the name of the author and the title of the work are mentioned and the other rights enjoyed by the copyright owner in accordance with this Law are not prejudiced:
              (1) use of another person's published work for purposes of the user's own personal study, research or appreciation;
              (2) appropriate quotation from another person's published work in one's own work for the purpose of introducing or commenting a certain work, or explaining a certain point;
              (3) unavoidable inclusion or quotation of a published work in the media, such as in a newspaper, periodical and radio and television program, for the purpose of reporting current events;
              (4) publishing or rebroadcasting by the media, such as a newspaper, periodical, radio station and television station, of an article published by another newspaper or periodical, or broadcast by another radio station or television station, etc. on current political, economic or religious topics, except where the author declares that such publishing or rebroadcasting is not permitted;
              (5) publishing or broadcasting by the media, such as a newspaper, periodical, radio station and television station of a speech delivered at a public gathering, except where the author declares that such publishing or broadcasting is not permitted;
              (6) translation, or reproduction in a small quantity of copies of a published work by teachers or scientific researchers for use in classroom teaching or scientific research, provided that the translation or the reproductions are not published for distribution;
              (7) use of a published work by a State organ to a justifiable extent for the purpose of fulfilling its official duties;
              (8) reproduction of a work in its collections by a library, archive, memorial hall, museum, art gallery, etc. for the purpose of display, or preservation of a copy, of the work;
              (9) gratuitous live performance of a published work, for which no fees are charged to the public, nor payments are made to the performers;
              (10) copying, drawing, photographing or video-recording of a work of art put up or displayed in an outdoor public place;
              (11) translation of a published work of a Chinese citizen, legal entity or other organization from Han language into minority nationality languages for publication and distribution in the country; and
              (12) transliteration of a published work into braille for publication.
              The provisions of the preceding paragraph shall be applicable also to the rights of publishers, performers, producers of sound recordings and video recordings, radio stations and television stations.
      Misuse
        History
          Origins
            Equitable Doctrine of Unclean Hands
            Patent Misuse
          Hints and dicta in Supreme Court opinions
            Morton Salt (1942)
            Paramount Pictures (1948)
            Loew’s (1962)
          Circuit Courts
            Lasercomb (CA4 1990)
            Practice Management (CA9 1995)
            Alcatel (CA5 1999)
            Video Pipeline (CA3 2003)
            WIREdata (CA7 2003)
        Defendant may invoke by showing:
          (1) Plaintiff violated antitrust laws
            E.g., engaged in price fixing or
other concerted action in distribution of copyrighted work
            E.g., Tied one copyrighted product to another, less desirable product
              since Illinois Tool (US 2006), defendant probably must also prove plaintiff had market power
            E.g., Engaged in sham litigation
              Defined very narrowly in
Columbia Pictures v. Professional Real Estate Investors (US 1993):
                Objectively baseless claim
                Attempt to interfere directly with business relationships of a competitor
          (2) Plaintiff used the copyright in a manner violative of the public policy underlying the copyright system: stimulating artistic creativity for the general good.
            Software license forbidding licensee to develop competing software (Lasercomb)
            License forbidding licensee to use competing copyrighted product (Practice Management)
            Software License forbidding licensee to use software on competitors’ devices (Alcatel)
            Open Questions
              Software license forbidding reverse engineering?
              Purchasing a copyright in order to suppress a work that incorporates it?
              Suppressing criticism of one’s copyrighted work (Video Pipeline)?
              Issuing a warning that “grossly and intentionally exaggerates the copyright holder’s substantive rights”? (Patry & Posner 2004)
        Remedy
          Plaintiff may not assert copyright against anyone until it has “purged itself of the misuse”
            unclear whether, after purging, plaintiff will be able to recover for infringement committed during misuse period
            claims may be barred by 3-year statute of limitations
    Preemption (US)
      Express Preemption
        301(a)
          (a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.
      Conflict Preemption
        (a) It is impossible to comply with both state and federal law, or
        (b) the state law obstructs accomplishment of objectives of Copyright Act
      Cases
        Vault (1988)
        National Car Rental (1993)
        NBA (1997)
        Bowers (2003)
        Blizzard (2005)
        Fly on the Wall (2011)
  V. Remedies
    Equitable Relief
      Injunctions
        17 USC 502
          (a) Any court having jurisdiction of a civil action arising under this title may, subject to the provisions of section 1498 of title 28, grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.
          (b) Any such injunction may be served anywhere in the United States on the person enjoined; it shall be operative throughout the United States and shall be enforceable, by proceedings in contempt or otherwise, by any United States court having jurisdiction of that person. The clerk of the court granting the injunction shall, when requested by any other court in which enforcement of the injunction is sought, transmit promptly to the other court a certified copy of all the papers in the case on file in such clerk’s office.
        General rules pertaining to injunctions
          To obtain a permanent injunction, plaintiff must show
            (a) the plaintiff has suffered an irreparable injury;
            (b) monetary damages are inadequate to compensate for that injury;
            (c) the balance of hardships favors the plaintiff; and
            (d) the public interest would not be disserved by a permanent injunction
          To obtain a preliminary injunction, plaintiff must show
            (a) the plaintiff is likely to suffer an irreparable injury;
            (b) monetary damages will be inadequate to compensate for that injury;
            (c) the balance of hardships favors the plaintiff;
            (d) the public interest would not be disserved by an injunction; and
            (e) likelihood of success on the merits
          principles reaffirmed in
Winter v. NRDC (2008)
            "A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest. "
        Traditional Approach in Copyright Cases was more favorable to plaintiff than the general rules
          demonstration of likelihood of success on the merits gives rise to presumption of irreparable harm
            e.g., Apple Computer v. Formula International, 715 F.2d 521 (CA9 1984)
            preliminary injunction typically granted
          In rare circumstances, injunction may be denied
            Abend (CA9 1988):
              good faith + labor theory
            Campbell (US 1994) (dictum): courts might refuse to enjoin parodies that exceed the scope of fair use
            Tasini (US 2001): discourage grants of injunctive relief that would frustrate the "goals of copyright law"
        eBay v. MercExchange (2006)
          facts
            patent 5,845,265
              Abstract: A method and apparatus for creating a computerized market for used and collectible goods by use of a plurality of low cost posting terminals and a market maker computer in a legal framework that establishes a bailee relationship and consignment contract with a purchaser of a good at the market maker computer that allows the purchaser to change the price of the good once the purchaser has purchased the good thereby to allow the purchaser to speculate on the price of collectibles in an electronic market for used goods while assuring the safe and trusted physical possession of a good with a vetted bailee.
              full patent
          holding
            apply traditional rules of equity in determining whether to grant injunctions in patent cases
          concurrences
            Roberts, Scalia, Ginsburg
              exercise of discretion should take into account that injunctions traditionally had issued in vast majority of successful patent suits
            Kennedy, Stevens, Souter, Breyer
              denying injunctions may be appropriate when:
              plaintiff is a non-practicing entity;
              patent covers one component of complex product; or
              patent in question is a business-method patent, often of suspect validity
                "In addition injunctive relief may have different consequences for the burgeoning number of patents over business methods, which were not of much economic and legal significance in earlier times. The potential vagueness and suspect validity of some of these patents may affect the calculus under the four-factor test."
        Recent Cases
          most lower courts applied eBay to both preliminary and permanent injunctions involving copyright infringement
            Phelps (CA4 2007)
              no injunction against sale (distribution) of house built with infringing copyrighted plans
            Grokster (ND Cal. 2007)
              grant injunction on remand after considering ebay factors
          but a few did not
            Warner v. RDR Books (2008)
            Lennon v. Premise Media (SDNY 2008)
            Salinger v. Colting (SDNY 2009)
          Salinger (CA2 2010)
            eBay governs copyright infringement and preliminary injunctions
          Perfect 10 v. Google (CA9 2011) (same)
      Impoundment
and Destruction
        17 USC 503
    Damages
      Actual Damages
        504(b)
          Actual Damages and Profits.— The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages....
        Loss of revenue suffered by P as a result of D's infringement
          profits P would have earned but for D's behavior
            sales P would have enjoyed
            profit associated with each of those sales
          losses associated with need to reduce price to compete?
            cf. patent damages
        "Value of use" Theory
          P may recover from D the amount that a willing licensee would have paid a willing licensor for the right to engage in the conduct at issue
            industry practice is often relevant in determining that amount
              e.g., Bruce v. World Weekly News (CA1 2002)
                "reasonable licensing fee Bruce likely would have received from World News for each of the above-listed uses had the parties reached a fee agreement"
                "proof of industry practice inarguably is crucial to the estimation of actual damages. The record on appeal is replete with expert testimony that, given the prevailing industry practice, there was no realistic prospect whatsoever that Bruce could negotiate a per-use licensing fee with World News. Rather, the record discloses ample evidence that such a practice is rarely, if ever, indulged."
            also relevant is evidence of what P had previously demanded in return for licenses to engage in similar conduct
              e.g., Davis v. Gap (CA2 2001)
                limiting P to license fee of $50, relying on evidence that P had previously licensed right to depict his eyeglasses for that amount
              e.g., Mackie v. Reiser (CA9 2002)
            take into account circumstances that would have made the plaintiff reluctant to license -- and therefor demand a high fee
              SAP v. Oracle (2010)
                SAP's "TomorrowNow" subsidiary downloaded Oracle programs
                  purpose: sell PeopleSoft users support services cheaper than Oracle's support services
                  then offer those users SAP products instead
                number of companies diverted was small
                SAP admits liability on eve of trial
                damage theory: FMV of license to engage in the behavior
                result: jury verdict for $1.3b -- largest copyright damage award in history
                remittitur: $272M
                Oracle insists on new trial
              implicit gloss on "willing seller"
          Controversy over this approach
            cf. "Reasonable Royalties" in Patent Law
            pioneered by CA7 in Deltak (1985)
            initially rejected by CA2 in Business Trends (1989)
            later accepted by CA2 in Davis v. The Gap (2001)
            accepted by CA9 in Mackie v. Riser (2002)
            contested in Oracle v. SAP (ongoing)
        Indirect damages
          cost of modifying product to compete with D's infringing product
          reimbursement for travel costs and costs associated with producing the work
            Smith v. Little, Brown & Co., 273 F. Supp. 870 (S.D.N.Y. 1967) .
          Loss of goodwill, because customers are led to believe that plaintiff's product is not unique
            Harold's Stores (CA10 1996)
          Loss of revenue caused by not being given appropriate credit for one's work
            Graham (CA2 1998)
        Procedure
          right to jury trial
          P must show reasonable probability of causal connection between D's conduct and P's harm
          D must then rebut
          growing trend to permit P to recover prejudgment interest
      Defendant's Profits
        504(b)
          Actual Damages and Profits.— The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.
        No double recovery
          P may recover both actual damages and D's profits
          but any portion of actual damages that reflect profits lost to D must be deducted from measure of D's profits
        Gross Revenues (burden on P)
          P must identify gross revenues "reasonably related to the infringement"
            Davis (CA2 2001)
            more demanding than the text of the statute itself
            cf. proximate causation in torts
          possible components:
            revenues from sales of infringing product
            enhanced sales of related, noninfringing products
              possible in theory, but hard to prove
              Frank Music (CA9 1989)
              Bucklew (CA7 2003)
            revenues generated by ads that contain infringing material
              occasionally granted
                e.g., Andreas v. VW (CA8 2003)
              but usually denied on basis of inadequate causal connection
                e.g., Mackie v. Reiser (CA9 2002)
            enhancement of D's goodwill
              available in theory
                Business Trends Analysts (CA2 1989)(dictum)
              but almost never proveable
                Orgel (SDNY 1960)
                Roy Export (SDNY 1980)
        Deductions (burden on D)
          Costs
            look to generally accepted accounting principles
            OK to deduct properly allocated overhead
              but courts will be especially demanding concerning proof of proper allocation when infringement was willful
                Hamil America (CA2 1999)
            OK to deduct income taxes, unless infringement was willful
          Apportionment
            D must introduce evidence concerning how much of the revenue is attributable to the infringing and noninfringing parts of D's work
              Frank Music (CA9 1989)
              Bucklew (CA7 2003)
            factfinder must separate amounts attributable to P's creative contribution from amount attributable to D's contribution
              when P's material is "generic" and D's material adds "star power," the portion of the profits given to P shrinks
                Bruce (CA1 2002)
                Sheldon, 309 U.S. 390 (1940)
              where D's revenue derives in part
from his position in the art world,
they are properly apportioned to D
                Rogers v. Koons (CA2 1992)
              talent of the D can also figure in the calculus
                Caffey v. Cook (SDNY 2006)
              when in doubt, resolve in favor of plaintiff
                Frank Music (CA9 1989)
        Procedure
          right to jury trial
            probably, although the case law is not clear on this yet
      Statutory Damages
        17 USC 504(c)
          Regular
            (1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.
          Willfulness
            (2) In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000.
          Innocence
            (2) ... In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.
          Special cases
            (2) ... The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107, if the infringer was:
              (i) an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of his or her employment who, or such institution, library, or archives itself, which infringed by reproducing the work in copies or phonorecords; or
              (ii) a public broadcasting entity which or a person who, as a regular part of the nonprofit activities of a public broadcasting entity (as defined in subsection (g) of section 118) infringed by performing a published nondramatic literary work or by reproducing a transmission program embodying a performance of such a work.
        Alternative to both actual damages and D's profits
          but plaintiff may ask court for the greater of actual damages and statutory damages
            e.g. Storm Impact (ND Ill 1998)
        Calculation
          per work
            test for determining whether two components or parts of a series should be considered separate works:
              Do they have independent economic value?
            examples
              songs on a CD held not to be separate works
                MP3.com
              episodes in television series held to be separate works
                Columbia Pictures (CA9 1997)
          ranges
          definitions
            willful = knowing
              i.e., D was aware that his actions violated copyright law
            innocence = good faith
              i.e., D did not know and had no reason to know that his actions violated copyright law
          factors used to set the amount within those ranges
            the amount that "the court considers just"
            evidence of actual damage
              House Report
              harm to plaintiff's artistic reputation
                Engel
            deterrence
            "nature of the work"
        Procedure
          only available if work was registered prior to infringement
          right to jury trial
            either plaintiff or defendant can demand
            Feltner (1998)
        Constitutional ceiling?
          Thomas-Rasset
          Tenenbaum (CA1 2011)
      Punitive damages
        Majority view: not awarded in federal copyright cases
          Becklew (CA7 2003)
          Nimmer 14.02(C)(2)
        one exception
          TVT Records (SDNY 2003)
          generally considered an aberration
      Costs
        17 USC 505
          In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney's fee to the prevailing party as part of the costs.
        Factors used to determine whether to award
          strength of party's claim or defense
            frivolousness
            objective unreasonableness
          party's motivation
          deterrence
        Same factors apply to victorious plaintiffs and victorious defendants
      Attorney's fees
        Precondition: timely registration
          17 USC 412
        Prevailing plaintiffs and defendants treated the same
          Fogerty (US 1994)
        Fees awarded on the basis of "equitable discretion"
          Fogerty (US 1994) (CA9 1996)
          Primary guideline: would an award of fees promote the purposes of the copyright system?
          Court may consider nonexhaustive list of factors:
            frivolousness
            motivation
            objective unreasonableness
            compensation
            deterrence
          relationship to damages
            the smaller the damages, the more likely an award of fees, especially if D's conduct was willful
              Gonzales (CA7 2002) (Posner)
    Criminal Penalties
      statutes
        17 USC 506
        18 USC 2319
        18 USC 371
          If two or more persons conspire either to commit any offense against the United States, or to defraud the United States, or any agency thereof in any manner or for any purpose, and one or more of such persons do any act to effect the object of the conspiracy, each shall be fined under this title or imprisoned not more than five years, or both.
          If, however, the offense, the commission of which is the object of the conspiracy, is a misdemeanor only, the punishment for such conspiracy shall not exceed the maximum punishment provided for such misdemeanor.
      ranges
      "willfulness" requirement
        Moran (D. Neb. 1991)
  II. Ownership
    Authorship
      Statutes
        17 USC 201
          (a) Initial ownership. Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of copyright in the work.
          (b) Works made for hire. In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
          (c) Contributions to collective works. Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.
        17 USC 101
          works for hire
            A "work made for hire" is (1) a work prepared by an employee within the scope of his or her employment; or
            (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
              For the purpose of the foregoing sentence, a "supplementary work" is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes,
              and an "instructional text" is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
          sound recordings
            In determining whether any work is eligible to be considered a work made for hire under paragraph (2), neither the amendment contained in section 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106-113, nor the deletion of the words added by that amendment--
(A) shall be considered or otherwise given any legal significance, or
(B) shall be interpreted to indicate congressional approval or disapproval of, or acquiescence in, any judicial determination, by the courts or the Copyright Office. Paragraph (2) shall be interpreted as if both section 2(a)(1) of the Work Made For Hire and Copyright Corrections Act of 2000 and section 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106-113, were never enacted, and without regard to any inaction or awareness by the Congress at any time of any judicial determinations.
      Author acquires the copyright
        the person who expresses an idea in tangible form
        Not essential that the author have physical control over the tools of creativity
          e.g., Lindsay (1999)
      Anticipatory Assignments
        Author may assign the copyright -- or agree in advance to assign it -- but:
          (a) often doesn’t
          b) there are limits on contractual freedom
            see work for hire doctrine
          c) some aspects of the copyright are determined ineradicably at the outset
            e.g., termination rights
      Joint Authorship
        Requirements
          Two or more authors make copyrightable contributions to a work
            Each must truly constitute an "author"
              definitions
                "originator"
                "maker"
                "inventive or master mind"
                have "decision making authority"
              emphasized by CA9
                Aalmuhammed (1999)
            and each of their contributions must be independently copyrightable
          All intend that their contributions be merged into a unitary whole
            all regard the others as co-authors
            emphasized by CA2
              Thomson (1998)
                facts
        Effects
          Each joint author shares in the ownership of the whole work
          Each joint author may use the work or license it unilaterally
            presumption of equal shares of license fees
            suit for "accounting"
          Functions like an tenancy in common
            No right of survivorship
      Employment Relations
        2 routes by which a work can become a "work for hire"
          (1) Prepared by employee within
scope of employment
            "employee"
              CCNV Factors
                1. Hiring party's right to control
                2. Skill required
                3. Source of the Tools
                4. Location of the labor
                5. Duration of the relationship
                6. Right to assign additional projects
                7. Control over hours of work
                8. Method of payment
                9. Right to hire assistants
                10. Business of the hiring party
                11. Employee benefits
                12. Tax treatment
              Applications
                CCNV (1989)
                Aymes (CA2 1992)
              "teacher exception"?
            "scope of employment"
              Most courts hold that a work falls within the scope of employment only if it meets 3 requirements:
                a. it is the kind of work that the employee has been hired to perform;
                b. the work is created substantially within the authorized work hours and space; and
                c. creation of the work is motivated, at least in part, by a purpose to serve the employer.
              e.g., Avtec (CA4 1994)
          (2) 9 types of commissioned works by independent contractors, when parties agree in writing
            (a) contribution to a collective work
            (b) part of a motion picture or other audiovisual work
            (c) translation
            (d) supplementary work (foreword, illustration, etc.)
            (e) compilation
            (f) instructional text
            (g) test
            (h) answer to a test
            (i) atlas
        Effects of classification as "work for hire"
          Ownership of the copyright
          moral rights n.a. to WFH
          duration of WFH: 95 years from first publication or 120 years from creation
          Renewal rights for old copyrights
          Termination provisions n.a. to WFHs
    Formalities
      History
        for more detailed version, see Ginsburg, "The US Experience with Formalities" (2010), pp. 13-14
      1909 Regime
        distinction between general and limited publication
        see Estate of King v. CBS, 194 F.3d 1211 (CA11 1999)
      1976 Regime
        17 USC 101 (Publication)
          “Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.
        17 USC 303(a) (Effect of Publication on Duration)
          (a) Copyright in a work created before January 1, 1978, but not theretofore in the public domain or copyrighted, subsists from January 1, 1978, and endures for the term provided by section 302. In no case, however, shall the term of copyright in such a work expire before December 31, 2002; and, if the work is published on or before December 31, 2002, the term of copyright shall not expire before December 31, 2047.
      Response: Creative Commons
    Duration
      Art. I. Sec. 8, Clause 8
        Congress shall have the power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries
      Sonny Bono Copyright Term Extension Act
        retroactivity upheld against Constitutional challenge in Eldred (SCOTUS 2003)
      Current statute: 17 USC 302
    Transfers
      Licenses & Assignments
        a copyright, and any of the separate rights associated with it, may be transferred
          17 USC 201 (d-e)
            (d)(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.
            (d)(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.
            (e) Involuntary transfer. When an individual author's ownership of a copyright, or of any of the exclusive rights under a copyright, has not previously been transferred voluntarily by that individual author, no action by any governmental body or other official or organization purporting to seize, expropriate, transfer, or exercise rights of ownership with respect to the copyright, or any of the exclusive rights under a copyright, shall be given effect under this title, except as provided under title 11.
        assignments and exclusive licenses must be in writing & signed
          17 USC 204
            (a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.
            (b) A certificate of acknowledgement is not required for the validity of a transfer, but is prima facie evidence of the execution of the transfer if—
              (1) in the case of a transfer executed in the United States, the certificate is issued by a person authorized to administer oaths within the United States; or
              (2) in the case of a transfer executed in a foreign country, the certificate is issued by a diplomatic or consular officer of the United States, or by a person authorized to administer oaths whose authority is proved by a certificate of such an officer.
        effects upon powers to enforce
          17 USC 501(b)
            The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it....
      Termination of Assignments
        Termination Rules
        Impact on Derivative Works
          After renewal
            Rohauer v. Killiam (CA2 1977)
            Stewart v. Abend (US 1990)
          After termination
            Of transfers made before 1978
              304(c)(6)(A): A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.
              Effect of voluntary v. automatic renewals
            Of transfers made on or after 1978
              203(b)(1): A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.
      Contributions to a Collective Work
        17 USC 101
          A "collective work" is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole
        17 USC 201(c)
          Contributions to collective works. Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.
        NYT v. Tasini (US 2001)
      Inconsistent Successive Transfers
        17 USC 205
          (a) Conditions for Recordation.— Any transfer of copyright ownership or other document pertaining to a copyright may be recorded in the Copyright Office if the document filed for recordation bears the actual signature of the person who executed it, or if it is accompanied by a sworn or official certification that it is a true copy of the original, signed document.
          (b) Certificate of Recordation.— The Register of Copyrights shall, upon receipt of a document as provided by subsection (a) and of the fee provided by section 708, record the document and return it with a certificate of recordation.
          (c) Recordation as Constructive Notice.— Recordation of a document in the Copyright Office gives all persons constructive notice of the facts stated in the recorded document, but only if—
            (1) the document, or material attached to it, specifically identifies the work to which it pertains so that, after the document is indexed by the Register of Copyrights, it would be revealed by a reasonable search under the title or registration number of the work; and
            (2) registration has been made for the work.
          (d) Priority Between Conflicting Transfers.— As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice under subsection (c), within one month after its execution in the United States or within two months after its execution outside the United States, or at any time before recordation in such manner of the later transfer. Otherwise the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.
          (e) Priority Between Conflicting Transfer of Ownership and Nonexclusive License.— A nonexclusive license, whether recorded or not, prevails over a conflicting transfer of copyright ownership if the license is evidenced by a written instrument signed by the owner of the rights licensed or such owner’s duly authorized agent, and if—
            (1) the license was taken before execution of the transfer; or
            (2) the license was taken in good faith before recordation of the transfer and without notice of it.
        Effect: Race-Notice Recording System
      Transfers on Death
        Wills
          Copyrights, or separate exclusive rights, may be bequeathed by will
        Intestate Succession
          In the absence of an effective will, copyrights pass as personal property according to state rules governing intestate succession
    Restoration
      104A(d)(3)
        (A) In the case of a derivative work that is based upon a restored work and is created—
          (i) before the date of the enactment of the Uruguay Round Agreements Act, if the source country of the restored work is an eligible country on such date, or
          (ii) before the date on which the source country of the restored work becomes an eligible country, if that country is not an eligible country on such date of enactment,
        a reliance party may continue to exploit that derivative work for the duration of the restored copyright if the reliance party pays to the owner of the restored copyright reasonable compensation for conduct which would be subject to a remedy for infringement but for the provisions of this paragraph.
        (B) In the absence of an agreement between the parties, the amount of such compensation shall be determined by an action in United States district court, and shall reflect any harm to the actual or potential market for or value of the restored work from the reliance party’s continued exploitation of the work, as well as compensation for the relative contributions of expression of the author of the restored work and the reliance party to the derivative work.
        Dam Things of Denmark (CA3 2002)
      Golan (2012)
  IV. Supplements
    Secondary Liability
      Judge-Made Doctrines
        Contributory Infringement requires
          Direct infringement
          Knowledge (actual or constructive) by the defendant
          Material contribution
        Vicarious Infringement requires
          Direct infringement
          Financial interest in the infringement
          Right and ability to supervise the direct infringer
        Dance Hall Illustration
      Statutory Safe Harbors:
17 USC 512
        (a) ISPs (passive intermediaries) exempt
          512(k)(1)(A): for purposes of (a), "service provider" defined as "an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user's choosing, without modification to the content of the material as sent or received."
          (a) Transitory digital network communications. A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the provider's transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections, if--
          (1) the transmission of the material was initiated by or at the direction of a person other than the service provider;
          (2) the transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the service provider;
          (3) the service provider does not select the recipients of the material except as an automatic response to the request of another person;
          (4) no copy of the material made by the service provider in the course of such intermediate or transient storage is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no such copy is maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary for the transmission, routing, or provision of connections; and
          (5) the material is transmitted through the system or network without modification of its content.
        (b) No liability for passive caching
          512(k)(1)(B): As used in this section, other than subsection (a), the term "service provider" means a provider of online services or network access, or the operator of facilities therefor, and includes an entity described in subparagraph (A)
          (1) Limitation on liability. A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider in a case in which--
            (A) the material is made available online by a person other than the service provider;
            (B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person; and
            (C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after the material is transmitted as described in subparagraph (B), request access to the material from the person described in subparagraph (A),
          if the conditions set forth in paragraph (2) are met.
          (2) Conditions. The conditions referred to in paragraph (1) are that--
            (A) the material described in paragraph (1) is transmitted to the subsequent users described in paragraph (1)(C) without modification to its content from the manner in which the material was transmitted from the person described in paragraph (1)(A);
            (B) the service provider described in paragraph (1) complies with rules concerning the refreshing, reloading, or other updating of the material when specified by the person making the material available online in accordance with a generally accepted industry standard data communications protocol for the system or network through which that person makes the material available, except that this subparagraph applies only if those rules are not used by the person described in paragraph (1)(A) to prevent or unreasonably impair the intermediate storage to which this subsection applies;
            (C) the service provider does not interfere with the ability of technology associated with the material to return to the person described in paragraph (1)(A) the information that would have been available to that person if the material had been obtained by the subsequent users described in paragraph (1)(C) directly from that person, except that this subparagraph applies only if that technology--
              (i) does not significantly interfere with the performance of the provider's system or network or with the intermediate storage of the material;
              (ii) is consistent with generally accepted industry standard communications protocols; and
              (iii) does not extract information from the provider's system or network other than the information that would have been available to the person described in paragraph (1)(A) if the subsequent users had gained access to the material directly from that person;
            (D) if the person described in paragraph (1)(A) has in effect a condition that a person must meet prior to having access to the material, such as a condition based on payment of a fee or provision of a password or other information, the service provider permits access to the stored material in significant part only to users of its system or network that have met those conditions and only in accordance with those conditions; and
            (E) if the person described in paragraph (1)(A) makes that material available online without the authorization of the copyright owner of the material, the service provider responds expeditiously to remove, or disable access to, the material that is claimed to be infringing upon notification of claimed infringement as described in subsection (c)(3), except that this subparagraph applies only if--
              (i) the material has previously been removed from the originating site or access to it has been disabled, or a court has ordered that the material be removed from the originating site or that access to the material on the originating site be disabled; and
              (ii) the party giving the notification includes in the notification a statement confirming that the material has been removed from the originating site or access to it has been disabled or that a court has ordered that the material be removed from the originating site or that access to the material on the originating site be disabled.
        (c) OSPs (store information for mass distribution to others) exempt if comply with notice and takedown
          (1) A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider -
            (A) Lacks knowledge
              (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; [and]
              (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
              (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
            (B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
            (C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.
            for purposes of 512(c), "service provider" is defined as "a provider of online services or network access, or the operator of facilities therefor."
          (2) Designated agent. — The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:
            (A) the name, address, phone number, and electronic mail address of the agent.
            (B) other contact information which the Register of Copyrights may deem appropriate.
            The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.
          (3) Elements of notification. —
            (A) To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:
              (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
              (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
              (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
              (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
              (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
              (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
            (B)(i) Subject to clause (ii), a notification from a copyright owner or from a person authorized to act on behalf of the copyright owner that fails to comply substantially with the provisions of subparagraph (A) shall not be considered under paragraph (1)(A) in determining whether a service provider has actual knowledge or is aware of facts or circumstances from which infringing activity is apparent.
              (ii) In a case in which the notification that is provided to the service provider's designated agent fails to comply substantially with all the provisions of subparagraph (A) but substantially complies with clauses (ii), (iii), and (iv) of subparagraph (A), clause (i) of this subparagraph applies only if the service provider promptly attempts to contact the person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially complies with all the provisions of subparagraph (A).
        (d) Search engines (information location tools) exempt if comply with notice and takedown
        (f) Penalties for abusive notice & takedowns
        (i) Duty to terminate repeat infringers and to "accommodate ... standard technical measures" used by copyright owners
          (1) Accommodation of technology. — The limitations on liability established by this section shall apply to a service provider only if the service provider —
            (A) has adopted and reasonably implemented, and informs subscribers and account holders of the service provider's system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider's system or network who are repeat infringers; and
            (B) accommodates and does not interfere with standard technical measures.
          (2) Definition. — As used in this subsection, the term “standard technical measures” means technical measures that are used by copyright owners to identify or protect copyrighted works and —
            (A) have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair, voluntary, multi-industry standards process;
            (B) are available to any person on reasonable and nondiscriminatory terms; and
            (C) do not impose substantial costs on service providers or substantial burdens on their systems or networks.
        (m) No duty to monitor
      Cases
        Sony (1984)
        Netcom (1995)
          superseded by 512(c)
        Fonovisa (1996)
          facts
        Napster (2001)
        Aimster (2003)
        Ellison (CA9 2004)
        Grokster (2005)
        Bertelsmann Settlement (2006)
        Viacom v. YouTube (2012)
          Holdings:
            The disqualification contained in 512)(c)(1)(A)(i) is triggered only by actual, "subjective" knowledge of specific infringing material on the defendant's site or "willful blindness"
            The disqualification contained in 512)(c)(1)(A)(ii) (the "red flag" provision) is triggered only by actual, "subjective" knowledge of facts that would have make infringement "objectively" obvious to a reasonable person
            The disqualification contained in 512)(c)(1)(B) is triggered only by proof of somewhat greater control over the infringing behavior than is required for vicarious infringement
              the ability to block access to material posted on its service is not enough
              "purposeful, culpable expression and conduct" of the sort at issue in Grokster might be enough
              remand to District Court to consider this issue further
            512(c) applies to all software functions performed "for the purpose of facilitating access to user-stored material"
        Veoh (2013)
    Para-copyright
      History
        Encryption Examples
          CSS for DVDs
          SDMI for Music
          RealNetworks "Copy" Switch
        IITF "White Paper" (1995)
          Congress refuses to adopt the recommendation
        1996 WIPO Copyright Treaty
          "Contracting parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restricts acts, in respect of their works, which are not authorized by the authors concerned or permitted by law."
        WIPO Performances and Phonograms Treaty (1996/2002), art. 18
          Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by performers or producers of phonograms in connection with the exercise of their rights under this Treaty and that restrict acts, in respect of their performances or phonograms, which are not authorized by the performers or the producers of phonograms concerned or permitted by law.
      Statutes
        In USA, DMCA (1998)
          17 USC 1201
            "Access controls"
              1201(a)(1)(A): "No person shall circumvent a technological measure that effectively controls access" to a copyrighted work.
              1201(a)(2): "No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that:"
                "(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title" or
                "(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or"
                  Cf. Sony standard for
contributory infringement
                "(C) is marketed by that person or another acting in concert with that person with that person's knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title"
                  Cf. Grokster theory
of inducement
            "Copy controls"
              No prohibition on circumvention
              1201(b)(1) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that:"
                "(A) is primarily designed or produced for the purpose of circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof;"
                "(B) has only limited commercially significant purpose or use other than to circumvent protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof; or"
                "(C) is marketed by that person or another acting in concert with that person with that person's knowledge for use in circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof"
            Definitions
              "Circumvent"
                to "circumvent a technological measure" means to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner
              "Effectively controls"
                a technological measure "effectively controls access to a work" if the measure, in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work
            Exceptions
              Libraries may circumvent in order to decide whether to buy
              Police may circumvent to conduct an investigation
              1201(f): Reverse Engineering for Interoperability
                (1) Notwithstanding the provisions of subsection (a)(1)(A), a person who has lawfully obtained the right to use a copy of a computer program may circumvent a technological measure that effectively controls access to a particular portion of that program for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs, and that have not previously been readily available to the person engaging in the circumvention, to the extent any such acts of identification and analysis do not constitute infringement under this title
                (4) For purposes of this subsection, the term "interoperability" means the ability of computer programs to exchange information, and of such programs mutually to use the information which has been exchanged
              1201(g) Encryption research
                (A) the term "encryption research" means activities necessary to identify and analyze flaws and vulnerabilities of encryption technologies applied to copyrighted works, if these activities are conducted to advance the state of knowledge in the field of encryption technology or to assist in the development of encryption products;
              1201(h) Protecting Minors from Pornography
                "In applying subsection (a) to a component or part, the court may consider the necessity for its intended and actual incorporation in a technology, product, service, or device, which ... has the sole purpose to prevent the access of minors to material on the Internet."
              Special Exemptions created by Copyright Office -- applicable only to circumvention of access controls
                Statutory basis: 1201(a)(1)(B-E)
                  B
                    (B) The prohibition contained in subparagraph (A) shall not apply to persons who are users of a copyrighted work which is in a particular class of works, if such persons are, or are likely to be in the succeeding 3-year period, adversely affected by virtue of such prohibition in their ability to make noninfringing uses of that particular class of works under this title, as determined under subparagraph (C).
                  C
                    (C) During the 2-year period described in subparagraph (A), and during each succeeding 3-year period, the Librarian of Congress, upon the recommendation of the Register of Copyrights, who shall consult with the Assistant Secretary for Communications and Information of the Department of Commerce and report and comment on his or her views in making such recommendation, shall make the determination in a rulemaking proceeding on the record for purposes of subparagraph (B) of whether persons who are users of a copyrighted work are, or are likely to be in the succeeding 3-year period, adversely affected by the prohibition under subparagraph (A) in their ability to make noninfringing uses under this title of a particular class of copyrighted works. In conducting such rulemaking, the Librarian shall examine -
▪ (i) the availability for use of copyrighted works;
▪ (ii) the availability for use of works for nonprofit archival, preservation, and educational purposes;
▪ (iii) the impact that the prohibition on the circumvention of technological measures applied to copyrighted works has on criticism, comment, news reporting, teaching, scholarship, or research;
▪ (iv) the effect of circumvention of technological measures on the market for or value of copyrighted works; and
▪ (v) such other factors as the Librarian considers appropriate.
                  D
                    (D) The Librarian shall publish any class of copyrighted works for which the Librarian has determined, pursuant to the rulemaking conducted under subparagraph (C), that noninfringing uses by persons who are users of a copyrighted work are, or are likely to be, adversely affected, and the prohibition contained in subparagraph (A) shall not apply to such users with respect to such class of works for the ensuing 3-year period.
                2006 Ruling
                  1. Audiovisual works included in the educational library of a college or university’s film or media studies department, when circumvention is accomplished for the purpose of making compilations of portions of those works for educational use in the classroom by media studies or film professors.
                  2. Computer programs and video games distributed in formats that have become obsolete and that require the original media or hardware as a condition of access, when circumvention is accomplished for the purpose of preservation or archival reproduction of published digital works by a library or archive. A format shall be considered obsolete if the machine or system necessary to render perceptible a work stored in that format is no longer manufactured or is no longer reasonably available in the commercial marketplace.
                  3. Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete. A dongle shall be considered obsolete if it is no longer manufactured or if a replacement or repair is no longer reasonably available in the commercial marketplace
                  4. Literary works distributed in ebook format when all existing ebook editions of the work (including digital text editions made available by authorized entities) contain access controls that prevent the enabling either of the book’s read-aloud function or of screen readers that render the text into a specialized format.
                  5. Computer programs in the form of firmware that enable wireless telephone handsets to connect to a wireless telephone communication network, when circumvention is accomplished for the sole purpose of lawfully connecting to a wireless telephone communication network.
                  6. Sound recordings, and audiovisual works associated with those sound recordings, distributed in compact disc format and protected by technological protection measures that control access to lawfully purchased works and create or exploit security flaws or vulnerabilities that compromise the security of personal computers, when circumvention is accomplished solely for the purpose of good faith testing, investigating, or correcting such security flaws or vulnerabilities.
                2010 Ruling
                  The Librarian of Congress has announced the classes of works subject to the exemption from the prohibition against circumvention of technological measures that control access to copyrighted works. Persons making noninfringing uses of the following six classes of works will not be subject to the prohibition against circumventing access controls (17 U.S.C. § 1201(a)(1)) until the conclusion of the next rulemaking.
                  Educational uses of movies
                    (1) Motion pictures on DVDs that are lawfully made and acquired and that are protected by the Content Scrambling System when circumvention is accomplished solely in order to accomplish the incorporation of short portions of motion pictures into new works for the purpose of criticism or comment, and where the person engaging in circumvention believes and has reasonable grounds for believing that circumvention is necessary to fulfill the purpose of the use in the following instances:
(i) Educational uses by college and university professors and by college and university film and media studies students; (ii) Documentary filmmaking; (iii) Noncommercial videos.
                  Cell phone apps
                    (2) Computer programs that enable wireless telephone handsets to execute software applications, where circumvention is accomplished for the sole purpose of enabling interoperability of such applications, when they have been lawfully obtained, with computer programs on the telephone handset.
                  Cell phone network access
                    (3) Computer programs, in the form of firmware or software, that enable used wireless telephone handsets to connect to a wireless telecommunications network, when circumvention is initiated by the owner of the copy of the computer program solely in order to connect to a wireless telecommunications network and access to the network is authorized by the operator of the network.
                  Security testing of video games
                    (4) Video games accessible on personal computers and protected by technological protection measures that control access to lawfully obtained works, when circumvention is accomplished solely for the purpose of good faith testing for, investigating, or correcting security flaws or vulnerabilities, if:
(i) The information derived from the security testing is used primarily to promote the security of the owner or operator of a computer, computer system, or computer network; and (ii) The information derived from the security testing is used or maintained in a manner that does not facilitate copyright infringement or a violation of applicable law.
                  Obsolete dongles
                    (5) Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete. A dongle shall be considered obsolete if it is no longer manufactured or if a replacement or repair is no longer reasonably available in the commercial marketplace; and
                  Handicap access to ebooks
                    (6) Literary works distributed in ebook format when all existing ebook editions of the work (including digital text editions made available by authorized entities) contain access controls that prevent the enabling either of the book’s read-aloud function or of screen readers that render the text into a specialized format.
          17 USC 1202
            No person shall, without the authority of the copyright owner or the law --
            (1) intentionally remove or alter any copyright management information,
            (2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
            (3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or ... having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.
          Remedies
            Civil (1203)
              Equitable
              Damages
                Actual Damages
                  "The court shall award to the complaining party the actual damages suffered by the party as a result of the violation, and any profits of the violator that are attributable to the violation and are not taken into account in computing the actual damages, if the complaining party elects such damages at any time before final judgment is entered."
                Statutory Damages
                  "(A) At any time before final judgment is entered, a complaining party may elect to recover an award of statutory damages for each violation of section 1201 in the sum of not less than $200 or more than $2,500 per act of circumvention, device, product, component, offer, or performance of service, as the court considers just.
                  (B) At any time before final judgment is entered, a complaining party may elect to recover an award of statutory damages for each violation of section 1202 in the sum of not less than $2,500 or more than $25,000."
            Criminal (1204)
              "(a) In general. Any person who violates section 1201 or 1202 willfully and for purposes of commercial advantage or private financial gain--
              (1) shall be fined not more than $500,000 or imprisoned for not more than 5 years, or both, for the first offense; and
              (2) shall be fined not more than $ 1,000,000 or imprisoned for not more than 10 years, or both, for any subsequent offense."
        In Europe, EU Copyright Directive (2001), articles 6, 8
          Substance
            member states must provide penalties for circumvention of effective TPMs, as well as for trafficking in circumvention devices and services
            Mandatory "public policy" exceptions
              Notwithstanding the legal protection provided for in paragraph 1, in the absence of voluntary measures taken by rightholders, including agreements between rightholders and other parties concerned, Member States shall take appropriate measures to ensure that rightholders make available to the beneficiary of an exception or limitation provided for in national law in accordance with Article 5(2)(a), (2)(c), (2)(d), (2)(e), (3)(a), (3)(b) or (3)(e) the means of benefiting from that exception or limitation, to the extent necessary to benefit from that exception or limitation and where that beneficiary has legal access to the protected work or subject-matter concerned.
            Optional "private copying" exceptions
              A Member State may also take such measures in respect of a beneficiary of an exception or limitation provided for in accordance with Article 5(2)(b), unless reproduction for private use has already been made possible by rightholders to the extent necessary to benefit from the exception or limitation concerned and in accordance with the provisions of Article 5(2)(b) and (5), without preventing rightholders from adopting adequate measures regarding the number of reproductions in accordance with these provisions.
          Implementation
            slow and uneven implementation
            e.g., struggle in France (2006):
              schedule of penalties
                EUR 750 fine for circumventing DRM
                EUR 3750 fine for creating a means to circumvent DRM
                EUR 30,000 fine and 6 months in prison for publishing a means to circumvent DRM
                EUR 300,000 fine and 3 years in prison for publishing software "obviously intended" to provide the public unauthorized access to copyrighted works
              reduced penalties for file-sharing
                7/27/2006: Constitutional Council
declares unconstitutional impairment
of the property rights of copyright owners
              mandatory interoperability
                administrative agency will adopt rules forcing Apple to:
                  1. modify AAC code to allow its files to be played on other players
                  2. modify ipods sold in France to enable them to play DRMd files from other suppliers (e.g., VirginMega)
                7/27/2006: Constitutional Council requires indemnification of Apple
      Judicial Enforcement
        Streambox (WD WA 2000)
          Held: Streambox "VCR," that avoids copy-protection switch in RealNetworks system, violates 1201(b)
          Sony defense not available under DMCA
        Corley
        Felten
          Felten strips prototype SDMI watermarks out of music without degrading quality; plans to publish results
          RIAA suggests publication "could subject you and your research team to actions under the DMCA"
          Felten seeks declaratory judgment that a DMCA action would violate 1st amendment
          RIAA retreats
          Case dismissed as moot
        Elcomsoft (2002)
          Adobe eBook Reader contains copy-protection system
          2001 Elcomsoft distributes software, designed by Dimitri Sklyarov, that defeats the system
          Both Sklyarov and Elcomsoft are prosecuted
          Charges against Sklyarov dropped in return for cooperation
          Elcomsoft acquitted because of inadequate proof of criminal intent
        IMS (SDNY 2004)
        Lexmark, 387 F.3d 522 (CA6 2004)
          Facts
            Lexmark uses a TPM to prevent unauthorized printer cartridges from communicating with its printers
            Static Controls manufacturer a chip that, when installed in unauthorized cartridges, bypassed the TPM
          Holding
            Because the TPM did not prevent reading or copying the computer program at issue, the TPM did not constitute an "access control," and therefore the DMCA was inapplicable
        Chamberlain, 381 F.3d 1178 (CAFC 2004)
          Facts
            Chamberlain used a "rolling code" to control access to the software that operated its remote garage door opener
            Skylink's generic garage-door opener circumvented the rolling code
          Holding
            To establish a violation of the DMCA, it must be shown that the TPM being circumvented bears some "reasonable relationship to the protections that the Copyright Act otherwise affords."
            Because the purchasers of Chamberlain's opener were entitled to access the code that operated the opener, this requirement was not satisfied
        STK, 421 F.3d 1307 (CAFC 2005)
          Holding
            Reiterate "reasonable relationship" requirement of Chamberlain
        Blizzard, 422 F.3d 630 (CA8 2005)
          Facts
            The CDs containing Blizzard's video games also contained software that enabled purchasers to gain access to a network, operated by Blizzard, on which they could interact with other players
            Defendant reversed engineered the software in order to enable purchasers of CDs to gain access to defendant's alternative network
            the circumvention system also enabled the possessors of pirated games to gain access to the alternative network
          Holding
            "To successfully prove the interoperability defense under § 1201(f), Appellants must show:A򩖢ߐĀ蜐
              (1) they lawfully obtained the right to use a copy of a computer program;
              (2) the information gathered as a result of the reverse engineering was not previously readily available to the person engaging in the circumvention;
              (3) the sole purpose of the reverse engineering was to identify and analyze those elements of the program that were necessary to achieve interoperability of an independently created computer program with other programs; and
              (4) the alleged circumvention did not constitute infringement.
            Because the circumvention in this instance enabled "unauthorized copies of the Blizzard games [to be] freely played on bnetd.org servers," requirement (4) was not satisfied
        RealNetworks, 641 F. Supp. 2d 913 (N.D. Cal. 2009)
        MDY Industries, 629 F.3d 928 (9th Cir. 2010)
  I. What is Protected?
    Originality
      Required
        Independent Creation
        Modest amount of creativity
          USA
            bare minimum of creativity is sufficient
              Feist (1991)
                A work must possess “at least some minimal degree of creativity. To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.”
              Bridgeman Art (SDNY 1999)
              Stern (CD Cal. 2011)
          EU
            recent cases
              Infopaq (ECJ 2009)
              BSA (ECJ 2011)
              Football Association (ECJ 2011)
              Painer (ECJ 2011)
              Dataco (ECJ 2012)
            emerging standard:
              Originality requires: (a) independent creation; (b) the work reflects the author's personality; and (c) in making the work, the author made free and creative choices and thus stamped her personal touch on the work
      Not Required
        Novelty
          Sheldon (CA2 1936)
            "Borrowed the work must indeed not be, for a plagiarist is not himself pro tanto an 'author'; but if by some magic a man who had never known it were to compose anew Keats's Ode on a Grecian Urn, he would be an 'author,' and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats's."
          but sometimes relevant for other purposes
        Intent to be Original
          Alfred Bell (1951)
            “A copyist's bad eyesight or defective musculature, or a shock caused by a clap of thunder, may yield sufficiently distinguishable variations. Having hit upon such a variation unintentionally, the 'author' may adopt it as his and copyright it.”
        Artistic
          Bleistein
            facts
            “It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge.”
        Noncommercial
          but cf. Harlan, dissenting in Bleistein
        Lawful content
          Mitchell (CA5 1979)
          but cf. China
            2009 WTO Dispute
            Excerpt from Panel Report
      Applications
        Photos
          Mannion (SDNY 2006)
          Sahuc v. Tucker (ED La 2004)
        Digital wire-frame models
          Meshwerks (CA10 2008)
    Idea/Expression
      Statutory basis
        17 USC 102(b)
          In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
      Principles
        ideas unprotectable
        facts unprotectable
        expression protectable
        Merger Doctrine
          When there is only one way of expressing an idea, that form of expression is not protected
          When there are only a few ways to express an idea
            (a) Morrissey
            (b) thin protection
        Scènes à Faire
          Haley (SDNY 1978)
          Bill Diodata Photography (SDNY 2005)
      Applications
        Forms
          uncopyrightable:
            Blank Accounting Forms (Baker)
            37 CFR sec. 202(1)(c): “Blank forms, such as time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like, which are designed for recording information and do not in themselves convey information”
            Diagnostic health-care form
              (Bibbero Systems -- CA9 1990)
        Recipes
          unadorned recipes uncopyrightable
            Publications International (CA7 1996)
          expressive embellishments copyrightable
        Maps
          No protection for “facts” or “ideas”
            location of boundaries,
roads, mountains, etc.
            names of cities, etc.
            newly coined place names
            arbitrary symbols
          Protection for selection, arrangement, and presentation of elements
          Scope of protection varies with degree of originality
          Vestiges of “sweat of the brow” theory
            Amsterdam (CA3 1951)
            but see Hamilton (CA9 1978)
        Plots
          Nichols approach
        History
          Fruits of research not copyrightable: facts
            Nash (CA7 1990)
          Historical theories not copyrightable: ideas
            Hoehling (CA2 1980)
          Verbatim copying illegal unless excused by:
            merger doctrine
            fair use doctrine
    Subject Matter
      Statutory Basis
        17 USC 102
          (a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:
            (1) literary works;
            (2) musical works, including any accompanying words;
            (3) dramatic works, including any accompanying music;
            (4) pantomimes and choreographic works;
            (5) pictorial, graphic, and sculptural works;
            (6) motion pictures and other audiovisual works;
            (7) sound recordings; and
            (8) architectural works.
          (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
      Literary Works
      Dramatic Works
      Choreography
        Definitions
          "Choreography is the composition and arrangement of dance movements and patterns usually intended to be accompanied by music. As distinct from choreography, pantomime is the art of imitating or acting out situations, characters, or other events. To be protected by copyright, pantomimes and choreography need not tell a story or be presented before an audience."
            Compendium of Copyright Practices, section 450 (2010)
          Contested application to Yoga
      Music
        Compositions
        Sound recordings
      Audiovisual Works
        motion picture
          (1) a series of images
          (2) the capability of showing the images in a particular sequence
          (3) the impression of motion
        AV works
          filmstrips
          sets of slides
      Fictional Characters
        old, "Sam Spade" test (CA9):
          a character is protectable if he or she constitutes "the story being told"
        dominant current view
          a character is protectable if well delineated
      Pictorial, Graphic, & Sculptural Works
      Useful Articles
        overlapping doctrines
          Copyright
            History
              1870: statute reaches 3-dimensional “fine art”
              Bleistein (1903): expansive, relativist conception of art
              1909: statute reaches “works of art, models, or designs for works of art”
              1910-1948: Copyright Office construes narrowly
              Regulation §202.8 (1948): works of art “include works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned”
              Mazer (1954): uphold §202.8
              1959: Copyright Office adopts §202.10(c), incorporating separability principle
              Courts develop concepts of physical and conceptual separability
            Special rules apply only to "useful articles"
              A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”. §101
            Separability
              statutory standard
                [T]he design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. §101
              Physical
                e.g., jaguar hood ornament (Nimmer)
                statuettes in Mazer?
              Conceptual
                Tests
                  1. Is form dictated by function?
                    Barnhart
                  2. Which aspect of the article is primary?
                    Is the aesthetically pleasing aspect of the article primary?
                      Keiselstein Cord
                  3. Separate Concept
                    Variation (a): Temporal Displacement
                      Newman dissenting in Barnhart
                      Factors
                        Object been displayed or used apart from utilitarian function?
                        Extent of such display?
                        Did such displays result from purchases?
                        Expert Opinion
                        Surveys
                    Variation (b): Temporal Displacement + added appeal
                      Polakov
                    *Variation (c): Simultaneous distinct concepts
                      Chosun (CA2 2005)
                        Do the design elements "invoke in the viewer a concept separate from that of the [object's utilitarian] function"?
                  4. Stand on its own as work of art?
                    (a) Goldstein's version
                      "[A] pictorial, graphic or sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it."
                      How define art?
                        One possibility = Coleridge: Art subsists “in simultaneous intuition of the relation of parts, each to each and of all to a whole: exciting an immediate and absolute complacency, without intervenence, therefore, of any interest, sensual or intellectual”
                        cf. Yen: contrasting intentionalism, institutionalism, formalism
                    *(b) Nimmer's version
                      Is there "any substantial likelihood that even if the article had no utilitarian use it would still be marketable to some significant segment of the community simply because of its aesthetic qualities"? Nimmer 2.08[B](3)
                      Poe v. Missing Persons (CA9 1984)
                      Galiano v. Harrah's (CA5 2005)
                  5. Intent of the creator
                    Denicola
                    Brandir
                      "[I]f design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists."
                    Pivot Point
          Design Patents
            Requirements
              "Design"
                appearance
                ephemeral designs
are acceptable
              "Primarily ornamental"
                form dictated by function?
If not, then it's ornamental
                  Avia (1988)
                product of aesthetic skill
and artistic conception?
                  Blisscraft (1961)
                attractive?
                  creates a "pleasing impression or appearance on the aesthetic senses"
                    Design, Inc. (1970)
                commercial success relevant
                  Lindgren 1985
                visible?
              Novel
                different from any prior-art
reference or device
                overall impression
                "ordinary observer" standard
                  “If the general or ensemble appearance-effect of a design is different from that of others in the eyes of ordinary observers, novelty of design is deemed to be present. The degree of difference required to establish novelty occurs when the average observer takes the new design for a different, and not for a modified already-existing, design.” Bartlett (CCPA 1962)
                statutory bar
                  102(b)
                  invention was patented or described in a
printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the US
              Nonobvious
                Scope and content of prior art
                Differences between prior art & claims
                Level of skill in the prior art
                  PHOSITA = ordinary designer
                Secondary factors
                  long-felt needs
                  commercial success
                  failure of others
                  industry acquiescence
                  suggestions in the prior art
                  fact that defendant chose to copy
              Reduced to practice
                three-dimensional embodiment
            Procedure
              simple specification: drawing, title, single claim
            Infringement
              test: are the two designs substantially the same to an ordinary observer?
              Point of Novelty Test
                Old Test: The accused device must appropriate the novelty in the patented device which distinguishes it from the prior art
                  schematic illustration
                much softened by Egyptian Goddess (CAFC 2008)
                  facts
                  Held: apply ordinary observer test -- with the understanding that the ordinary observer will pay close attention to the prior art
                    "When the differences between the claimed and accused design(s) are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer."
            Term
              14 years
            Examples
            Cases
              Litton
                facts
              Avia (CAFC 1988)
                facts
              Rosco v. Mirror Lite
(CAFC 2002)
            Data
          Trade Dress
            Requirements
              Distinctiveness
                now requires secondary meaning
                  Walmart
                innovations in fashion usually fail this requirement
              Nonfunctionality
                utilitarian functionality
                  Traffix (US 2001)
                    Essential to use or purpose, or
                    Affects cost or quality, or
                    Exclusive use of it would put
competitors at non-reputation
related disadvantage
                aesthetic functionality
                  Pagliero (CA9) (now discredited)
                    “If the particular feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright. On the other hand, where the feature or, more aptly, design, is a mere arbitrary embellishment, a form of dress for the goods primarily adopted for purposes of identification and individuality and, hence, unrelated to basic consumer demands in connection with the product, imitation may be forbidden where the requisite showing of secondary meaning is made.”
                  Rogers v. Keene
                    [T]he jury has to determine whether the feature for which trademark protection is sought is something that other producers of the product in question would have to have as part of the product in order to be able to compete effectively in the market -- in other words, in order to give consumers the benefits of a competitive market -- or whether it is the kind of merely incidental feature which gives the brand some individual distinction but which producers of competing brands can readily do without. A feature can be functional not only because it helps the product achieve the objective for which the product would be valued by a person indifferent to matters of taste, charm, elegance, and beauty, but also because it makes the product more pleasing to people not indifferent to such things. But the fact that people like the feature does not by itself prevent the manufacturer from being able to use it as his trademark. He is prevented only if the feature is functional ... that is, only if without it other producers of the product could not compete effectively.
                  Automotive Gold v. VW (CA9 2006)
                    Mere fact that the mark is the benefit consumers want to purchase does not make it functional
                  In practice, AF has been limited to product features that serve an aesthetic purpose wholly independent of any source-identifying function
                    e.g., China pattern
                    e.g., black outboards
            Infringement
              Consumer Confusion
                Statutory Provisions
                  LA 32
                  LA 43(a)
                    History (from Stevens in Two Pesos)
                      For many years after 1946 enactment of Lanham Act, the provision was narrowly construed -- to cover only:
                        false designation of geographic origin
                        false advertising
                        passing off
                          Passing off was deemed to require proof of secondary meaning
                      Gradual expansion of coverage by Circuit courts
                        e.g., extension of “origin” from geography to source of product
                      State of the law in the federal circuits by late 1980s:
                        §43(a) creates general federal cause of action for trademark and trade-dress infringement
                        test = likelihood of confusion
                        all circuits except CA2 agree that secondary meaning is not necessary if there is a finding of inherent distinctiveness
                      In 1988 Amendments to Lanham Act, Congress implicitly approved this judicial expansion
                        also consistent with dual goals of Lanham Act: protect consumers and competitors
                Contexts
                  Initial Interest Confusion
                  Point-of-Sale Confusion
                  Post-Sale Confusion
                Test: Likelihood of Confusion
                  Factors vary slightly by Circuit
                    Beebe Factors.pptx
                  Typical Factors
                    Strength of the plaintiff’s mark
                    Similarity of the two marks
                    Proximity of the two products
                    Quality of the defendant’s product詴ꂡߐĀ淀薦
                    Likelihood of the plaintiff “bridging the gap”
                    Actual confusion
                    Defendant’s “good faith”
                    Sophistication of buyers of the products
                    General equities
                    Marketing Environment
              Dilution
                Statutory Provisions
                  Lanham Act 43(c)
                History
                  Before 1925, courts are unreceptive to such claims
                  1925-1935: State and Federal courts begin to reach dilution
                  State Anti-Dilution Statutes have largely displaced the common law
                  Federal Anti-Dilution Statute of 1995
                  Trademark Amendments Act of 1999
                  Victoria’s Secret (2003)
                  Trademark Dilution Revision Act (2006)
                Requirements
                  P's mark is famous
                    LA 43(c)(2)(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
                      The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
                      The amount, volume, and geographic extent of sales of goods or services offered under the mark.
                      The extent of actual recognition of the mark.
                      Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
                  P's mark is distinctive
                  D's use is likely to cause
dilution through:
                    Blurring
                      LA 43(c)(2)(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
                        The degree of similarity between the mark or trade name and the famous mark.
                        The degree of inherent or acquired distinctiveness of the famous mark.
                        The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
                        The degree of recognition of the famous mark.
                        Whether the user of the mark or trade name intended to create an association with the famous mark.
                        Any actual association between the mark or trade name and the famous mark.
                      Nabisco Test
                        Nabisco.pptx
                    Tarnishing
                      LA 43(c)(2)(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
                    Evolution of the "likelihood of dilution" standard
                      Dilution Standard.pptx
                Defenses
                  Fair Use
                    LA 43(c)(3) "Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with— (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
                  News Reporting
                  Noncommercial Use
          Relationships among the doctrines
            Overlaps
            mutually exclusive?
              If you have a copyright, you can still get a design patent (Yardley 1974) or trademark or trade dress protection
              If you have a design patent, Copyright Office will not register a copyright (37 CFR 202.10(a))
              Expiration of Design Patent does not prevent trademark registration (Mogen 1964)
              An expired Utility Patent makes it very difficult to show nonfunctionality for trade dress protection (Traffix 2001)
      Architecture
        Architectural Works Copyright Protection Act
          17 USC §102(a) amended to extend protection to "architectural works"
            "An 'architectural work' is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features." §101
          Limited to "buildings"
            House Report: includes nonhabitable structures such as "churches, pergolas, gazebos, and garden pavilions."
            Only free-standing structures
              Yankee Candle (DMA 1998)
            monuments seem to qualify as both sculptures and architectural works
          Author = architect
            ordinarily do not qualify as "works for hire"
          Infringement
            Standard rules apply, except as provided in §120
              a) Pictorial representations permitted. The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.
              (b) Alterations to and destruction of buildings. Notwithstanding the provisions of section §106(2), the owners of a building embodying an architectural work may, without the consent of the author or copyright owner of the architectural work, make or authorize the making of alterations to such building, and destroy or authorize the destruction of such building.
            Standard set of remedies are available
              but courts in practice remain reluctant to grant injunctions
          effective 1990
      Databases
        Definition
          WIPO Draft Treaty Definition: “‘database’ means a collection of independent works, data or other materials arranged in a systematic or methodical way and capable of being individually accessed by electronic or other means”
          Examples
            nationwide telephone directory
            compilation of financial data on companies
            Lexis/Nexis compilation of public-domain materials
        Possible forms of legal protection
          Copyright
            no protection for facts
            no protection for "sweat of the brow"
          Contract
            examples
              Use Restrictions in Ordinary Contracts or Licenses
              Shrink-wrap licenses
                ProCD v. Zeidenberg
              Martindale-Hubell website
                "You are hereby granted a nonexclusive, nontransferable, limited license to view, reproduce, print, and distribute insignificant portions of materials retrieved from this Site provided (a) it is used only for informational, non-commercial purposes, (b) you do not remove or obscure the copyright notice or other notices. Except as expressly provided above, no part of this Site, including but not limited to materials retrieved therefrom and the underlying code, may be reproduced, republished, copied, transmitted, or distributed in any form or by any means. In no event shall materials from this Site be stored in any information storage and retrieval system without prior written permission Martindale-Hubbell."
            limitations
          Misappropriation
          Encryption/Anticircumvention
          Trademark
          Trespass to Chattels
          Sui Generis Legislation
            EC Directive 96/9
              Coverage
                Applies to any “collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means."
                Plaintiff must prove: “that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents”
                  British Horseracing v. William Hill (ECJ)
                    protection is not available for "created" data -- e.g., race times and locations created by database operator
              Entitlements
                No unauthorized extraction or reutilization of any part of the database
                  “Extraction” = “the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form”
                  “Reutilization” = “any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission.”
                No first-sale doctrine
                No compulsory licenses
              Privileges
                Copying of “insubstantial” portions for any purpose -- unless it conflicts with the “normal exploitation” of the DB
                Member states may permit extraction or reutilization for noncommercial teaching or scientific research if credit is given
                Member states may permit extraction or reutilization of “substantial” portions for “private purposes”
              Duration
                15 years
                additional 15 years each time the database is “substantially modified”
              Impact?
                empirical study suggests no impact on database industry in EU
                  Commission of the European Communities, DG Internal Market and Services Working Paper: First Evaluation of Directive 96/9/EC on the legal protection of databases
                however, survey of database operators suggest legislation is key to their continuing success
            Proposed Legislation in USA
              H.R. 354
                Coverage
                  Protected databases include: information that has been collected and has been organized for the purpose of bringing discrete items of information together in one place or through one source so that users may access them
                    specific exception for works of narrative literary prose, but inclusion of collections of such works
                  Information: facts, data, works of authorship or any other intangible material capable of being gathered and organized in a systematic way
                    specifically includes works of authorship in definition, but states that it does not provide any greater protection than copyright to works of authorship included in collections, other than a work that is itself a collection
                  Exclusions
                    Government databases
real-time market information
computer programs
databases for facilitating digital online communications
                Prohibitions
                  Making available or extracting to make available all or a substantial part of a collection of information, causing material harm to the primary or related market for the product of the other party or a successor in interest
                  Extraction of a substantial part of a collection of information so as to cause material harm to the primary market
                    Primary market: all markets in which the product is offered or in which the party derives or reasonably expects to derive direct or indirect revenue
                    Related market: [1] any market in which similar products are offered and in which the parties offering similar products derive or expect to derive direct or indirect revenue or [2] any market in which the protected party has taken demonstrable steps to offer a product within a short period of time and with the reasonable expectation to derive direct or indirect revenue
                Privileges
                  Use of Individual items of information or insubstantial portions of the compilation
                  The lawful owner of a copy of the original collection may sell or transfer that copy
                  News reporting
                  Nonprofit educational, scientific or research purposes that do not materially harm the primary market
                  Reasonable use for illustration, explanation, example, comment, criticism, teaching, research or analysis commercial or nonprofit purpose amount extracted appropriate to purpose good faith extent of incorporation into an independent work and degree of difference between independent and original works development for and marketing in the same field as the original
                Duration
                  Term: Protection of information ends 15 years after original collection was first offered in commerce, with no extension for later changes to collection; burden of proof is on plaintiff to show that portion of collection to be protected is no more than 15 years old
                Lobbying
                  Pro
                    NYSE
Real Estate Agents
AMA
EBay
                  Con
                    Chamber of Commerce
Consumers Union
Research Libraries
Charles Schwab
Yahoo
              H.R. 1858
                Coverage
                  Protected databases include: a collection of discrete items of information that have been collected and organized in a single place, or in such a way as to be accessible through a single source, through the investment of substantial monetary or other resources, for the purpose of providing access to those discrete items of information by users of the database.
                    However, a discrete section of a database that contains multiple discrete items of information may also be treated as a database.
                  Information: facts, data, or any other intangible material capable of being collected or organized in a systematic way, with the exception of works of authorship
                  Exclusions
                    Government databases
computer programs
databases to facilitate internet communications
Nonprotectable subject matter: individual ideas, facts, procedures, systems, methods of operation, concepts, principles or discoveries
Preexisting databases
Works of authorship
                Subtopic
                  Distribution of duplicates: sale or distribution to the public of a database that is the duplicate of a database (substantially the same database made by extracting the information from the original) collected and organized by another person, in competition with that other database.
                    In competition with: the duplicate database displaces substantial sales or licenses of the original database and significantly threatens the opportunity to recover a return on the investment in the collecting and organizing of the database
                Privileges
                  News reporting (except time-sensitive material collected by a news reporting entity when use is part of a consistent pattern of activity engaged in for the purpose of direct competition)
                  Scientific, educational or research purposes, if not a consistent pattern engaged in for the purposes of direct commercial competition
                Duration
                  Term: No term of protection specified
      Software
        Need for IP Protection?
          Activities Software Owners Seek to Control
            Consumer reproduction of object code
            Commercial reproduction of object code
            Incorporation of parts of source code in new programs [a.k.a. "follow-on copying"]
              modestly improved versions of original program
                see, e.g., Unix history
              substantially different programs that incorporate parts of original
                e.g., SCO litigation
            "Nonliteral copying"
              Production and distribution of programs that have the same "structure, sequence, or organization," even though they have none of the original source or object code
          Degrees of Control
        Forms of IP Protection
          History
          Trade Secrets
            Trade-secret law
              Subject matter
                Restatement Definition: a process or device for continuous use in the operation of a business
                  information pertaining to contents of or manufacture of a product
                  process of treating or preserving materials
                  information relating to business operations
                  customer lists
                  computer programs
                Uniform Trade Secrets Act expands subject matter to include
                  single or ephemeral events
                  negative information
              Requirements for protection
                (1) Information must have been “secret” initially
                (2) Plaintiff must have made reasonable efforts to keep it secret
                (3) The information must be commercially valuable
              Requirements for Liability
                Breach of Confidence, or
                  confidential relationship
                  reliance on commercial custom and tacit understandings
                Secret was discovered through “improper means”
                  Illegal means (e.g., fraudulent misrepresentations; phone taps)
                  Legal but immoral means (e.g., overflights)
              Remedies
                Injunctions
                  debate over length and breadth
                  not available after plaintiff obtains a patent
                Damages
                  actual damages
                    plaintiff’s lost profits, or
                    defendant’s gains
                  consequential damages
                  punitive damages
                  attorneys’ fees
            Applied to software
              Companies sell copies of object code, keep source code secret
              Courts rule that public distribution of object code does not forfeit TS protection, so long as source code is hard to reverse engineer
                Data General v. DCI (Del. 1971)
                Telex v. IBM (CA10 1975)
                Q-Co Industries (SDNY 1985)
              Appropriate to an era in which software is custom-made by vertically integrated hardware suppliers for large commercial customers
              Limitations of this Approach
                Gradual improvement of decompilers makes possible reverse engineering
                No protection against “piracy” of object code
                Limited protection against “downstream” consumers
                Consumers’ demand for access to source code
          Contracts
            Typical Shrink-wrap licenses
              Restraints on resale or rental;
              Limits on the manufacturer’s warranties;
              Prohibitions on modifying or tampering with the product (including disassembling or reverse engineering);
              Prohibitions on uses of the product that would have been permitted by the fair-use doctrine;
              Requirements that the consumer not contest the validity of the producer’s copyright or patent
            Limitations of this approach
              Contested boundary between contract and copyright
                Long period of uncertainty concerning preemptive effect of copyright
                Pro-CD v. Zeidenberg (CA7 1996): copyright law does not preempt state contract law, used to enforce shrinkwrap license restriction on commercial uses
                Bowers v. Baystate Technologies (CAFC 2003): Copyright law does not preempt state contract law used to enforce shrinkwrap license restriction on reverse engineering
              Failure of UCITA
          Copyright
            Entitlements
            Scope of Protection
              Copying Nonliteral features
              Menu hierarchies
                Lous v. Paperback (DMass 1990)
                Lotus v. Borland (CA1 1995)
              Application Programming Interfaces
                Oracle v. Google (CAFC 2014)
              Reverse Engineering for Interoperability
                U.S. Cases finding copying for this purpose to be fair use
                  CAFC (Atari 1992 [dictum]; Bowers 2003 [dictum])
                  CA5 (DSC Communications 1996)
                  CA 9 (Sega 1992; Sony 2000)
                  CA11 (Bateman 1996)
                EC Directive 91/250, Art. 6
              Enforcement
          Patent
            (see Patent Law map)
      DNA Sequences
        2014: US Copyright Office refuses to recognize copyright protection
        Judicial test is likely forthcoming
    Fixation
      United States
        Statutes
          US Const, Art 1, Sec. 8, Cl. 8
            The Congress shall have power … To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries
          17 USC 101
            A work is "fixed" in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is "fixed" for purposes of this title if a fixation of the work is being made simultaneously with its transmission.
          17 USC 1101
            (a) Unauthorized acts. Anyone who, without the consent of the performer or performers involved--
(1) fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord, or reproduces copies or phonorecords of such a performance from an unauthorized fixation,
(2) transmits or otherwise communicates to the public the sounds or sounds and images of a live musical performance, or
(3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or traffics in any copy or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred in the United States,
shall be subject to the remedies provided in sections 502 through 505, to the same extent as an infringer of copyright.
          18 USC 2319A
            (a) Offense. Whoever, without the consent of the performer or performers involved, knowingly and for purposes of commercial advantage or private financial gain--
fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord, or reproduces copies or phonorecords of such a performance from an unauthorized fixation;
transmits or otherwise communicates to the public the sounds or sounds and images of a live musical performance; or
distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or traffics in any copy or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred in the United States;
shall be imprisoned for not more than 5 years or fined in the amount set forth in this title, or both, or if the offense is a second or subsequent offense, shall be imprisoned for not more than 10 years or fined in the amount set forth in this title, or both.
        Applications
          jazz improvisation
          mandalas
          choreography
      Other countries
        fixation not required
  International Framework
    Historical Background
      National Nature of Copyright
        protection extends no further than the boundaries of the nation
          Copyright law has no extraterritorial application
            United Dictionary (SCOTUS 1908)
              "For another jurisdiction, if it should happen to lay hold of the actor, to treat him according to its notions rather than those of the place where he did the acts, not only would be unjust, but would be an interference with the authority of another sovereign, contrary to the comity of nations, which the other state concerned might justly resent."
            Capitol Records (CA2 1955)
          Edge cases
            Infringing acts begun in the US, completed outside the US, may be reached by US courts applying US law
              "predicate act" doctrine
            If infringement occurs in the US, plaintiff may recover (in US courts) the profits defendant earned outside US
              Sheldon (CA2 1939)
                profits made from showing a copied film outside the United States, where the negatives from which the film was printed were made in the United States
            Defendant, while in the United States, "authorizes" an infringing act that occurs entirely outside the United States
              Peter Starr (CA9 1986)
                this violates US law
              Subafilms (CA9 1994) (en banc)
                D authorized the distribution outside the US of videocassettes of "Yellow Submarine"
                This conduct does not violate US copyright law
                overrule Peter Starr
        in many countries, protection was traditionally denied to all nonresident foreigners
          e.g., USA until 1891
            works by foreign authors, first published outside the US, received no copyright protection
      19th century: Slow emergence of bilateral agreements based on reciprocity principle
        e.g., 1891 International Copyright Act (USA)
          adopted in conjunction with a set of bilateral treaties with Great Britain, France, and Germany
          extended copyright protection to published works by nonresident foreign authors, provided that the President declares that their nation:
            (a) provides copyright protection to US citizens on a substantially equal basis as to its own citizens, or
            (b) is a party to an international agreement providing for reciprocity
          qualified by the "Manufacturing Clause":
            limited copyright protection to literary works manufactured in USA
            eliminated for foreign authors in 1955, pursuant to accession to UCC
            eliminated for US authors in 1986
        exception: France (1852)
          accords copyright protection to all works of authorship, regardless of country of origin
    Multilateral Agreements
      Berne Convention
        History
        Membership
          currently 167 countries
          map
        Substance
          National Treatment Principle
            Each member country must accord to protected authors the same rights it accords its own nationals
              Art. 5(1)
              Protected authors include:
                Nationals and residents of member countries
                  Art. 3(1)&(2)
                Authors of works first published in a member country
                  Art. 3(1)&(4)
                  "first publication" includes published in a member country within 30 days of publication in a nonmember country
                  Prior to 1989, this created a "back door to Berne" for US authors
                    US authors would commonly publish in a Berne member country (typically Canada) at the same time published in US
                Authors of movies made by studios headquartered in member countries
                  Art. 4
                Architects of buildings erected in member countries
                  Art. 4
                net effect: expansive system of "points of attachment"
            Principle does not apply to neighboring rights
              Rome Convention forbids discrimination with respect to neighboring rights, but US is not a member
              major implication: countries can (and do) discriminate against US performers and producers -- because sound recordings are covered in most countries by neighboring rights
                e.g. France, distribution of revenues raised through levy on blank tapes:
                  25% for French cultural purposes
                  25% to composers (Americans included)
                  25% to performers (Americans excluded)
                  25% to producers (Americans excluded)
              to avoid this outcome, many American performers make recordings in Rome Convention countries
            Retaliation permissible against nationals of nonmember countries for lack of reciprocity
              Art. 6
          No formalities
            Art. 5(2)
            member countries may not impose on protected authors any administrative obligations as preconditions to the acquisition, enforcement, or continuation of copyrights
            however, member countries may impose such obligations on works by their own nationals
            Possible justifications
              (a) formalities are arguably inconsistent with the "natural rights" basis of copyright
              (b) disparate formalities in various countries would frustrate authors' ability in practice to secure global protection
                Sprigman 2004
          Protected Works
            Mandatory Coverage
              "Literary and artistic works" (generously defined)
                Art. 2(1)
                The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as: 䩴ꁚߐĀ⟰樛
                  books, pamphlets and other writings;
                  lectures, addresses, sermons and other works of the same nature;
                  dramatic or dramatico-musical works;
                  choreographic works and entertainments in dumb show;
                  musical compositions with or without words;
                  cinematographic works to which are assimilated works expressed by a process analogous to cinematography;
                  works of drawing, painting, architecture, sculpture, engraving and lithography;
                  photographic works to which are assimilated works expressed by a process analogous to photography;
                  works of applied art;
                  illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.
              Derivative works
                translations, adaptations, arrangements
                  Art. 2(3)
              Collections (provided they have some degree of originality)
                Art. 2(5)
              Cinematographic works
                Art. 14bis
            Optional Coverage
              Government documents
                Art. 2(4)
              Applied art and Industrial Design
                Art. 2(7)
              Political speeches and oral arguments
                Art. 2bis(1)
              Public lectures
                Art. 2bis(2)
            Countries may limit protection to works "fixed in some material form"
              Art. 2(2)
          Exclusive Rights
            Mandatory
              Reproduction
                Art. 9(1)
              Right to prepare derivative works
                translations
                  Art. 8
                adaptations, arrangements, alterations
                  Art. 12
                cinematographic adaptations
                  Art. 14
              Performance rights
                dramatic & musical works
                  public performances
                    Art. 11
                  communication of performances to the public
                    Art. 11
                literary & artistic works
                  broadcasts
                    Art. 11bis
                    may be tempered with compulsory license, provided not prejudicial to moral rights or ability to obtain equitable remuneration
                  public recitations
                    Art. 11ter
              Moral rights
                Art. 6bis
            Optional
              Droit de Suite
                Art. 14ter
          Exceptions
            Mandatory
              privilege to make quotations of publicly released work if compatible with "fair practice"
                Art. 10(1)
            Optional
              member countries may allow exceptions for teaching, so long as compatible with "fair practice"
                Art. 10(2)
              member countries may permit unauthorized reproductions in special circumstances so long as they do not conflict with normal exploitation of the right and do not unreasonably prejudice the legitimate rights of author
                Art. 9(2)
                see discussion of the Three Step Test, below
              member countries may permit reproduction and broadcast by the press of articles etc. on current events
                Art. 10bis(1)
              compulsory licenses for reproductions of musical works are permissible so long as consistent with authors' ability to obtain equitable remuneration
                Art. 13
          Minimum duration
            for most works, life of author + 50 years
              Art. 7(1)
              Rule of the Shorter Term: duration of a copyright is determined by the law of the country in which protection is sought, but is not longer than than the term in the country of origin, unless former provides otherwise
                Art. 7(8)
            for anonymous and pseudonymous works, 50 years
              Art. 7(3)
            for movies, 50 years
              Art. 7(2)
            for photos and "applied art," 25 years
              Art. 7(4)
          Appendix for developing countries
            DCs are permitted to grant nonexclusive and nontransferrable compulsory licenses to translate or reproduce works for teaching & scholarship
          No effective sanctions for noncompliance
            Disputes between countries concerning interpretation or application of the convention may be submitted to International Court of Justice
              Art. 33(1)
            But a member country may opt out of this provision
              Art. 33(2)
      Universal Copyright Convention
        History
          developed under the auspices of UNESCO (United Nations Educational, Scientific and Cultural Organization)
          adopted 1952
          revised 1971
        Membership
        Substance
          National Treatment Principle
          Members must provide "adequate and effective protection" for copyrighted works
          Formalities permitted as precondition of protection
          Minimum term: Life of Author + 25 years
          Exceptions permitted that do not "conflict with the spirit and provisions of this convention"
      Rome Convention
        Membership
          currently 92 countries
          map
          not USA
            primary reason: objection to obligation to provide full public-performance rights to performers and producers
        Substance
          National Treatment Principle
          Points of attachment
            for performers: performance takes place in a member country, performance is fixed in a protected phonogram, or performance is carried by a protected broadcast
            for producers, producer is a national of a member country, or performance is first fixed or published in a member country
            for broadcasters, broadcast we has headquarters in member country, or broadcast is transmitted from a member country
          Mandatory entitlements
            Performers’ rights include: broadcast of a performance; fixation of a performance; reproduction of a fixation
            Producers of phonograms have exclusive rights to reproduce them
            Broadcasters have exclusive rights to fix or reproduce fixations of their broadcasts
            Article 12: Performers and producers must be paid “equitable remuneration” when phonograms are broadcast
          Minimum term: 20 years
      TRIPS
        "Agreement on Trade-Related Aspects of Intellectual Property Rights"
        Origins
        Membership
          160 member countries
          map
        Substance
          National Treatment
          Most favored nation principle
            “With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members” – Art. 4
            Limited exceptions
              (a) deriving from international agreements on judicial assistance or law enforcement of a general nature
              (d) deriving from international agreements related to the protection of intellectual property which entered into force prior to the entry into force of the WTO Agreement
          Incorporate Berne Convention, Articles 1-21, except 6bis
            Art. 9.1: Members shall comply with Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto. However, Members shall not have rights or obligations under this Agreement in respect of the rights conferred under Article 6bis of that Convention or of the rights derived therefrom.
          Idea/Expression Distinction
            Art. 9.2: Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.
          Mandatory Subject-Matter Coverage (Art. 10)
            Computer Programs
              Art. 10.1: Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971).
            Creative Aspects of Databases
              Art. 10.2: Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.
            Censorship is permissible, but may not be used to deny copyright protection altogether to certain works
              U.S. v. China: 2009 Panel Report
          Mandatory Entitlements
            Commercial rental rights for software and movies
              Art. 11: In respect of at least computer programs and cinematographic works, a Member shall provide authors and their successors in title the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works.
              A Member shall be excepted from this obligation in respect of cinematographic works unless such rental has led to widespread copying of such works which is materially impairing the exclusive right of reproduction conferred in that Member on authors and their successors in title. In respect of computer programs, this obligation does not apply to rentals where the program itself is not the essential object of the rental.
            For producers and broadcasters (Art. 14)
              Performers control fixation and broadcasts of live performances
                Art. 14.1: In respect of a fixation of their performance on a phonogram, performers shall have the possibility of preventing the following acts when undertaken without their authorization: the fixation of their unfixed performance and the reproduction of such fixation. Performers shall also have the possibility of preventing the following acts when undertaken without their authorization: the broadcasting by wireless means and the communication to the public of their live performance.
              Producers of phonograms control reproduction and commercial rentals
                Art. 14.2: Producers of phonograms shall enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms.
                Art. 14.4: The provisions of Article 11 in respect of computer programs shall apply mutatis mutandis to producers of phonograms and any other right holders in phonograms as determined in a Member’s law. If on 15 April 1994 a Member has in force a system of equitable remuneration of right holders in respect of the rental of phonograms, it may maintain such system provided that the commercial rental of phonograms is not giving rise to the material impairment of the exclusive rights of reproduction of right holders.
              Broadcasters control fixation, reproduction, rebroadcasts
                Art. 14.3: Broadcasting organizations shall have the right to prohibit the following acts when undertaken without their authorization: the fixation, the reproduction of fixations, and the rebroadcasting by wireless means of broadcasts, as well as the communication to the public of television broadcasts of the same. Where Members do not grant such rights to broadcasting organizations, they shall provide owners of copyright in the subject matter of broadcasts with the possibility of preventing the above acts, subject to the provisions of the Berne Convention (1971).
              Exceptions permitted to extent of Rome Convention
                Art. 14.6: Any Member may, in relation to the rights conferred under paragraphs 1, 2 and 3, provide for conditions, limitations, exceptions and reservations to the extent permitted by the Rome Convention. However, the provisions of Article 18 of the Berne Convention (1971) shall also apply, mutatis mutandis, to the rights of performers and producers of phonograms in phonograms.
            Limited exceptions
              Art. 13: Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.
          Term
            LOA + 50 (Berne)
            For works not tied to life of the author, 50 years
              Art. 12: Whenever the term of protection of a work, other than a photographic work or a work of applied art, is calculated on a basis other than the life of a natural person, such term shall be no less than 50 years from the end of the calendar year of authorized publication, or, failing such authorized publication within 50 years from the making of the work, 50 years from the end of the calendar year of making.
            Performers and producers get minimum term of protection of 50 years; broadcasters get 20 years
              Art. 14.5: The term of the protection available under this Agreement to performers and producers of phonograms shall last at least until the end of a period of 50 years computed from the end of the calendar year in which the fixation was made or the performance took place. The term of protection granted pursuant to paragraph 3 shall last for at least 20 years from the end of the calendar year in which the broadcast took place.
            No maximum
          Mandatory enforcement (Arts. 41-49)
            "Fair and equitable" procedures
            Decisions in writing without "undue delay"
            Damages -- Art. 45
            Injunctions -- Art. 44
            Border control -- Art. 51
        Transitions
          All countries had until 1/1/1996 -- Art. 65
          Developing countries had until 1/1/2000 -- Art. 65
          Least developed countries had until 1/1/2006 -- Art. 66
          newly created rights do not apply to prior acts
        Dispute Resolution
          Stages
            Consultation among disputants
            WTO Dispute Settlement Unit appoints 3-person panel
            Panel considers dispute and issues ruling
            Appellate Review within DSU
          Penalties: Cross-sectoral retaliation
          Interpretative Standards
            U.S. v. India (1997): cautious, strict constructionist enforcement of explicit obligations
            No "non-violatory acts of nullification or impairment"
        Merits and Demerits
      WIPO Copyright Treaty (1996)
        Special Agreement under Berne Convention
        Membership: 93 countries
        Map
        Incorporate Substantive components of Berne Convention
          1971 version
        Rights of authors:
          Expansive distribution right
            Art. 6: "Authors of literary and artistic works shall enjoy the exclusive right of authorizing the making available to the public of the original and copies of their works through sale or other transfer of ownership."
          Commercial rental right
            for computer programs
            for cinematographic rights
              if and only if commercial rental has led to widespread copying of such works materially impairing the exclusive right of reproduction
            for works embodied in phonograms
              except for countries that since April 15, 1994, have in force a system of equitable remuneration for such rental
          Right of Communication to the Public
            Article 8: "Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them."
        Technology Protection Measures
          Art. 11: "Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law."
          Art. 12: Rights Management Information
            (1) Contracting Parties shall provide adequate and effective legal remedies against any person knowingly performing any of the following acts knowing, or with respect to civil remedies having reasonable grounds to know, that it will induce, enable, facilitate or conceal an infringement of any right covered by this Treaty or the Berne Convention:
              (i) to remove or alter any electronic rights management information without authority;
              (ii) to distribute, import for distribution, broadcast or communicate to the public, without authority, works or copies of works knowing that electronic rights management information has been removed or altered without authority.
            (2) As used in this Article, “rights management information” means information which identifies the work, the author of the work, the owner of any right in the work, or information about the terms and conditions of use of the work, and any numbers or codes that represent such information, when any of these items of information is attached to a copy of a work or appears in connection with the communication of a work to the public.
        Effective Enforcement Systems
      WIPO Performances and Phonograms Treaty (1996)
        Scope: Rights of Performers and producers of music
        Membership: 94 countries
        Map
        National Treatment Principle
        Performers' rights
          for performances embodied in recordings:
            Reproduction
            Distribution
              right to make available to the public the original or copies through sale or other transfer of ownership
            Commercial rental right
              right to authorize commercial rentals to the public
              exception for countries that since 4/15/1994 have had a regime for equitable remuneration
            Right of making available
              essentially covers the right to provide on-demand interactive streaming
            Right to equitable remuneration for public performances (broadcasting) of commercially released recordings
              member countries may limit or deny such a right
              but in that case other countries may deny reciprocity
            Moral rights
              attribution
              integrity
                right to object to any modification prejudicial to artist's reputation
          for live performances:
            broadcasting right
            right to communicate to the public
            right of fixation
        Producers' rights
          Reproduction
          Distribution
            right to make available to the public the original or copies through sale or other transfer of ownership
          Commercial rental right
            right to authorize commercial rentals to the public
            exception for countries that since 4/15/1994 have had a regime for equitable remuneration
          Right of making available
            essentially covers the right to provide on-demand interactive streaming
        Technology Protection Measures
          countries must provide legal remedies against circumvention of TPM
          countries must provide legal remedies against alteration or removal of identifying information
        Effective Enforcement Systems
        Duration: Minimum of 50 years
        No formalities
      WIPO Treaty on Exceptions for the Visually Impaired (2013)
        full title: Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled
        key provisions
          WIPO member countries must adopt laws that permit the reproduction, distribution and making available of published works in accessible formats
          member countries must permit the exchange of these accessible format works across borders by organizations that serve the blind, visually impaired, and print disabled
          the three-step test (see below) continues to apply to these exceptions and limitations
      Inchoate Agreements
        Anti-Counterfeiting Trade Agreement (ACTA)
          Process
            secret negotiation of anti-counterfeiting agreement begins in 2006
              participants: Australia, Canada, European Union, Japan, Mexico, Morocco, New Zealand, Singapore, South Korea, Switzerland, and United States
              US planned to implement the deal through Executive Agreement, rather than traditional treaty ratification by Senate
            considerable controversy and resistance
            penultimate draft released Nov. 15, 2010
            final draft, May 2011
            8 countries signed on October 1, 2011
              United States, Australia, Canada, Korea, Japan, New Zealand, Morocco, and Singapore
            EU
              EU and 22 member countries signed in January 2012
              controversy and resistance build in the spring of 2012
              July 2012, The European Parliament rejected the Agreement in plenary session
              December 21, 2012, European Commission withdraws request that ECJ review ACTA for compatibility with EU Law
            was open for signature by other WTO member countries until May 2013
            will enter into force after 6 countries ratify it
              thus far, only Japan has ratified
          Substance
            Expansive definitions of copyright piracy and trademark counterfeiting
              "counterfeit trademark goods means any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country in which the procedures set forth in Chapter II are invoked"
              "pirated copyright goods means any goods which are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and which are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country in which the procedures set forth in Chapter II are invoked"
            Civil remedies
              member countries must provide remedies that more-or-less match US copyright and TM laws
                Articles 7-12
              Art. 9, Section 3: with respect to enhanced damages, signatories can choose among:
                a. statutory damages
                  (may require US either to eliminate requirement of registration for statutory damages, or adopt one of the other approaches)
                b. presumptions for determining amounts of damages
                c. "additional" (i.e. punitive) damages
            Criminal penalties
              Art. 23
                1. Each Party shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright or related rights piracy on a commercial scale. For the purposes of this Section, acts carried out on a commercial scale include at least those carried out as commercial activities for direct or indirect economic or commercial advantage.
                3. A Party may provide criminal procedures and penalties in appropriate cases for the unauthorized copying of cinematographic works from a performance in a motion picture exhibition facility generally open to the public.
                4. With respect to the offences specified in this Article for which a Party provides criminal procedures and penalties, that Party shall ensure that criminal liability for aiding and abetting is available under its law.
            Digital Environment
              Obligation to adopt "graduated response" to online copyright infringement eliminated from final draft
              instead, general obligation to provide "effective" enforcement procedures
                Art. 6
              obligatory penalties for encryption circumvention
                Art. 27, Sections 5-7
        Trans-Pacific Partnership Agreement (TPP)
          Process
            confidential negotiations analogous to ACTA, begin in 2007
            participants: Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, USA, and Vietnam
              may be soon joined by Korea
            most recent round of formal negotiations and consultations: New York City, starting January 26, 2015
            Leaked drafts
              November 2013, Wikileaks released an August 2013 draft of the IP chapter
              October 2014, second leaked draft
          Substance
            Contents uncertain, but possible provisions include:
            Increase in mandatory minimum copyright term
              from life+50 to life+70
            mandatory copyright liability for creation of temporary ("buffer") copies
            mandatory restrictions on parallel importation
            more stringent version of the "three-step test"
              see below
            stricter requirements concerning prohibitions on TPM circumvention
              fewer permissible defenses
            limitations on countries' discretion to immunize Internet intermediaries
            expansion of criminal liability
              e.g., for non-willful infringement
        Beijing Treaty on Audiovisual Performances (2012)
          formalities
            so far, 77 signatories
            will enter into force when ratified by 30 countries
              so far, only 3 countries have ratified
          substance
            increases the economic and moral rights of actors and other audiovisual performers
            permits those rights to be assigned to producers
    Regional Agreements
      European Union
        membership
        Software Directive (1991)
          primary effect: requires member countries to grant copyright protection to the authors of software programs
            Council Directive 91/250/EEC
          modified in modest respects since then
            modifications consolidated in Council Directive 2009/24/EC
        Rental Rights Directive (1992)
          requires member countries to recognize "a right to authorize or prohibit the rental and lending of originals and copies of copyright works...."
        Copyright Directive (aka Information Society Directive) (2001)
          implements WIPO Treaties of 1996
          Reproduction Right (Art. 2)
            Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part:
              (a) for authors, of their works;
              (b) for performers, of fixations of their performances;
              (c) for phonogram producers, of their phonograms;
              (d) for the producers of the first fixations of films, in respect of the original and copies of their films;
              (e) for broadcasting organisations, of fixations of their broadcasts, whether those broadcasts are transmitted by wire or over the air, including by cable or satellite.
          Communication Right (Art. 3)
            1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.
            2. Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them:
              (a) for performers, of fixations of their performances;
              (b) for phonogram producers, of their phonograms;
              (c) for the producers of the first fixations of films, of the original and copies of their films;
              (d) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.
            3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.
          Distribution Right (Art. 4)
            1. Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.
            2. The distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community of that object is made by the rightholder or with his consent.
          Exceptions and Limitations (Art. 5)
            1. Temporary acts of reproduction referred to in Article 2, which are transient or incidental [and] an integral and essential part of a technological process and whose sole purpose is to enable:
              (a) a transmission in a network between third parties by an intermediary, or
              (b) a lawful use of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provided for in Article 2.
            2. Member States may provide for exceptions or limitations to the reproduction right provided for in Article 2 in the following cases:
              (a) in respect of reproductions on paper or any similar medium, effected by the use of any kind of photographic technique or by some other process having similar effects, with the exception of sheet music, provided that the rightholders receive fair compensation;
              (b) in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject-matter concerned;
              (c) in respect of specific acts of reproduction made by publicly accessible libraries, educational establishments or museums, or by archives, which are not for direct or indirect economic or commercial advantage;
              (d) in respect of ephemeral recordings of works made by broadcasting organisations by means of their own facilities and for their own broadcasts; the preservation of these recordings in official archives may, on the grounds of their exceptional documentary character, be permitted;
              (e) in respect of reproductions of broadcasts made by social institutions pursuing non-commercial purposes, such as hospitals or prisons, on condition that the rightholders receive fair compensation.
            3. Member States may provide for exceptions or limitations to the rights provided for in Articles 2 and 3 in the following cases:
              (a) use for the sole purpose of illustration for teaching or scientific research, as long as the source, including the author's name, is indicated, unless this turns out to be impossible and to the extent justified by the non-commercial purpose to be achieved;
              (b) uses, for the benefit of people with a disability, which are directly related to the disability and of a non-commercial nature, to the extent required by the specific disability;
              (c) reproduction by the press, communication to the public or making available of published articles on current economic, political or religious topics or of broadcast works or other subject-matter of the same character, in cases where such use is not expressly reserved, and as long as the source, including the author's name, is indicated, or use of works or other subject-matter in connection with the reporting of current events, to the extent justified by the informatory purpose and as long as the source, including the author's name, is indicated, unless this turns out to be impossible;
              (d) quotations for purposes such as criticism or review, provided that they relate to a work or other subject-matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author's name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose;
              (e) use for the purposes of public security or to ensure the proper performance or reporting of administrative, parliamentary or judicial proceedings;
              (f) use of political speeches as well as extracts of public lectures or similar works or subject-matter to the extent justified by the informatory purpose and provided that the source, including the author's name, is indicated, except where this turns out to be impossible;
              (g) use during religious celebrations or official celebrations organised by a public authority;
              (h) use of works, such as works of architecture or sculpture, made to be located permanently in public places;
              (i) incidental inclusion of a work or other subject-matter in other material;
              (j) use for the purpose of advertising the public exhibition or sale of artistic works, to the extent necessary to promote the event, excluding any other commercial use;
              (k) use for the purpose of caricature, parody or pastiche;
              (l) use in connection with the demonstration or repair of equipment;
              (m) use of an artistic work in the form of a building or a drawing or plan of a building for the purposes of reconstructing the building;
              (n) use by communication or making available, for the purpose of research or private study, to individual members of the public by dedicated terminals on the premises of establishments referred to in paragraph 2(c) of works and other subject-matter not subject to purchase or licensing terms which are contained in their collections;
              (o) use in certain other cases of minor importance where exceptions or limitations already exist under national law, provided that they only concern analogue uses and do not affect the free circulation of goods and services within the Community, without prejudice to the other exceptions and limitations contained in this Article.
            4. Where the Member States may provide for an exception or limitation to the right of reproduction pursuant to paragraphs 2 and 3, they may provide similarly for an exception or limitation to the right of distribution as referred to in Article 4 to the extent justified by the purpose of the authorised act of reproduction.
            5. The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder.
        Resale Rights Directive (2001)
          requires member countries to grant the creators of original works of art a right to remuneration when those works are resold
        Term Directive (2006)
          Art. 1: Harmonize terms of copyright protection in EU
            1. The rights of an author of a literary or artistic work within the meaning of Article 2 of the Berne Convention shall run for the life of the author and for 70 years after his death, irrespective of the date when the work is lawfully made available to the public.
            2. In the case of a work of joint authorship, the term referred to in paragraph 1 shall be calculated from the death of the last surviving author.
            3. In the case of anonymous or pseudonymous works, the term of protection shall run for 70 years after the work is lawfully made available to the public. However, when the pseudonym adopted by the author leaves no doubt as to his identity, or if the author discloses his identity during the period referred to in the first sentence, the term of protection applicable shall be that laid down in paragraph 1.
            4. Where a Member State provides for particular provisions on copyright in respect of collective works or for a legal person to be designated as the rightholder, the term of protection shall be calculated according to the provisions of paragraph 3, except if the natural persons who have created the work are identified as such in the versions of the work which are made available to the public. This paragraph is without prejudice to the rights of identified authors whose identifiable contributions are included in such works, to which contributions paragraph 1 or 2 shall apply.
            5. Where a work is published in volumes, parts, instalments, issues or episodes and the term of protection runs from the time when the work was lawfully made available to the public, the term of protection shall run for each such item separately.
            6. In the case of works for which the term of protection is not calculated from the death of the author or authors and which have not been lawfully made available to the public within 70 years from their creation, the protection shall terminate.
          clarify scope of protection for photographs
            Art. 6: Photographs which are original in the sense that they are the author's own intellectual creation shall be protected in accordance with Article 1. No other criteria shall be applied to determine their eligibility for protection. Member States may provide for the protection of other photographs.
      OAPI
        membership
          Benin, Burkina Faso, Cameroon, Central Africa, Congo, Cote d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Chad, and Togo
          map
        Bangui Agreement (1977/1999)
          Articles 8, 10: Generous list of mandatory moral rights
          Article 9: Generous list of economic rights
    The three-step test
      Variants
        Berne Convention (1967 revision), Art. 9(2)
          "It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works [a] in certain special cases, provided that [b] such reproduction does not conflict with a normal exploitation of the work and [c] does not unreasonably prejudice the legitimate interests of the author."
        TRIPS Art. 13
          "Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder."
        WIPO Copyright Treaty Art. 10
          "Contracting Parties may, in their national legislation, provide for limitations of or exceptions to the rights granted to authors of literary and artistic works under this Treaty in certain special cases that do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author."
        EU Copyright Directives
      Range of Interpretations
        (a) US fair-use doctrine violates 3ST
          rebuttal: William Patry, "Fair Use, the Three-Step Test, and the Counter-Reformation (2008)
        (b) Hugenholtz/Okediji
          "Limitations and exceptions that (1) are not overly broad, (2) do not rob right holders of a real or potential source of income that is substantive, and (3) do not do disproportional harm to the right holders, will pass the test."
        (c) Geiger et al., "Balanced Interpretation"
          An exception or limitation that fails to satisfy one of the three steps should not necessarily be deemed to violate the test.
          Rather, all three components of the test should be considered together in a "comprehensive overall assessment" that takes into account the threats that excessive levels of copyright protection pose to:
            "human rights and fundamental freedoms,"
            "interests in competition,"
            and "other public interests, notably in scientific progress and cultural, social, or economic development"
            the important interests of copyright holders in fair compensation.