ANATOMY OF A COPYRIGHT CASE 1. Ownership of valid rights in an original work of authorship a. Original work of authorship b.

Fixed in a tangible medium of expression c. Plaintiff owns work d. Copyright remains in effect 2. Infringement a. Violation of one or more exclusive rights b. Defendant copied from plaintiff c. Elements copied amount to an improper appropriation 3. Relevant limitations/exclusions 4. Other Defenses STANDING & PROCEDURE Does the plaintiff have standing? - legal or beneficial owners of copyright (owner, assignee, or exclusive licensee) as well as licensed television broadcasters may bring suit ( 501) - Agreement that says someone is copyright owner insufficient to establish ownership. Must be able to exercise exclusive rights, without limitations, to be considered owner (Righthaven) Is the plaintiff an author? - did P provide original intellectual conceptions and exercise a such high degree of control of control that the work is a product of his or her original intellectual conceptions? (S.D.N.Y. Lindsay) - joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseperable or interdependent parts of a unitary whole (101) o if joint authorship claimed, did P contribute to an individually copyrightable extent? (7th majority rule, Trinity, Aalmuhammed) Goldstein test: each author must contribute to an individually copyrightable extent Nimmer test: each author may make de minimis contribution as long as final product is copyrightable BUT: Nimmer test may discourage collaboration and be hard to adjudicate o if joint authorship claimed, did P have superintendence over the work? ( Aalmuhammed) o if joint authorship claimed, were there objective manifestations of intent that their contributions be merged into inseparable or interdependent parts of a unitary whole? (Aalmuhammed, 101) Is the work a work for hire? - The patron (employer) is the copyright owner of a work made for hire unless the preparer and patron have agreed otherwise in a signed writing (201) - Even if writing identifies employee as author, employer is still owner of work made for hire (Reid) - if not in writing, balance the 12 the Reid factors (Reid): (1) Right to control the work being performed;(2) skill required; (3) source of instrumentalities and tools; (4) location of the work; (5) duration of relationship between parties; (6) whether hiring party has right to assign additional projects; (7) extent of hired partys discretion over when and how long to work; (8) method of payment; (9) hired partys role in hiring and paying assistants; (10) Role in hiring and paying assistants; (11) Regular course of employers business; (12) provision of employee benefits, taxes

- or the 5 most important Reid factors: (1) hiring partys right to control the manner and means of creation; (2) skill required; (3) provision of employee benefits; (4) tax treatment of hired party; (5) whether hiring party may assign additional projects to hired party (2d Aymes) - BUT: some of these factors may discriminate against smaller businessese.g. benefits -if not in writing, is it within the scope of employment? ( 101) - (1) is it within the kind of work he is employed to perform; (2) did it occur substantially within the authorized time and space limits; (3) is it actuated, at least in part, by a purpose to serve the master? (D.D.C. Roeslin, Reid, R.2d) Is it a federal government work? Not copyrightable. (105) Is the complaint in the proper court at the proper time? - district courts have original jx over any action arising under any Act relating to copyrights ( 1388) - a suit arises under the act if (1) "the complaint is for a remedy expressly granted by the Act," and (2) "the complaint asserts a claim requiring construction of the Act" (2d T.B. Harms, 2d Bassett) - registration or preregistration is required before a civil suit may be filed ( 411) - BUT: failure to register does not foreclose federal jurisdiction (Muchnick) - civil actions must be brought within 3 years of cause; criminal actions within 5 years ( 507) Is it within the statutory provisions for duration and protection? - Under 1909 Act, 56 years for works created before 1978 - Under 1976 Act and Sonny Bono Act, life of the author and 70 years for works created on or after January 1, 1978 ( 302(a)) - pseudonymous works, works for hire, etc. = 120 from creation or 95 from publication ( 302(b)) - notice of copyright must be affixed to cover innocent infringement ( 401405) - notice must include symbol of copyright, name of owner and date of first publication and affixed in such a manner and location as to give reasonable notice of a claim to copyright - deposit of two copies of work must be made for Library of Congress ( 407) - registration must take place before initiation of civil suit or receipt of damages for US work ( 411412) - registration not required for foreign work General publication (1) "If tangible copies of the work are distributed to the general public in such a manner as allows the public to exercise dominion and control over the work," or (2) if the work is exhibited or displayed in such a manner as to permit unrestricted copying by the general public (11th Estate of MLK) Is the copyright term constitutional? - limited term extensions generally comport with the IP clause (Eldred, Golan) - BUT: public interest concerns and incentive-structure arguments loom (dissents) Have the rights been assigned or terminated? - if author does not renew before death, assigned renewal rights are void (Abend) - successors retain rights over derivative works - transfers after 1978: can terminate transfer during a 5-year window that begins 35 years from the date of grant, and must be preceded by notice to the grantee 2-10 years prior ( 203) - transfers before 1978: can terminate transfer of interest in renewal term during specified window that runs from the time of original copyright ( 304(c)(d))

EXCLUSIVE RIGHTS 106 (1) reproduction, (2) derivation, (3) distribution, (4) performance, (5) display, (6) transmission Was there factual copying? Direct evidence of copying? OR Circumstantial evidence - did the defendant have access to the material? - did the defendant have a reasonable opportunity to hear or see plaintiffs work? (9th Bolton) - (1) was there a particular chain of events linking D to Ps work? OR - (2) was Ps work widely disseminated? (Bolton) - subconscious copying counts - If access is absent, the similarities must be so striking as to preclude the possibility that plaintiff and defendant independently arrived at the same result. - is a similarity so striking as to make it unlikely to have occurred without access? (7th Selle) - Strong similarity is evidence of access (Ty) - BUT: this similarity must occur within unique aspects of the work (7th Selle) - AND: expert witnesses may testify to the uniqueness of the similarity (7th Selle) - can the D rebut a presumption of access by showing lack of access or independent creation? (9th Bolton) - Access (and copying) may be inferred when two works are so similar to each other and not to anything in the public domain that it is likely that the creator of the second work copied the first, but the inference can be rebutted by disproving access or showing independent creation. (7th Ty) Reproduction right: factual copying+ protected material Is there an exact copy or are the two works substantially similar? - Must apply abstraction-filtration-comparison test to remove uncopyrighted material before investigating substantial similarity. D not liable for using uncopyrighted material (2d Nichols) 2d Circuit (two approaches) - 1) would ordinary observer regard aesthetic appeal as the same unless looking for differences? (Steinberg, Boisson); - 2) with uncopyrightable elements filtered out, would a discerning observer still see similarity? (2d Boisson) - BUT: this runs the risk of filtering out elementary componentse.g. colors and shapes - AND: some courts ambivalent about dissection; against isolation of elements, think tests are the same (S.D.N.Y. Mannion) - infringing similarity may involve only a small portion of the work (2d Steinberg) - SJ if evidence so overwhelming that directed verdict would be justified (2d Steinberg) - BUT: D may be excused for using scenes a fairedetails which, as a practical matter, are indispensable or standard in the treatment of a given topic (2d Steinberg)

9th Circuit - Both extrinsic and intrinsic tests must be met - extrinsic test for ideas: all manifestations, analytic dissection and expert testimony okay (9th Krofft), as well as summary judgment (Cavalier) o Is there substantial similarity of ideas? (Kroft) o Is there substantial similarity of all objective manifestations of expression that are protectable? (Cavalier, Swirsky) - intrinsic test for expression: analytical dissection and expert testimony are NOT appropriate here (Krofft) o Is there substantial similarity of expression? Depends on response of ordinary reasonable person (Kroft) - tests get conflated: main difference is that pre-jury dissection, expert testimony, and SJ are allowed via the extrinsic test (9th Cavalier) Computer programs - apply abstraction/filtration test to Ps program and then Ds to avoid unnecessary inquiry (2d Altai) - expert witnesses are optional (2d Altai) - courts should (1) "dissect the allegedly copied programs structure and isolate each level of abstraction, (2) successively filter out protectable expression from non-protectable material, and then (3) compare what remains as the core of protectable expression (2d Altai) - non-protectable material includes (i) elements dictated by efficiency (merger), (ii) elements dictated by external factors (scenes a faire, e.g. compatibility requirements, design standards, industry demands, widely accepted programming practices), and (iii) elements taken from the public domain (2d Altai) - at highest level of abstraction, analyze interrelationships among elements (2d Softel) Has there been infringement on a musical work? did D *take+ from P's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such *work+ is composed, that D wrongfully appropriated . . . ? (2d Porter) owners of musical recordings only retain rights under 106(1), (2), (3), and (6) ( 114(a)) Covers o Copyright sets up compulsory licensing scheme for covers of musical works, with some limitations: no web streaming, musical work previously distributed to the public, no changes in basic melody or fundamental character of the work (115) o Soundalike recording is not a violation of the reproduction and derivative works rights in sound recordings (114) o owners of musical recordings retain rights over re-recording and remixing, ( 114(b)) Sampling o De minimis (sampling (NOT quantitatively or qualitatively significant portion of the work) of a musical composition (i.e. when the average audience would not recognize appropriation) does not constitute copyright infringement (Newtown, 9 th Cir.) o But any sampling of a sound recording infringes the sound recording copyright owners exclusive right to sample his or her own recording (6th Cir., Bridgeport) Digital transmission o webcasting services are subject to different requirements depending upon interactivity ( 114(d), Launch)

o When the public performance happens by digital audio transmission (online streaming), the transmitter needs authorization from both the copyright holders in the musical work and the sound recording (106(6)) Has there been infringing derivation? - Quantitative: did the work cross a de minimis quantitative threshold for similarity (e.g. quotations)? - is the work qualitatively based on original, protectable expression? (2d Castle Rock) - BUT: this test generally conflates the reproduction and derivation right - AND: other courts say derivation right only infringed if work does recasts, transforms, or adapts while still representing original work (S.D.N.Y. Warner Brothers) - is the work likely to fill a market niche that D would in general develop? (2d Castle Rock) - does the work constitute a sequel to the original work? (9th Micro Star) - 2d Circuit: substantial similarity - 9th Circuit: substantial incorporation Recast, transform, adapt - The protection of derivative rights extends beyond mere protection against unauthorized copying to include the right to make other versions of, perform or exhibit work (and recast, transform, or adapt) (9th Mirage v. A.R.T.) - First Sale Doctrine only extends to the original version of the work (wholesale alienation of good). o chopping up a book and selling pages as art prints constitutes RTA (9th Mirage v. A.R.T.) o Bonding prints to ceramic tiles does not constitute RTA since work has not changed in the bonding process (7th Lee v. A.R.T.) - about custom: this would illegalize most forms of art collecting, framing, and display Fixation requirement - a derivative work must incorporate a protected work in some concrete or permanent form, but doesnt have to be fixed (9th Galoob) - A derivative work must exist in a "concrete or permanent form," and must contain a substantial amount of protected material from the previous work. (9th Micro Star) - this concrete or permanent form may include referential MAP files (9th Micro Star) Has there been infringing distribution? - mere making available is not distribution; distribution requires dissemination (D. Minn. Thomas) - is the distribution covered by the First Sale Doctrine? (Straus, 109) - Copyright owners cant ordinarily control distributions beyond the first sale of a copyrighted work. (Bobbs-Merrill), 109(a)) w/ the exception of phonorecords and computer software ((109(b)) - When a work is lawfully manufactured abroad and subject to a valid first sale, the first sale doctrine applies as well. (Kirtsaeng) - First Sale Doctrine may trump 602 importation restrictions if product bought domestically ( Quality King) - Is the distribution covered under one of the privileges? - Some copying by non-profit libraries and archives (108) - Some copying by owners of computer programs (117) - Ephemeral copies by broadcasters (112, 118) - Innocent infringers (405(b)) - Fair use

Has there a violation of moral rights? Under the Lanham Act? - Has there been unauthorized editing of an underlying work (creation of a derivative)? o Can make out a claim of misrepresentation of a product that creates a false impression of its origin rights of attribution under the Lanham Act 43(a) (Gilliam) o But the Lanham Act protects attribution only for the one who originated the tangible product, not the underlying creative ideas (Dastar) o Works whose copyright has expired can be copied without attribution to the author (Dastar) Under VARA? - VARA protection afforded when work 1) qualifies as visual work of art under 101 and 2) Is intended for exhibition purposes only (106(A) (Lilley) o Only author can exercise these rights o Rights granted only to certain physical embodiments under 101, not expression o Violations laid out in 106 o Destruction of a work of recognized statute if it is both meritorious and recognized by art experts, community members or a cross-section of society (Martin) - Ct. will look at intent when developing photographs, not just when theyre taken (Lilley) Have the copyright holders public performance rights been infringed? - Is it a literary, musical, dramatic, choreographic work, pantomime, motion picture or audiovisual work? (106(4)) - did D perform or display the work in a place open to the public or analogous space ? ( 101, 3d Columbia Pictures) o Performance or display is public if 1) the place in which it takes place is public; 2) the place is accessible to a large number of people (determined by size and composition of the audience; or 3) it is transmitted to 1) or 2) or the public (even in different places and times) - if the performance was transmitted to a single person (i.e. DVR), that is not public (even if other people watching the same work in another copy (2d Cartoon Network) - the First Sale doctrine does not limit secondary performance rights ( 101, 3d Columbia Pictures) - Performance rights limited by 109(c), 110 [see below], 111(d), 119 Have the copyright holders public display rights been infringed? - Is it a literary, musical dramatic, choreographic, pantomime, pictorial, graphic, sculptural work or the image of a motion picture or other audiovisual work? (106(5)) - Is it an online display? If so, is it fixed? (9th Perfect 10) - display rights are largely superseded by First Sale display permission as long as viewers present at place where the copy is located ( 109(c)) - Display rights also limited by 109(c), 110 [see below], 111(d), 119 Does the performance or display fall within a statutory or legal exemption? - (1)(2) classrooms, (3) religious worship, (4) & (10) charitable purpose, (5) broadcasting within FCC regulations, (6) agricultural fairs, (7) advertising work, (8) (9) disabled, (11) censorship ( 110) Do provisions of the DMCA apply? - has D circumvented a technological measure that effectively controls access to a copyrighted work? ( 1201(a)(1))

o 17 USC 1201 prohibits only forms of access that bear a reasonable relationship to the protections that the Copyright Act otherwise affords copyright owners. Does not create a new set of property rights. (Chamberlain) o 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 work 1201(a)(3) o 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 1201(a)(3) has D manufactured, imported, trafficked or marketed a device produced for the purpose of circumventing technological measure that controls access to a copyrighted work?( 1201(a)(2)) If access to the protected work is lawful, has D trafficked or marketed a device produced for the purpose of circumventing [a technological measure] that effectively protects a right of a copyright owner under this title? (i.e. ( 1201(b)(1)) o Ex. Of lawful access: purchase of DVD; unlawful: marketing DVD decryption device o reverse engineering for interoperability explicitly allowed (( 1201(f)) o Individual circumvention not a violation computer programs are protected speech, but fair use of encrypted copyrighted material not protected under the DMCA (S.D.N.Y. Reimerdes) o BUT: linking to hacks is legal absent clear and convincing evidence that (a) linker knows the tech is on the site, (b) linker knows the tech is illegal, and (c) linker intends to distribute it (S.D.N.Y. Reimerdes) DMCA doesnt apply when the copyrighted work is accessible other than through a technology protection measure (6th Lexmark) 1201(a)(2) plaintiffs must prove 1-5 to establish prima facie case. If prima facie established, then only one of 6(i)-(iii) need be established. o (1) ownership of a valid copyright o (2) that is effectively controlled by a technological measure that has been circumvented o (3) and that third parties can now access o (4) without authorization, in a manner that o (5) infringes or facilitates infringing a right protected by the Copyright Act, because of a product that o (6) the defendant either (i) designed or produced specifically for circumvention, (ii) made available despite only limited commercial significance other than circumvention, or (iii) marketed for use in circumvention of the controlling technological measure (Chamberlain)

LIABILITY Has direct infringement occurred? - was an element of volition or causation present (not automated response at user request)? (N.D. Cal. Religious Tech Center) - third party ISPs and board operators cannot be held liable for direct infringement ( RTC) - DVR service provider cannot be held liable for direct infringement

Has indirect infringement occurred? - vicarious: did D have (1) the right and ability to supervise the infringing activity and (2) a direct financial interest in such activities? (9th Fonovisa, 2d Gershwin) - Must have a legal right to stop or limit activity, as well as practical ability to do so, e.g., filtering technology (9th Perfect 10) - ability to withdraw payment does not equal ability to control (9th Perfect 10 v. Visa) - indirect profits that are sufficiently large or predictable can count as direct profits (Fonovisa) - lack of knowledge of activity is not a defense to VL (Fonovisa) - contributory: did D know about the infringement and induce, cause or materially contribute to the infringing conduct? (9th Fonovisa, 2d Gershwin) - requires actual knowledge of specific infringing material and reasonable and feasible means to limit infringement (9th Perfect 10) - BUT: may be liable if failure to purge material that operator knows is infringing (9th Perfect 10) - AND: services that magnify borderline infringing behavior are contributory (9th Perfect 10) - requires direct connection to infringing activity, merely making it easier for infringers to be profitable isnt enough to materially contribute to infringement (9th Perfect 10 v. Visa) - providing the site and facilities for a known infringing activity is sufficient (9th Fonovisa) Is the defendant vicariously or contributorily liable as a device manufacturer or OSP? - does the device have no commercially significant noninfringing uses? (Sony) o No contributory infringement for a device manufacturer if the product is widely used for legitimate unobjectionable purposes. It need merely be capable of substantial noninfringing uses. (Sony) o Split on what constitutes substantial anecdotal instances of non-infringing use sufficient and capable of sustainable or commercially significant noninfringing uses. overwhelming infringement and no reasonable prospect of substantial noninfringing use likely to develop over time (narrows doctrine) (Grokster) - does the device allow specific knowledge of infringement and ability to purge? (9th Napster) o Absent specific information which identifies infringing activity,a computer system operator cannot be liable for contributory infringement merely because the structure of the system allows for the exchange of copyrighted material. (Napster) o encryption to prevent specific knowledge amounts to willful blindness (7th Aimster) - has D distributed the device with the object of promoting its use to infringe copyright? ( Grokster) o design immunity when theres responsible intent imputed from responsible design (Grokster) o promotion must be shown by clear expression or affirmative steps to foster infringement (Grokster) Insufficient evidence: mere knowledge of infringing potential or of actual infringing uses, ordinary acts incident to product distribution Sufficient: purposeful, culpable expression and conduct BUT: this arbitrarily raises the bar for noninfringing use (Grokster dissent) - has OSP complied with DMCA requirements for safe harbor protection? ( 512) [see outline] o Did they have knowledge? 512(c): Information residing on systems or networks at direction of users. Extends to functions performed for the purpose of facilitating access to userstored materials (Viacom)

512(c)(1): In general. 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 512(c)(1)(A) (i) one must not have actual knowledge of specific infringing material (subjective knowledge) (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent (objective reasonableness standard for knowledge, youve been put on notice) (Viacom); or (iii) If they get knowledge, they act expeditiously to remove the material 512(c)(1)(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 to be disqualified, the right and ability control infringing activity requires more than the ability to remove or block access to materials on a service providers website. Requires exerting substantial influence on users activities (Viacom) 512(c)(1)(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. OSPs dont need to monitor, but willful blindness tantamount to knowledge (512( m)) o Did the notice follow DMCA standards? Must be written communication provided to the designated agent of the OSP Contact information for the complaining party Identify alleging infringing material w/ information specific enough for the OSP to find it Good faith belief that material not authorized State under penalty of perjury that theyre acting on behalf of copyright owner NOTE: Even if notice is procedurally defective, OSP may be considered to have notice. Not all courts hold that this is so, but some courts do. o Did they have compliant practices? Adopt, implement and inform subscribers of a termination policy for repeat infringement Notify subscriber of infringement Subscriber can send counter notification OSP has to notify the original complainant and has to restore the material within 10 business days unless it first receives notice that a lawsuit has been filed Accommodate and not interfere with standard technical measures to locate infringing works Designated an agent and file information for that agent with the Copyright office

If transmitting material, transmission be initiated by someone other than the OSP without modification of its content; may remain on system for a period of time If system caching, must be made available online by a person other than the service provider and storage must be automatic. o NOTE: To protect public and subsequent creators, 512(f) provides a cause of action against one who knowingly materially misrepresents that material or activity is infringing to get it taken down. Under 512(c)(3)(A) requires that a copyright owner issuing a take-down notice consider fair use doctrine (as outlined under 107) in formulating a good faith belief that use of material in the manner complained of is not authorized by the copyri ght owner, its agent or the law. (Lenz) o

COPYRIGHTABILITY Is it copyrightable according to 102(a)? - is it an original work of authorship fixed in any tangible medium of expression, now known or later developed, from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device? - is it a (1) literary work; (2) musical work, including any accompanying words; (3) dramatic work, including any accompanying music; (4) pantomime or choreographic work; (5) pictorial, graphic, and sculptural work; (6) motion picture or other audiovisual work; (7) sound recording; or (8) architectural work? Is it fixed? - is the work embodied in a manner sufficiently permanent or stable to permit it to be perceiv ed, reproduced, or otherwise communicated for a period of more than transitory duration ( 101) - if AV, is the AV repetitive and constant from display to display? (3d Williams) - if a computer program, is the work copied to RAM? (9th Cir MAI) - is the embodiment more than transitorye.g. longer than 1.2 seconds? (2d Cartoon Network) - is it being simultaneously recorded and transmitted? ( 101 fixation) - if not, is it being bootlegged? ( 1101(a)) Is it original? - is it the product of . . . intellectual invention? (Burrow-Giles) - would finding it unoriginal constitute an arbitrary aesthetic judgment? ( Bleistein) - does it possess at least some minimal degree of creativity? (Feist) - the phone book is not subject to copyright - BUT: taxonomies may be copyrightedclassification is a creative endeavor (Delta Dental) - if it is a copy, are there sufficiently distinguishable variations, even accidental ones? (2d Alfred Bell) - merely very good copies that took a lot of work and skill are not original (10th Meshwerks) - BUT: possible exception for high-quality fine art reproductions with public benefit (S.D.N.Y. Alva) - if it is a photograph, is it original in rendition, timing, and subject creation? (S.D.N.Y. Mannion) - A work whose elements originate in nature cannot be original work of authorship (notions of authorship and fixation are intertwined with originality). (Kelley)

It may be original but it is not copyrightable if: - it is an idea rather than an expression (Selden) - these should be patented - the expression is the only way to communicate the idea (doctrine of merger, 1st Morrissey) - e.g. an instruction manual - BUT: some circuits allow thin copyright on merged works (9th Johnson Controls) - it is an historical account/interpretation of historical facts (2d Hoehling) - it is uncopyrightable by regulation (37 C.F.R. 202) - e.g. names and short phrases; blank forms; calendars; lists of public information; typeface If it is a derivative work: - does it contain an original contribution not present in the underlying work of art? (2d Batlin) - is there a putative exception for high-quality reproductions with public benefit? (S.D.N.Y. Alva) - are the original aspects of the derived work more than trivial and not purely mechanical? (9th Genesis) If it is a compilation: - Is it a map (Mason) or database (Bellsouth, CCC) - did choices as to selection and arrangement . . . entail a minimal degree of creativity? ( Feist) - even if individual elements are uncopyrightable or not infringed, is the total concept and feel of the compilation sufficiently original? (9th Roth Greeting Cards) - did the compilation involve discretion, judgment, interpretation, and skill? (5th Mason) - does variation in similar compilations prove that there is a range of possible expressions? (5th Mason) - are there at least four separate elements in the compilation? (Copyright Office) If it is an architectural work: - is it original in its overall form as well as the arrangement and composition of spaces and elements (101, D.Md. Nelson-Salabes) - similar to compilations: thin protection for originality in selection and arrang ement (11th Intervest) - BUT: actually unique designs (e.g. Epcot Center) may be protected - ALSO: architectural work copyright does not extend to pictures or destruction of buildings ( 120) If it is a database: - obvious arrangements of publicly available information are not copyrightable (11th Donnelly) - original arrangements of data involving professional judgment and expertise are (2d Maclean Hunter) - merger doctrine avoided if ideas are in the weaker categoryinfused with opinion (2d Kregos)

If it is a useful article: - is the expression physically separable without impairing utility? (Mazer) - is the expression conceptually separable as a creative work? A. (1) is the design primarily aesthetic v. functional? (2) can the work be sold as art? (2d Keiselstein) B. no copyright if the aesthetic and utilitarian features are inextricably intertwined (2d Barnhart) C. can the expression be conceived separately from the utilitarian function? (2d Barnhart dissent) D. no copyright if form is influenced in significant measure by utilitarian concerns (2d Brandir) E. would a reasonable observer perceive an aesthetic concept unrelated to use? (2d Brandir dissent) - NOTE: this analysis is only necessary for PGS works that are useful articles

- ALSO: these are difficult to determine while respecting the Bleistein principle If it is a computer program: - object code as well as source code may be copyrighted as a literary work (3d Apple Computer) - literal code is protected, not structure, organization, etc. (Altai) - unless computer program viewed as compilation and individual elements analyzed as part of a aggregate due to their arrangement and selection - command menus are uncopyrightable methods of operation ( 102(b), 1st Lotus) - Supreme Court is ambiguous on patentability of software (Bilski) If it is a fictional character: - is the character the story being told rather than a pawn in a plot? (C.D. Cal. MGM, 9th Sam Spade) - is the character sufficiently unique and especially distinctive (C.D. Cal. MGM, 2d Air Pirates) - is the characters distinctively delineated? (D.Conn. Titan Sports) and in sufficient detail (X one X) - BUT: does this clash with the right that performers have in their own personas?

OTHER DEFENSES Is there a fair use defense? - weigh o (1) the purpose and character of the use; Is it a favored use? (107): criticism, comment, news reporting (Harper & Row, Nunez), teaching, scholarship, or research Commercial use, even by a nonprofit, is disfavored (Harper & Row) Bad faith (using stolen manuscript) is disfavored (Harper & Row) Biographies, historical works favored (Nunez) Parody is favored (Campbell) when use is transformative (e.g. parody) under prong (1), prongs (3) and (4) are lowered (Campbell) Work must be transformative (further purpose, different character, new expression, message or meaning, comments or mimics original), not supplant the original (Campbell). The more transformative, the greater the weight of this factor as against the others. (Campbell) BUT: transformation is difficult to adjudicate without violating Bleistein documentary use may be transformative use (2d Bill Graham) o (2) the nature of the copyrighted work protection narrower for non-fiction and historically important material (1st Nunez, S.D.N.Y. Time) protection stronger for unpublished workFirst Am publication right (Harper & Row), but dispositive (107) Not helpful factor for assessing parody (Campbell) or if use is generally transformative (as found in analysis of prong 1)(Bill Graham) o (3) the substantiality of the portion used

Taking the heart of a work, even if it is qualitatively small, cuts against fair use. (Harper) Parody requires the new work to conjure up just enough of the old work often its most distinctive featuresand then to inform the audience of the new work (Campbell) But parodist cant appropriate more than is necessary to recall or conjure up the original work (Walt Disney v. Air Pirates) when work is not subject to apportionment (e.g. photos), prong (3) is neutral (1st Nunez) o (4) the effect of the use upon the market for or value of the work ( 107) Early on, its called the most important factor (Harper & Row), but that is later minimized (Campbell) Burden on D to show that there was no market harm. (Campbell) If use is transformative, market harm may not be so readily inferred because the use likely wont act as a substitute for the original. (Campbell) But parody that criticizes the work so well that people are not interested in the original anymore is not a harm cognizable under the copyright act. (Campbell) Nor is harm to any transformative market (Bill Graham) Must be harm to traditional market. (Bill Graham). If its a derivative that pulls audience away from other derivatives, this is a cognizable harm. But market for derivatives only those that Plaintiff would likely pursue. (Campbell) If original freely available, will weigh against market harm.

Technological interchange - Prong 2nature of copyrighted workis often the most important in these cases. - when unprotectable aspects of work are inaccessible without disassembly, prong (2) favors fair use (9th Sega, 9th Sony) - this has an antitrust motivation: supports innovation and interoperability - transformativeness favoring fair use can be based on functionality rather than expression (Perfect 10 v. Amazon) - online search indexing is significantly transformative, although unrelated to expression (9th Perfect 10)

Market failure - fair use should be permitted when: (1) market failure is present (high transactions costs, positive externalities, copyright owners anti-dissemination interests), (2) Ds use is socially desirable, (3) award of fair use would not cause substantial injury to the incentives of the copyright holder (Wendy Gordon) - 4th Factor o If the intended use is for commercial gain, a likelihood of harm may be presumed (Sony) o But if its for a noncommercial purpose, PLAINTIFF must demonstrate harm by a preponderance of the evidence (Sony) o Increased sales of copyrighted material attributable to unauthorized use shouldnt deprive the copyright holder of the right to license the material (Napster) o Copyright holder cannot preempt a transformative market (Hathitrust)

when markets exist for payment, this weighs against fair use and makes right to payment legally cognizable (Texaco, Princeton University Press) o BUT: circular argument? Market doesnt really exist. There is a circular argument where the market cant crystalize until the fair use is rejected and you cant reject the fair use unless theres a market. ( Texaco dissent)

Is a copyright misuse defense available? - breach of contract claim? Misuse not a defense. (Napster) - is plaintiff using the right asserted contrary to the public interest? (3d Video Pipeline) - generally relates to anticompetitive behavior, but may go further (Video Pipeline, Napster) - BUT: cant be generalized antitrust violations. Anticompetitive behavior must be in a nexus with plaintiffs power over copyrighted material (N.D. Cal. Napster) - disrupting copyrights goal to increase the store of creative expression for the public good may count (Napster) - Copyright not invalidated, merely unenforced during the period of misuse (3d Video Pipeline) -To defend on misuse grounds, the alleged infringer need not be subject to the purported misuse. (3d Video Pipeline) REMEDIES Is injunctive relief available? - on such terms as it may deem reasonable to prevent or restrain infringement of a copyright ( 502(a)) - apply EBay factors with an eye toward the special situation of copyright: (1) irreparable injury; (2) damages inadequate compensation; (3) balance of hardships favors injunction; (4) public interest would not be disserved (4th Galloway) - pre-Ebay, injunction followed from past infringement + threat of continuing violations (3d MAI); or only in special circumstances when great public injury would result (9th Abend) - BUT: this is disfavored as it creates a presumption of irreparable harm based on mere likelihood of future infringement (N.D. Cal. Grokster) Are damages available? - plaintiffs may receive actual damages . . . and any profits . . . attributable to the infringement (but no double counting!) ( 504(b)) - plaintiffs may receive direct damages, indirect damages, and prejudgment interest (9th Frank Music, 504(b)) - P presents proof of revenue; D must present deductible expenses, elements of profit attributable to factors outside of infringement, and creative input; doubts favor P (9th Frank Music, 504(b)) - defendants are entitled to SJ w/r/t any revenue for which (1) there exists no conceivable connection between the infringement and those revenues; (2) despite the existence of a conceivable connection, only speculation is offered in regard to a causal link (4th Bouchat) - BUT: other courts shift burden to D to disprove profit-infringement connection by a preponderance (4th Bouchat dissent, 4th Walker) Statutory damages

- if copyright is registered in advance, between $750 and $30k available per work ( 504(c)) - up to $150k for willful infringement, down to $200 for innocent infringment - willfulness = knowledge that ones conduct constitutes copyright infringement (6th Zomba) - those who infringe innocently must do so (1) reasonably, and (2) in good faith - large statutory damages (44:1) are not violations of due process (6th Zomba) - Williams controls: Qs of whether awards are so severe and oppressive as to be wholly disproportionate to the offense (113:1 in railroad case upheld) (Zomba) - BMW v. Gore factors for punitive damages dont apply: (1) degree of reprehensibility, (2) disparity between harm and award (SD imposed in lieu of actual damages), (3) difference between award and civil penalties for comparable cases (statutory damages are civil penalties) (Thomas-Rasset) - Eight amendment excessive fines clause only applies to government payments (Zomba) Do criminal provisions apply? - liability requires willful infringement + purpose of financial gain or commercial advantage ( 502) - financial gain includes receipt, or expectation of receipt, of anything of value, including the receipt of other copyrighted works ( 101, overrules LaMacchia) - willful infringement entails voluntary, intentional violation of a known legal duty (D. Neb. Moran) - Intent is subjective, not objective/reasonable person, BUT the more unreasonable the belief, the more the factfinder will see it as a simple disagreement with the law and a violation. (D. Neb. Moran) - If its not criminalized in the statute, cant

CONTRACTS Was there a license or transfer of copyright? - was the document of transfer in writing and signed by the owner of the rights conveyed? ( 204) o Transfers can be recorded in the Copyright office and can establish a priority of ownership if there are conflicting claims (205) - was there an implied license for use: (1) did licensee request the creation of the work; (2) did licensor deliver it; (3) did licensor intend that the licensee copy/distribute/use the work? (9th Gagnon) o Non-exclusive licenses need not be in writing to be valid (Gagnon) o Was there intent? (Gagnon) Whether the parties were engaged in a short-term discrete transaction as opposed to an ongoing relationship (ongoing relationship suggests theres no intent, but may be outweighed by other factors) Whether the creator utilized written contractsproviding that copyrighted materials could only be used with the creators future involvement or expression permission; and Whether the creators conduct during the creation or delivery of the copyrighted material indicated that use of the material without the creators involvement or consent was permissible.

Did use fall within contract language? - broad language (any manner, medium or form) should be construed against licensor where new use was foreseeable at the time of contracting (burden on copyright owner to exclude new use) (2d Boosey)

- BUT: broad language may be construed against licensee in cases when new use is in a different medium not mentioned in contract (S.D.N.Y. Random House) - this incorporates efficiency and public policy; might be federal common law re: copyright/contract - licensing contracts may constitute transfers of ownership, depending upon terms (W.D. Wash. Vernor) - Is the agreement labeled a license - Did the copyright owner significantly restrict the users ability to transfer the software o Did the agreement provide that the copyright owner retain title to the copyrighted work o Required the return or destruction of the work o Required the transferee to maintain possession of the work for the agreements duration - Did the copyright owner impose notable use restrictions o Forbade duplication of work open source copyright holders may pursue copyright infringement claims for violations of licenses that allow for modifications, provided the license language indicates conditions (Fed. Jacobsen) o there must be a nexus between the condition and the licensors exclusive rights to copyrightotherwise its a covenant which creates a contract. (MDY Industries) contracts may limit reverse engineering right (Fed. Bowers) - BUT: dissent argues vehemently that this eviscerates fair use policy

PREEMPTION Is a state law preempted? - state copyright laws were compatible with federal copyright before 1976 Act (Goldstein) - is it (1) equivalent to an exclusive right under 106, and (2) within the subject matter of 102? ( 301, 7th Baltimore Orioles) - State is not free to eliminate the fair use defense, but can permit parties to contract away a fair use defense or agree not to engage in uses of copyright material permitted by the copyright law, if contract freely negotiated - Enforcement of shrinkwrap contracts not preempted (ProCD) POLICY

Fair Use Copyright law embodies a bargain. It gives copyright holders a set of exclusive rights for a limited time period as an incentive to create works that ultimately enrich society as a whole. In exchange for this limited monopoly, creators enrich society by, hopefully, contributing to the growth of science, education and the arts. However, copyright law does not give copyright holders complete control of their works. Copyrighted works move into "the public domain" and are available for unlimited use by the public when the copyright term expires (see Public Domain FAQ). But even before works enter the public domain, the public is free to make "fair uses" of copyrighted works. By carving out a space for creative uses of music, literature, movies, and so on, even while the works are protected by copyright, fair use helps to reduce a tension between copyright law and the First Amendment's guarantee of freedom of expression. The Supreme Court has described fair use as "the guarantee of breathing space for new expression within the confines of Copyright law."