Preamble techniques.

Any extra word in a claim "can and will be used against you in a court of law." Thus on the one hand, recitations in a detailed preamble may unduly limit the claim in unintended ways. By contrast, a generic preamble can never get you in trouble in that regard.


On the other hand, detailed-preamble claims can serve any number of useful purposes. The trick is to draft detailed preambles with our eyes open.

The pivotal issue is not the length of the preamble, per se, but coming to grips with what legitimate function (if any!!) is served by any particular preamble detail—be it a single word, a phrase or a whole paragraph.

It is important to note that a claim's preamble limitation can be deemed limiting when one goes to enforce the claim, even though the preamble limitation was given no patentable weight during prosecution, and thus did not help to secure the claim's allowance. Such a preamble limitation will have given up claim breadth without having received anything of benefit in return.

Consider the following claim to an automobile floor mat.

An automobile floor mat comprising

a semi-rigid monolayer having a gradually sloping edge portion extending outward from a central section, said edge portion terminating in a lip disposed at an elevation above the central portion, the lip having a plurality of indentations disposed a regular intervals around its periphery.

There is nothing in the body of this claim that requires the claimed structure to be an automobile floor mat. Thus an examiner may well regard "automobile" as being a mere statement of intended use and may reject the claim based on prior art disclosing the claimed "semi-rigid monolayer" whether or not the prior art structure was designed for use in an automobile. Or intended to be placed on a floor. Or perhaps even whether it was intended to be used as a mat.

Suppose, on the other hand, that there is no such prior art, so that the claim is allowable as presented above. Although the descriptive label "automobile" was of no help in securing allowance of this claim, it may come back to bite the patent owner when asserting the claim against suppliers of locomotive cab mats that cannot be used in automobiles (because, for example, they are too big). The patent owner will argue that the term "automobile" should be given no limiting effect because it is not necessary to give "life, meaning, and vitality" to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). That argument may or may not carry the day, depending on how the Markman judge understands what the gives-life-meaning-and-vitality test actually means and how that test applies to the invention at hand.

In any event, the Opposing Team will have a field day with this claim, hammering on the notice function that a patent's claims are supposed to serve and arguing that "if the applicant didn't intend to be limited to automobile floor mats, why did he put it in the claim?" The prosecuting attorney makes the job of the licensing/litigating attorney all the more difficult by opening the door for such an argument to even be raised.

Drafting this claim with a generic preamble, viz.,

A manufactured article comprising,

a semi-rigid monolayer…

may thus save everyone a lot of grief. Indeed, it may save the day.

Descriptive labels and modifiers, such as "automobile" and "floor" in the above example, should always be suspected as creating an infringement loophole without providing any countervailing patentability benefit. Other "usual suspects" are advantages and/or intended uses of the invention. Indeed, the reader should have little trouble in conjuring up reasonable technological embodiments in which claims having the italicized preamble language could be argued to be non-infringing even if the limitations of the body of the claim are met:


An optical system in which at least two out of phase light beams of different frequencies are combined with improved output efficiency, the system comprising…

An on-chip debug system for a programmable VLSI [very-large-scale-integration] processor, the debug system comprising…

A high speed rotor of a type applicable for use with a flywheel, the rotor comprising [no flywheel mentioned in the rest of the claim]

This is not to say that a detailed preamble is necessarily a bad thing. For example, certain intended-to-be-limiting recitations sometimes fit better in the preamble than in the body. In that situation, recitations that call out to be placed in the preamble during the course of the drafting the overall claim invariably tie into other limitations in the claim body and/or replicate them explicitly. Such preamble recitations will thus certainly give life, meaning and vitality to a claim and thus can be effectively relied upon in arguing the claim’s patentability.

Below is a claim that uses Dennis’s exemplary detailed preamble. Note how every limitation in the preamble ties into the body of the claim.

A method for content selection of digital media stored in a memory…, the method comprising,

assigning an individual portion of the digital media to a particular portion of the memory based on whether or not the content of that portion includes video data,

selecting one of the individual portions by …..

It is helpful to start out with a generic limitation, and not packing a limitation into the preamble until the structure of the evolving claim makes it clear that it is needed there. This helps protect the preamble from details that can only hurt and not help.

Copied from http://www.patentlyo.com/patent/2009/11/patent-prosecution-tips-drafting-preambles.html#more

Displaying web page creation date in google

You're practicing a little Google-fu to figure something out, and the top few results look like they're exactly what you're looking for. The problem: When you get to the page, they're completely outdated.

To make sure you know when a page was published before you visit the site, just add the following to the end of the URL of your search results:

&as_qdr=y15

So, for example, the following URL searches Google for "Hackintosh" and displays datestamps on every result:

http://www.google.com/search?q=hackintosh&as_qdr=y15

When you're searching for something and the date is important—you probably don't want to follow an outdated Hackintosh guide, for example—you can quickly identify newer web pages. The operator you add to the end of the URL returns web pages indexed by Google over the past 15 years, but very old items will list as January 31, 2001.

http://lifehacker.com/5239562/display-the-date-a-web-page-was-published-in-search-results

Google can reorder search and news results from the last day, week, a few months, or entire year by adding a small string to the end of the search URL. Just add this string—&as_qdr=d—to the address bar and hit enter. You'll get a custom drop-down box that lets you re-order results based on date. It's great for getting past the same top results you've already looked through, as well as grabbing only the newest links related to gadgets, software, or whatever else you're searching. Sadly it doesn't work on Google Images, but let us know in the comments if it does work on other Google searches.

http://lifehacker.com/384375/filter-google-results-by-date-with-a-url-trick

Copyright outline

Copyright Law
Spring 2001
Professor Susanna Fischer
Class Outline by
Christopher S. Lee

Exam Notes
1. 3 Hours
2. Problem Questions
3. Apply CR Act to problems
4. Policy Questions
5. Rule-based
6. Know Statutes well
7. Open Book

Answers to Frequent Asked Questions
1. Copyright (CR) protects original works of authorship including literary, dramatic, musical, and artistic works such as poetry, novels, movies, songs, computer software and architecture.
2. CR does NOT protect facts, ideas, systems, or methods of operation
3. CR may protect the way things are expressed.
4. Copies of all works under CR protection that have been published in the U.S. are required to be deposited in the Copyright Office within three months of the date of first publication.
5. Reasons to Register CR
a. To have facts on public record and certificate of registration.
b. Eligible for statutory damages and attorney’s fees.
c. Prima facie evidence if registered w/in 5 years of publication.
6. Registering CR
a. Application Form
b. $30 fee
7. Deposit
a. Unpublished – one copy
b. Published – two copies
c. Photographs for visual works
8. Works created after January 1, 1978 are not subject to renewal.
9. Architectural works became subject to CR protection on December 1, 1990.
10. Only the transferee (by will, by inheritance) can register CR in a diary. CR is the right of the author of the work or the author’s heirs or assignees, not the one who owns the physical work itself.
11. The creator of an original expression in a work is the author. The author is also the owner of CR unless there is a written agreement by which the author assigns the CR to another person or entity, such as a publisher. In cases of works made for hire the employer or commissioning party is considered to be the author.
12. Publication
a. 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 works does not itself constitute a publication.
b. Publication occurs on the date on which copies of the work are first made available to the public.
c. Publication is not necessary for CR protection.
d. Publication occurs at the discretion and initiative of the CR owner.
13. The owner may transfer all or part of the rights in a CR work to another.
14. Not copyrightable:
a. Names
b. Titles
c. Slogans
d. Short phrases
e. Ideas
f. Concepts
g. Systems
h. Methods
15. Fair Use for commentary, criticism, news reporting, and scholarly reports.
16. Change in own work to make a new claim of copyright:
a. Substantial and creative
b. More than just editorial or minor changes
c. New derivative work
17. You cannot claim CR to another’s work unless you have the owner’s consent.
18. CR notice is now optional.
19. Royalties
a. Private arrangement between author and publisher
b. Copyright licensing organizations
c. Publications rights clearinghouses
20. CR protects the original photograph, not the subject of the photo.

Copyright Duration
1. Works created after January 1, 1978
a. Life + 70 years
b. Joint work – 70 years after life of last surviving author
c. Anonymous, Pseudonymous, Works for Hire
i. 95 years from year of 1st publication; or
ii. 120 years from year of creation; whichever expires 1st
2. Created but not published before January 1, 1978
a. Life + 70 years
b. No expiration earlier than December 31, 2002
c. If published before December 31, 2002, the term will not expire before December 31, 2047.
3. Pre 1978 works in original or renewal term, total term extended for 95 years from date of original CR.

CR Basics
1. Bundle of rights
a. Exclusive Rights
b. Distribution
c. Display
d. Reproduction
2. Right to create and distribute
3. Sect. 106 – Exclusive Rights
a. Public Performance
b. Recordings
c. Separate Right of Performance
4. Exclusive v. Non-Exclusive Transfers
5. Limited duration, then falls to public domain
6. Constitution, Article I, Section 8
7. Trends
a. Increase in CR duration
b. Increase in CR extensions
c. New technologies forcing CR to adapt

Amendments to the 1976 Act
1. Visual Rights Recording Act (1990) – Moral Rights
2. Architectural Works Protection Act (1990) – Buildings
3. Digital Millennium Copyright Act (1998) – Software

Policy
1. CR benefits
a. Artists
b. General Public
c. Assignees and Licensees
2. CR burdens
a. Other artists
b. General Public
3. Economic Analysis

Originality
1. Burrow-Giles v. Sarony (1884)
a. Photo technology
b. Lithography
c. Idea of writing expanded over years
d. Creativity involved making photo
e. Writing v. originality
2. Bleistein v. Donaldson
a. Poster creator suing copier
b. Printer v. Printer
c. Advertisement v. Artistic Expression
d. J. Holmes – Okay to CR ads
e. Won’t establish standard for creativity
f. Keys
i. Originality required for CR
ii. Protect extent of originality
iii. Originality is not Novelty
3. Bell v. Catalda (1951)
a. Engravings
b. Old master payments
c. Originality issue
d. Author must construct something of his own.

CR and other IP
1. CR
a. Originality – Original work of authorship
b. Fixation – In a fixed, tangible medium of expression
2. Trademark
a. Color
b. Source
c. Description
3. Trade Secret
a. Formula
b. Contractual Obligation
4. Patent
a. Novel
b. Invented
c. Useful
d. Non-Obvious
e. Non-Artistic

Originality
1. Low threshold
2. More than trivial variation
3. Recognizable as “own” contribution to work
4. Slippery concept
5. Magic Marketing v. Mailing Services of Pittsburgh (1986)
a. Issue – CR of envelope
b. CT – Envelope not an original work
c. Insufficient originality for CR protection
6. Sweat of the Brow Doctrine – Not upheld by SC
7. Zapruder film of Kennedy Assignation – CR
8. Protects human expression
9. Elements of artistic creation required
10. Translation of Play
a. CR
b. Creative
c. But must have permission
d. Derivative work

Fixation
1. Generally requires some type of recording
2. See Section 102(a)
3. Improv is different from fixation
4. Fixed categories:
a. Copies – Everything else
b. Phonorecords - Sound
5. Example: Tennis
a. Event is not CR
b. Recording of event is CR
6. Anti-Bootlegging provision
a. Title 17, Sect 1101
b. Extension of TRIPS – Trade Related Aspects of Intellectual Property
c. Approved by the Uruguay Round 1994
d. Covers Live musical Performances
7. Right of 1st fixation covers live, physical performances
8. See U.S. v. Moghadam (1999)
a. 11th Circuit upholds Anti-bootlegging law
b. Based on Commerce Clause

Facts & Compilations
1. Sect. 102(b)
2. No protection of simple facts
3. But if selected & arranged – possible protection
4. Database issues
5. Sweat of the Brow Doctrine
a. 1909 CR Act protected Sweat of the Brow
b. SC overturns Sweat of the Brow in Feist v. RTSC (1991)
c. Issue: Can White Pages be CR’ed?
d. SC ends Sweat of the Brow doctrine
e. Directory can be CR’ed, but in this case lacks originality and creativity
f. Mere facts are not copyrightable
6. Compilation Elements
a. Thin CR protection
b. Elements
i. Pre-existing facts, material, data
ii. Selection or arrangement of materials
iii. Original work of authorship
c. May only CR data that has been selected or arranged
7. Nash v. CBS (1990)
a. John Dillinger Biography case
b. Facts, not expression taken
8. Toksvig (1950)
a. Hans Christen Anderson Bio
b. Historical Narrative
c. Sweat of the Brow Case
d. J. Easterbrook
i. Sweat of the Brow dying
ii. But must protect some efforts
iii. Some deference should be given
e. Overturned in Feist
9. Hoehling (1980)
a. Hindenberg Book/Movie
b. Historical Theory
c. J. Easterbrook – Holding goes too far.
10. Dutch
a. Ronald Reagan fictionalized bio
b. Fiction = CR
c. Marketplace of ideas
d. Want to encourage & permit exchange of ideas
11. CCC Information Services v. MacLean Hunter Maret Reports (1994)
a. Used car values
b. CT – CR Protection provided
c. Editors’ predictions and arrangement
d. Selection and arrangement
e. Not public domain information
f. Prediction in assessing value of car
12. Greeting Cards
a. Low threshold of originality
b. Pictures are CR
c. Text may or may not be CR
13. Yellow Pages
a. Compilation
b. Arrangement
c. Generally lacks originality
d. May be CR in particular communities
e. Standard yellow pages generally not CR
f. Ethnic yellow pages may be CR
14. Wrap-up
a. Factual works of histories and biographies may be CR; but underlying facts are not CR
b. Hard work is not CR protected
15. Sui Generis
a. EU Database Directive 96/9
i. Directives – Articles
ii. Article I – Defines a Database
iii. Article II – Only applies to EU member nations
iv. Article III – Generally follows Feist
v. Article VII – Protects Sweat of the Brow; 15 years from Jan. release of database
vi. Article IX – Exceptions
1. Teaching & Research
2. Extraction for non-electronic database
3. Public security
b. U.S. Considerations
i. Misappropriation Theory
1. H.R. 354 – similar to EU statutes
2. H.R. 1858 – alternative to H.R. 354
a. Can’t sell duplicate of database to another
b. Permits use of facts
c. Does not give use of database for commerce
ii. Issue: Can this coexist with CR?

Derivative Work
1. Sect. 101 of the 1976 CR Act
2. Keys
a. Recast
b. Transformed
c. Adapted
3. Requirements
a. Must be original – entire derivative work
b. Must have permission to use derivative work
4. Emerson v. Davies
5. Batlin v. Snyder
a. Public Domain loses CR protection
b. Metal v. Plastic Uncle Sam Banks
c. Majority – Batlin Originality Test
i. Substantial
ii. More than mere trivial variation
d. No genuine difference
e. Fear of public domain constraints
f. Dissent
i. Non-trivial variation
ii. Test applied in different ways creates subjective application
iii. Less concern for progress in the arts
iv. Protects original, creativity
6. Gracen v. Bradford Exchange
a. Wizard of Oz plates/paintings
b. Painter wins design contest; fails to obtain contract terms
c. 2nd painter copies design
d. CT – insufficient variation of underlying work
e. Derivative work
7. Sui Generis Conclusion
a. Protection outside of Cr
b. Exists in Europe
c. Issues – EXAM
i. Is legislation necessary?
ii. Is it constitutional? – Commerce Clause?
8. Durham v. Tomy
a. Not sufficiently original to be CR
b. No independent creation
9. Inconsistent Application of Batlin Test?
a. Eden
b. Tomy
c. Entertainment Research Group
d. 3 Cases with different standards applied
e. Functional v. Aesthetic
f. Stretch to see application of same test
g. Suggestions to rectify 2nd Circuit Interpretation
i. Are cases immediately discernable?
ii. What are the purposes – Aesthetic v. Functionality
10. Eden Toys v. Florelee Undergarment Company
a. Paddington Bear
b. CT – Author’s derivative work CR
c. Possible to infringe
11. Sherry Manufacturing v. Towel King (1985)
a. Substantially new material to make a derivative work
b. CT – Not enough variation to be CR
12. Entertainment Research Group (ERG) v. Genesis Creative Group
a. 2D to 3D costumes created
b. CT – Lacks sufficient originality to be CR
c. Function reason
13. Alva v. Winniger (1959)
a. Sweat of the Brow Doctrine
b. Hand of God Doctrine
14. Bridgeman Art v. Corel
a. Trashes Alva
b. Skill permits CR
15. 9th Circuit – Lesser standard of originality
a. Seems to follow Catalda case
b. De minumus standard
c. See Mirage Case – Mounting artworks on tiles
i. Is this a derivative work?
ii. CT says yes
iii. May not create an infringing derivative work

Pictorial, Graphic and Sculptural Works
1. Mayer v Stein (1954)
a. Lamp incorporated statute in base
b. CT – Works out of art incorporated into useful articles can be CR’ed
c. Novel at the time
d. Required separability between artistic/sculpture/utility/usefulness
e. Difficulty – where separability is conceptual and not actual
f. Function v. Aesthetics
g. CT – Const. to protect utilitatarian/fuctional works
2. Useful Article/Design Patents
a. Only protectable if can be identified separately from artistic v. utilitarianism
b. Costumes
i. Generally hostile to CR of costumes
ii. But fabric designs may be CR
iii. Function of clothing of wearer
c. Masks – May be CR
3. Kieselstein Cord v. Accessories by Pearl
a. Belt buckles are CR if they are sculptured designs, artistic work
b. Monopolization concerns
4. Conceptual Separability
a. Batlin Test
b. Potentially Inconclusive
c. Reconcile cases
i. Are differences between works immediately discernable?
ii. What is the purpose of making the changes
1. Functional
2. Aesthetic
d. Slavish Copies
i. Alva Case – Rodin Hand of God Sculpture CR
ii. Bridgeman v Corel – 2D photos reproductions are not CR; does not follow Alva
iii. EXAM: Is a photo of a 3D work in public domain sufficient for CR?
e. Originality
i. 9th Circuit requires a lesser standard of originality than 2nd Circuit Batlin Test
ii. Mirage following Catalda case – Only requires minimum/modest grade of originality
5. Carol Barnhart Inc v. Economy Cover
a. Mannequin Case
b. Can’t separate utilitarian from artistic function
c. Distinguishes and compares to Kesselstein-Cord belt buckle case
d. Must be able to separate art from utility to prove CR
e. Dissent
i. Majority applies wrong test
ii. Majority does not want to determine what is art
iii. Conceptual v. Physical Separability
6. Brandin v. Cascade
a. Bike rack case
b. Photo of bike rack is CR
c. Bike rack is not CR; can’t separate form from function
d. Denicola Test
i. Functionality
ii. Artistic Expression
iii. Conceptual Separability
7. No universally accepted test
8. Know all tests & apply on Exam
9. Then pick best test to use
10. Holden Test – J. Newman’s dissent test in Carroll-Barnhart
11. Superior Form Builders v. Dan Chase
a. Animal Mannequins for animal skins
b. CT permits CR
c. Underlying function submitted for art contest
12. Tests for Conceptual Separability
a. Courts disagree on proper standard
b. Know tests:
i. J. Newman’s dissent in Carol Barnhart
ii. J. Brandeis’ Denicola test
c. Issue: Extent of protection in industrial designs
i. Strikes Balance
ii. Artistic Creation v. Future Development
d. Concern – Judges become arbiters of artistic taste

Copyright Act Sect. 113
1. Limits on CR
2. Can’t get CR monopoly on all things
3. Typeface Designs
a. Eltra v. Ringer (1978)
b. Protection deferred
c. Typeface was not a work of art
d. Workaround – CR underlying code that generates fonts

Architectural Works
1. Prior to 1990
a. Protect building itself if met conceptual separability test
b. Decorative elements protectable
c. Gargoyle separable from building and CR
d. Buildings built before 1990 were not CR
e. May protect plan
f. Technical drawings, pictures, graphics, artworks
g. May not protect non-useful articles
h. Conceptual Separability Test
i. Overall design difficult to protect
j. Demetradis v. Kaufman (1988)
i. May not copy blueprint
ii. May copy from general measurements
iii. D may not rely on infringing copies/plans
2. Architectural Works CR Protection Act of 1990
a. Applies to buildings created on or after December 1, 1990
b. Also applies to unconstructed works as of 12/1/90 up to 12/31/02 (must be under construction by 12/31/02)
c. Complies with Berne Convention
d. Standard features (windows, doors…) are not CR
e. 2 Step Test – See House Report
i. Original Design Elements
1. Shape
2. Interior Elements
ii. Functional Requirements – If not functionally required, then CR
3. Is a church CR?
a. Post & beams are not CR – Purely functional
b. Cruciform shape of cross not CR
c. Shape of Steeple?
4. Is a bridge CR?
a. Pedestrian walkways not CR
b. Houses & office buildings CR
c. Individual units inside malls are not CR
d. Habitable structures, garden structures, churches, garden pavilions generally CR
e. Intersections, bridges, canals, dams not CR
5. Limits
a. Sect 120
b. Owner of a house may modify/add features to a house
c. May distribute pictures of buildings without permission

Copyright of Characters
1. Characters can be Trademarked
2. Nichols Test
a. J. Learned Hand
b. Detailed Characters can be CR
c. But not all chars. Can be CR
d. Stock chars. Can be CR
e. Can’t protect ideas
f. Need Expression
g. Idea-Expression Dichotomy
h. Vague, sliding scale
3. 9th Circuit Sam Spade Test
a. Warner Bros. V. CBS
b. Is there CR outside of story in Maltese Falcon?
c. Char. must be constructive of story being told; not just a chess piece in a plot
d. “Story being told” Test
e. Much more restrictive test – perhaps over restrictive
f. Protects chars less than 2nd Circuit
g. No char CR unless vehicle of story being told
h. May CR Sam Spade
i. May not CR idea of any detective story being told
4. Walt Disney v. Air Pirates (1978)
a. Clearly more CR protection
b. Distinguish from Sam Spade Test
c. Comic book characters easier to protect
d. Drawn chars easier to protect
5. Anderson v. Stallone
a. Derivative work
b. Sequel to Rocky III
c. Are Chars independent of movie?
d. CT – Passes 2nd and 9th Circuit Tests
e. Chars are so developed and central to story, they are central to “story being told”
6. Conclusion
a. Characters per se are entitled to CR protection outside of the story in which they appear
b. 2 Major Tests
i. Nichols Test – Specificity Test
ii. Warner Test – Story Being Told Test
1. Does not apply to pictured characters
2. Only applies to characters in words
c. Easier to CR cartoon char than literary character
d. KEY: Apply both tests
7. James Bond MGM v. American Honda
a. CT – Character is CR
b. Visually depicted character
c. Both Nichols and Warner Tests applied and satisfied
d. CR based on movie character, not literary character
e. Film, TV, cartoon chars easier to protect
f. Realm of Protecting idea
g. Shows broadness of protection
8. King Features v. Fleischar (1924)
a. Barney Google & Spark Plug – Cartoon Chars
b. Protects chars
c. Goes from expression to idea zone
9. Detective Comics v. Burns Publications Inc (1940)
a. Superman v. Wonderman
b. CT – CR infringement
c. Protects expression
d. Also protects idea of superhero
e. Key: Protectable expression
f. Ideas can’t be CR, but judge tends to lean towards idea at times

Government Works
1. Any work of U.S. Government prohibited from CR
2. Fed. Gov’t employees may hold CR if created on own time
3. Gov’t may own CR by assignment
4. West Case – Order and arrangement CR
5. Contracted work by Gov’t may be CR; depends on public interest

Mitchell Bros v. Cinema Adult Theaters
1. AV works CR
2. Producers claim theater illegally showed movie
3. D claims obscene materials not CR
a. Unclean Hands
b. Equitable Defense
4. DC – Accepts Equitable Defense
5. 5th Circuit Appeals Court – Not judge of taste; overturns
6. Obscenity standards based on local standards
7. CR is federal
8. See also Devil Films v. Nectar Video – Different outcome

Authorship
1. Conception – Whoever comes up with idea of work
2. Execution – Whoever made work
3. Financing – Whoever funded work
4. Adrien v. Southern Ocean County CC (1991)
a. Concept v. Execution
b. Adien Conceives idea of map
c. Carolyn Haines contracted to create the work
d. Issue: Is Adrien the author? Who is the author of the map?
e. Concept is author
f. Haines is only tool to the expression
g. Maps CR based on 1790 Act
h. Cartography is an art form, selection and arrangement
i. Thin CR protection – Facts/Data

Works Made for Hire
1. See H.R. 5107
2. EXAM
a. Made by employee within scope of employment; OR
b. Specifically commissioned works with numerous requirements; AND Express written Instrument (Works made for hire agreement)
3. Work for hire – Original Own
4. Assignment – Transfer of Work
5. See Sections 201, 201(b) – Unless previously written agreement “not for hire” then generally considered “work for hire”
6. CCNV v. Reid – EXAM
a. Dispute over material of sculpture
b. No written agreement
c. Authorship – Original owner
d. Ownership – May be transferred
e. Agency Law basis
f. Tests
i. Right to Control
ii. Actual Control
iii. Agency Law – SC application
iv. Formal Salaried employee test
g. Factors
i. Control – Limited
ii. Block payment
iii. Ability to select own assignments
iv. Used own tools/instrumentalities
7. Carter v. Helmsley-Spear
a. Was sculpture work made for hire? Yes
b. Visual Artists Rights Act (VARA)
i. Authors protected from altering, defacing,…
ii. But lose rights under work for hire
c. Seems to deny VARA
d. Factors most persuasive to CT
i. Benefits
ii. Taxes
iii. Control of Means
iv. Skill
v. Additional Projects
8. Aymes v. Bonelli
a. Swimming Pool Inventory Software
b. TC – Work for Hire
c. AC – Independent Contractor
9. Avtec v. Peiffer – Independent Contractor
10. Cramer v. Crestar – Work for Hire
11. Fine line between Independent Contract v. Work for Hire
12. Teacher Exception
a. Exception to the Work for Hire Doctrine
b. May or May not exist under the 1976 Copyright Act
c. Academic writings may be teacher’s own CR
d. Argument over whether exception exists
13. Specially Ordered/Commissioned Works – Lulirama v. Axcess
14. Work for Hire Agreements
a. Sect 101(2) – Timing
i. Commissioning Timing
ii. Commissioning party pays creator
iii. When work created
b. Schiller – Precedes Creation
c. Playboy – Meeting of the Minds; Looser requirement

Joint Works
1. Sect. 101 Definition – Each joint author has an equal and undivided interest in the work either can license, but must split the revenues accordingly. Prepared by two or more authors.
2. Thompson v. Larson
a. No Joint Authorship
b. Stringent Test – Childress v. Taylor
c. Should have written agreement to prove joint authorship
d. Percentage of authorship not discussed
e. Test – Co-Owner must establish
i. Each joint author contributed to the work
ii. Each fully intended joint authorship
3. Rights
a. Right to use.
b. Right to license.
c. Equal and undivided interest.
d. Obligation to account for profits to other author(s).
4. Intention – Difficult test to meet
a. If there is no written agreement, the use 2 Prong Test
i. Each co-author made individual copyrightable contribution; and
ii. Each co-author fully intended to be co-author.
b. See Childress v. Taylor – Old but valid test
c. Thompson v. Larson upholds Childress
d. Not just subjective
e. Must look at overall relationship
i. Billing
ii. Credit
iii. Decision making
iv. Right to enter into Contract
f. Intent is incumbent upon dominant party to prove

Transfer of Copyright Ownership
1. Sect. 101, 201, 204
2. Copyright is treated as a bundle of rights
3. Rights can be transferred separately, divisible
4. Sect. 106 – Bundle of Rights
5. Principle of Divisibility
6. Intangible Property Rights
7. Definitions
a. Sect 101 – Transfer of CR ownership; does not include a non-exemplary license.
b. Sect 201 – Transfer of ownership – how you transfer CR – 201(d)
c. Sect 204 – Execution of Transfer of CR ownership
i. Requires writing – memo, note,…)
ii. Effective Negotiation such that owner will not accidentally give away rights

Copyright Transfer by Operation of Law
1. Community Property
a. Is a spouse entitled to Joint Ownership in CR?
b. In re Marriage of Susan and Fred Worth (1987) Cal. - Federal Copyright does not preempt State Community property laws
c. Rodrigue v. Rodrigue (1999) Louisiana – National uniformity trumps state community property laws
2. Hypo
a. N gives T exclusive license to translate into Italian.
b. Is this valid? No
c. Writing - Note or memo required to validate transfer
3. Benefits for Exclusive License
a. Permits standing to sue for infringement
b. See BMI v. CBS
4. Effects Associates v. Cohen
a. Movie: The Stuff
b. Ownership of special effects footage license issue
c. Issue: Has there been a transfer of CR ownership/license?
d. CT – Written note required for transfer
e. Right to use footage in movie
f. Implied license – Non Exclusive
g. Implied by conduct of parties
h. Cohen does not infringe; but is liable for breach of contract
i. Keys
i. Can have implied non-exclusive license
ii. May not have implied exclusive license

Recordation of Transfers
1. Recorded at CR Office
2. Providing Notice
3. Includes Sect 101 licenses and assignments
4. Lends certainty and predictability to law
5. Enclose Transfer
a. Original or sworn signed copy
b. Send to CR Office
c. Pay Fee
d. CR Office records and enters
e. Sect 205(c)
6. Grants priority over conflict transfers as long as property is recorded
7. National Peregrine, Inc. v . Capitol Federal Savings and Loan
a. Must record with CR Office
b. Preempts state laws – can’t file at state level

Scope of Transfer
1. Transfer Ownership or Right to Use
2. Right to do one of exclusive rights of owner
3. What is being transferred?
4. What is the scope of transfer
5. Construe contract to identical items included in transfer
6. Cohen v. Paramount Pictures
a. Licensing Issue
b. Worldwide Television broadcast
c. Synchronization License
d. Way to use music to film
e. Synchs music to frames in film
f. Chain of Title
i. Cohen
ii. “Merry Go Round” Composition
iii. H&J Pictures Synchronization License
iv. Paramount Pictures “Medium Cool” film
g. Interpret scope of license
h. What has been transferred to Paramount Pictures?
i. P Cohen claims no right to distribute video included in license
j. CT – Agrees with Cohen & reverses DC decision
i. Not in the meeting of the minds
ii. NO new technology transfer
7. Boosey & Hawkes v. Disney
a. Fantasia – Movie
b. Stravinsky CR in foreign countries held by Boosey & Hawkes
c. 1939 Agreement
i. $6,000
ii. Non-exclusive
iii. Manner, medium, rule
d. Issue: Does license cover distribution abroad?
e. License Para 7: Licensor reserves all non-expressly granted rights
f. Moves into area of contract law – Reservation Clause
g. CT not impressed
h. ASCAP Condition
i. D – Limits preference to ASCAP licensed theaters
ii. CT – Boilerplate; no real applied meaning
i. Contract – Assignment v. License
8. Contrasted: Cohen and Boosey
a. Different Contracts – Scope of Grants
b. 9th Circuit gives more weight to reservation clause in Cohen
c. 2nd Circuit gives less deference to reservation clause

Duration of Copyright Ownership
1. Duration – How long can Copyright Last?
2. Constitution – “Limited times”
3. 1976 Act – Life + 50 years
4. Sonny Bono Term Extension Act – Life + 70 years – Only applies to works created after 1978
5. Debate
a. Protection is too long
b. Keeps work out of public domain
c. Can’t benefit other authors
d. Deters creativity
6. Policy – Constitutional Question
a. How long should CR last?
b. Protect authors v. encourage creativity
7. Renewal
a. Paternalistic Rationale
b. Permits authors to renegotiate Contracts and Bad Bargains
c. Protects Authors, heirs, and statutory beneficiaries
8. 1909 Act Renewal
a. File renewal registration with CR office
b. Technicality – if not filed, then not renewed
c. Issue: Can author assign renewal expectancy before term vested?
i. Fred Fisher v. Witmark (1943)
ii. Yes, Author can validly assign interest in CR
d. Death prior to vesting – renewal right goes to statutory beneficiaries
e. Corcovado Music v. Hollis Music
i. CT narrows in construction purports to assign renewal terms
ii. May assign renewal term, but must make CLEAR assignment
iii. “Perpetual Right”
iv. Scope of License Argument
f. Saroyan Case - Estranged wife/children inherit rights over other assignments
g. Vesting Term – Applies to works published before 1964
i. Marascalco – Survive through 1st Term
ii. Frederick Music – Author or Assignee alive to renew term

Duration Wrap Up
1. 1976 Act drops 2-term renewal process
2. Picks up life + term
3. Fairness to Authors
4. Entry to Berne Convention
5. 1998 Sonny Bono Term Extension Act
a. Adds 20 Years to term
b. Total 20 + 47 = 67 Years
6. Works published prior to 1964 had to file renewal registration in the 28th year of CR, or else work fell into PD
7. 1992 Amendment to the 1976 Act
a. Automatic renewal amendment
b. January 1, 1964 – December 31, 1977
c. Does not apply to pre 1964 works
d. Automatic CR
e. No rights lost
8. Today – Fewer ways to lose CR
9. Author can assign rights in renewal term before rights vest
10. Limit on author’s right to assign – must survive until renewal term to vest
11. Case law – unclear about 28th year renewal term
12. Automatic Renewal Provisions - Renewal vests on either of 2 dates
a. When registered/filed; or
b. At beginning of renewal term
13. 1976 Act does not resurrect works that have fallen into PD
14. 95 Years
a. 28 Years for 1st Term
b. 28 Years for Renewal Term
c. 19 Years Extension
d. 20 Years Sonny Bono Term Extension Act

Duration Review
1. Duration Issue Spotting
a. Copyright Protection
b. Term
c. Expiration
2. Public Domain
3. 4 Categories of work
a. Pure 1909 Works – Not on EXAM
i. Publication with CR Notice
ii. Does not extend to 1976 Act
iii. 28 year Initial Term +
iv. 28 year Renewal Term – Not Automatic; must Validly renew
v. 56 Years Total
vi. Survival – In last year of initial term and renewal filed
b. 1909 – 1976 Works
i. 28 Year Initial Term +
ii. 47 Year Renewal Term – Pre Sonny Bono Act
iii. 75 Year Total
iv. OR
v. 28 Year Initial Term +
vi. 67 Year Renewal (47 + 20 Sonny Bono Act)
vii. 95 Year Total
viii. 1992 Amendment
1. Some works have automatic/voluntary renewal – 1964-77
2. Some works have voluntary renewal – Prior 1964
3. Preferable to Voluntarily Renew
ix. Vesting at time of voluntary renewal – 1964-77
x. Types of works benefiting from automatic renewal – 1964-77
xi. Works published before 1964 – No Automatic Renewal
xii. 1909 Act – Unclear on Survival requirement – 28 or 29 years
c. 1976 – 1/1/1978
i. No 2 Term issues
ii. No Renewal issues
iii. Life + 70 Years
iv. Sect 302(a)
v. Wrinkles – EXAM
1. Sole Author
2. Joint Author
3. Work for Hire
vi. Joint Work – Sect 302(b) – 70 Years + Life of longest lived author
vii. 302(e) – Presumption of Author’s death
1. 95 years after publication date; or
2. 120 years after creation date
d. Created and NOT published/CR before 1/1/78
i. Sect 303 – Life of Author + 70 years
ii. Ex) Lincoln’s papers found in 2001
1. Life + 70; but
2. Sect 303 protection extends to 12/1/02
3. If published before 2002, CR extends to 12/1/47

Renewal for Works Made for Hire
1. Employer or proprietor gets renewal rights
2. Paternalistic laws don’t apply to employers
3. Renewals & Derivative Works Example
a. A – Author of underlying work conveys Initial term of CR & Movie/Derivative Work to B
b. B – Creates movie and owns movie Copyright
c. C – Statutory beneficiary renews CR – either A or C can renew
4. “New Estate Theory” for Renewal
5. Stewart v. Abend
a. Rear Window Case
b. Author granted movie right assignments to Hitchcock & Producer
c. Author agrees to assign renewal rights; but dies before vesting
d. Executors gain rights; assigns rights to Abend
e. Property of derivative works limited rights if there has been a reversion of the underlying work to author/heirs
f. Creates problem with person who obtains rights to works.
g. Limitations
i. Subject to CR prior to 1/1/1978
ii. Written outside work for hire
iii. Renewal term not effectively conveyed – ex) author dies prior to vesting term
iv. Renewal claimant must file timely
6. Russell v. Price
a. Public Policy Issue
b. Derivative Work – Film called Pygmalion
c. License granted to create film – Valid license
d. Problem: Derivative film CR falls into PD. Author licensed distribution rights to another.
e. Underlying work is not yet in PD
f. Only owner of underlying work can use derivative work

Termination of Transfers
Protects Authors and Heirs from bad bargains
Paternalistic function as in renewal
1. Situations
a. Life + 70
i. Works created after 1/1/1948
ii. Sect 203 CR Act
b. 1909 Act
i. 1st term or renewal term of CR
ii. Author validly conveyed 28 year renewal term
iii. Extended renewal term – 28 + 19 = 47; Sect 304 (c)
iv. Sonny Bono Act – 47 + 20 = 67
2. Termination under Sect 203
a. Not automatic
b. Must follow procedure established by statute
c. Can’t waive or assign termination rights
d. Grants, Assigns, License – On or after 1/1/1978
e. Key: Compliance permits term of transfer
f. Key: Date of transfer
3. Grants Covered under Sect 203
a. Applies to transfer or license of CR on or after any right under CR on or after 1/1/1978
b. By Author
c. Of Any CR right
d. Does NOT Apply to
i. Transfer/license in works made for hire; and
ii. Dispositions made by will
4. Who can Terminate
a. Author
b. Joint Work – Majority of authors who execute grant
c. Dead Author – Majority of statutory owners
d. If one of many authors is dead, then term interest of that author is exercised as a unity by statutory owners of term right

Ownership of Shares
1. Assuming Author is Dead
2. Widower with no children – Widow owns 100%
3. Widow with Children
a. Widow owns 50%
b. Children split remaining 50% - Per Stirpes
c. Children and Grandchildren exercise Per Stirpes
d. Widow must get beyond 50% to terminate grant

When Termination Takes Place
1. At any time for period of 5 years starting at the end of 35 years from date of execution of grant; or
2. If grant covers publication right, period starts either 35 years from publication, or 40 years from grant. See Sect 203

How to Terminate – Sect 203(a)(4)
1. Serve written notice
2. Between 2 – 10 years before effective term
3. Must state effective date of termination
4. Must comply with CR Office regulations
5. Must record in CR Office before effective date of termination

Effects of Termination of Transfer
1. All rights granted are terminated
2. Rights revert to those owning
3. Statutorily changes Pygmalion Case

Further Grants
1. If author alive – Author makes further grants
2. If author dead – Author’s widow or beneficiaries make further grants
3. Multiple beneficiaries – Per Stirpes

Transfer of Renewal Interests
1. Not for renewal rights
2. To get back extended renewal term rights
3. Additional 19 years of renewal term
4. Given to 1909 works prior to 1976 and/or 20 years additional – Sonny Bono Act
5. Not Automatic – Author and/or statutory beneficiaries must take necessary steps within statutory time limits; or transfer will continue with original grant.
6. Example
a. Arnie publishes a novel in 1935; assigns rights in 1936 – “Expectancy”
b. Will the renewal term vest?
c. Arnie must survive until 1963 – (28+35) so renewal term vests
d. Arnie has no rights in the renewal term; given away, vested
7. Sonny Bono Term Extension Act
a. 1st bite - If term under Sect 304(c) then may reclaim extra 19 + 20 years
b. 2nd bite – If no term under Sect 304(c) then may recover 20 years

Valid Notice Termination, Sect 304(c)(4)
1. Formalities
2. Window
3. Filing
4. Notice
5. Sect 304(c) – Author can terminate

Per Stirpes Termination Rights Examples
1. Husband, Wife, Child
a. Husband dies
b. Wife owns 50%; Child owns 50%
c. Both must agree to terminate (51% ownership must agree)
2. Husband, Wife, Son, Daughter
a. Wife Dies
b. Husband owns 50%; Son owns 25%; Daughter owns 25%
c. Termination right requires Husband + [Son or Daughter]
3. Husband, Wife, Son, Daughter, D1, D2, D3
a. Husband, Wife, Daughter die
b. Son owns 50%; D1, D2, D3 split remaining 50%
c. Per Stirpes requires a Majority
d. Termination right requires Son + [2 of 3 grandchildren]
4. Statutory Wrinkle in Sect 304(c)(1) – If someone else owns copyright through another, then it eliminates the per stirpes process

Timing
1. 1935 – Work Published
2. 1963 – Copyright renewed
3. 1991 – Term Ends; 19 year 1st term begins
4. 2010 – 20 Year 2nd term begins; Sect 304(d)
5. 2030 – Copyright ends – work falls into Public Domain

Summary
1. Sect 304(c)
a. For CR coming into being prior to 1978, one can reclaim extended renewal period given by the 1976 Act
b. Only a qualified person can terminate by giving notice 2-10 years prior to the date within the windows that generally opens at the start of 39 years – extended renewal date
2. Sect 203
a. On or after 1/1/78
b. May be terminated by a qualified person at any time within 5 year termination window open 35 years after transaction executed
c. 2-10 year notice prior to date within window
d. See Table, p. 376

Formalities
1. Publication
2. Notice
3. Deposit
4. Registration
5. Formalities have decreased over the years from 1909 to the Berne Convention

Publication and Notice
1. 1909 – Strict compliance
2. Publication central to 1909 Act
3. Focused on publication
4. Failure to comply with publication rules à work falls into Public Domain
5. Divestive Publication à Public Domain
6. 1976 Act liberalizes notice
7. Berne Convention – March 1, 1989; Notice no longer required
8. After 1976 Act, C/L CR gone; limited C/L protection available

What is Publication?
1. Not defined in 1909 Act
2. Ferris v. Fishman (1912) – Public performance of spoken drama not publication.
3. La Cienega (1995)
a. Sale of records of song is a publication
b. Impact – songs recorded and sold without CR no longer protected
c. Result – Congressional Amendment overruling La Cienega
4. Does publication of a derivative work a publication? Probably

Limited Publication
1. Limited to a small group of people
2. See Church of Scientology
3. Not distributed to the general public
4. Does not divest under 1909 Act
5. Public Affairs v. Rickover
a. Issue: Was this a general publication?
b. Performed speech
c. Distributed to press and others
d. Holding: General Publication
6. Estate of MLK v. CBS
a. Publication w/o CR symbol
b. Estate argues limited publication
c. Elements
i. Available to Press
ii. Broadcast on Radio & Television
iii. Excerpts in print, newspaper
d. Examples of formalities getting in the way
e. District Court
i. Clearly general publication
ii. Wide distribution
iii. Unlimited
iv. MSJ à CBS
f. 11th Circuit – J. Anderson, See Supplement
i. Limited publication
ii. Only distributed to press
iii. Distinguished from Rickover case
iv. Distributed to a large number of people equivalent to display in art exhibit
v. Publication Test – KEY – See Supplement p. 26
1. Distribution to General Public; OR
2. Exhibit or Display to General Public
vi. J. Cook – Concurring in Part/ Dissenting in Part – Performance can’t be public
vii. J. Rarely – Dissenting – District Court correct
g. Seminal case on limited publication
h. CR law is paternalistic – wants to protect the family
7. AMPAS v. Creative House Promo (1991)
a. Limited publication
b. No divestiture of C/L protection
c. Picture published in magazines

1976 Act on Publication
1. Definition – p. 397; Sect 101
2. Phonorecords – 1 or more copies distributed in public à Publication
3. Pre Berne Convention – p. 402
a. Sect 405 1976 Act
b. Sufficient CR
i. Regular work within 5 years
ii. Then reasonable effort to add notice
c. See Hasbro v. Sparkle Toys case
i. Deliberate omission of CR
ii. Cured with liberal interpretation of CR
d. Innocent infringers – Good faith protection, Sect 405, 406

Berne Convention – March 1, 1989
1. Notice after Berne – Sect 401(b)(1-3)
a. Ó
b. Year
c. Name of Owner
2. Phonorecords – Sect 402(b)
a. P – Circled
b. Eliminates innocent infringers defense
3. Deposit after Act
a. Deposit original work with LOC, Sect 407
b. Registration required in Sect 408
c. Best edition requirement

General Public – Limited Occurrences, only 2 situations
1. Tangible copies of work distributed to general public in way to exercise dominion and control over work
2. Exhibit or display so as to permit unrestricted copying by general public

Notice
1. Prior to 1978
2. Notice Requirements – If notice failed, CR Lost, divests to PD
a. 1909 Act
b. 1976 Pre Berne
c. Post Berne

Deposit Requirement
1. For LOC Record – Sect 407
2. For registration – Sect 408
3. Different registration for S/W, Trade Secrets
4. 407 Sanctions
a. Failure to deposit within 3 months
b. $250 penalty for each late work
c. Otherwise, normal cost - $30 to CR
5. Reasonable retail price to purchase

Registration
1. Author
2. Exclusive right in book
3. Published or unpublished
4. One deposit serves both purposes
5. Form – differs depending on work
6. Can’t sue for infringement until work registered
7. No damages (statutory, attorney,…) prior to registration
8. Fee covers administrative costs

Infringement
1. Exclusive in bundle of rights
2. See Sect 106
3. Does not cover every type of work
4. Possible to infringe more than one right
5. Napster
a. Secondary CR infringement
b. Acts of user
c. 9th Circuit – Rights infringed
d. See www.mp3rockstheweb.com
6. Today – Right of reproduction
7. Copying – (see definition p. 417) – Perceive with machine or other device

Matthew Bender v. West Publishing
1. Bender suing West over declatory judgment
2. Star Pagination – West pagination/citation; indicates page cutoff/breaks
3. Matthew Bender – uses star pagination scheme
4. Compilation CR
5. Judicial opinions are not CR
6. CT – Star paginations are not original
7. No CR infringement

Arnstein v. (Cole) Porter
1. Test for Infringement
2. MSJ à D
3. AC – Has Porter infringed Arnstein’s songs?
4. Steps - Test
a. Copying
b. Unlawful Appropriation – enough to make CR infringing
5. Works must be similar
6. Must have access to work – one song must sell mult. copies
7. Access – Circumstantial evidence
8. Striking similarity – No other conclusion
9. Must be original and more than de minimus
10. Improper Appropriation = Substantial Similarity
11. Likely Audience
a. Ordinary Observer
b. Lay Observer
12. Judge
a. Leave issue to jury
b. Tryable issue of fact
13. Case law – varies
14. Dissent
a. No legal basis for infringement
b. Not enough taken for unlawful infringement
c. No case
15. Wrap up
a. P – Ownership
b. D – Copy
c. D – Unlawful Appropriation
d. Ownership
1. Original
2. CR subject matter
3. Compliance with form/statutes
1. 1976 Act – Publication & Notice not as important
2. 1909 Act – Publication & Notice critical for vesting/PD
4. P must show he owns CR or relationship to rights; documented
e. Keys
1. Ownership
2. Formalities
3. Infringement

Infringement
1. Notice Requirement
a. 1909 – Failure to Comply à PD
b. 1976 – Pre Berne
i. Cures 405/406 Problem
ii. Some requirements exist
c. March 1, 1989 – Berne Convention – No CR notice required, but recommended
2. Deposit
a. 1909 – 1976 – Pre-Berne deposit requirement
b. Berne – No longer requires deposit
3. Keys
a. P must show unusual copying
b. Rare to have direct evidence of unusual copying
c. Access can be inferred if facts show D had reasonable opportunity to view or copy the work
d. Wrongful Appropriation
i. Must be more than de minimus taking
ii. Taking of expression
e. Subconscious copying possible

Registration
1. U.S. works have higher hurdles; must register before CR infringement suit
2. No early registration option
3. Remedies, penalties
4. Limits amount of recovery
5. Non-U.S. works – No registration for U.S. non-Berne Works

Right of Reproduction
1. One of bundle of rights
2. 2 Methods of Copying
a. Copies
b. Phonorecords
3. Works can be copied digitally

Infringement
1. 2 Step process in Arnstein v. Porter
a. Copying
b. Unlawful Appropriation
2. Defenses
a. Admits copying
i. De minimus
ii. Ideas are not protected
iii. Parody
b. Denies copying
i. P must prove copying
ii. Infer D had access to work
3. Unlawful appropriation – enough unlawful appropriation such that it amounts to infringement
4. If works are similar – CR Issue
5. If works are unsimilar – No CR Issue
6. Dissection – Compare works and similarities
7. Ordinary Observer Test
8. Access + Similarity = Copying
9. Striking Similarity – Works are so similar that only inference is one work copied from another
10. Theory – Independent creation = CR
11. Reality – Independent creation is difficult to prove

Unlawful Appropriation
1. Only arises when CR proved
2. Test – Ordinary Observer
3. Not Permitted – Dissection or Expert Evidence
4. Question: Has D taken so much from P work such that he wrongfully appropriated?

Bright Tunes v. Harrissongs
1. D – claims no access to song
2. CT – Subconcious copying; finds plagiarism
3. Unlawful Appropriation
4. Ordinary Observer Test
5. Reversing order of notes probably not copying
6. CR = Strict Liability
7. Subjective Tests
8. EXAM: Use Reasonable Judgment in consideration

Striking Similarity
1. 7th and 2nd Circuits have differing approaches
2. Reasonable Inference – 2nd Circuit
3. Some availability of the Work – 7th Circuit

Striking Similarity Cases
1. Selle v. Gibb (1984) – Bee Gees did not copy from a wedding singer
2. Rapp v. Webber (1997)
a. Liturgy v. Musical
b. Striking similarity case
c. CT – Enough for D à MSJ
d. Trial – No Copying
e. If strikingly similar enough, may infer copying
3. Ty, Inc. v. GMA (1997) – 7th Circuit
f. D – No access to beanie baby
g. CT – Strikingly similar
4. Ringgold v. BET – De Minimus copying
a. Split second showing of quilt
b. CT – Not enough for infringement
c. D – De minimus – combats unlawful appropriation allegation
5. Peter Pan Fabrics v. Martin Weiner (1960)
a. J. Learned Hand
b. No Guidelines, Ad Hoc Basis
i. Unlawful appropriation
ii. Ordinary Observer
iii. Substantial Similarity
6. Herbert Rosenthal v. Kalpekien (1971)
a. Jeweled Bee Pins
b. Merger Doctrine – If idea can only be expressed in a limited number of ways, then no CR
c. Natural representation of lifelike image
d. Fischer – Perhaps merger doctrine doesn’t apply
7. Nichols v. Universal Pictures (1930)
a. Non-literal copying
b. Not copying word-for-word
c. Play on Jewish and Irish families – the Cohen’s and the Kelley’s
d. Holding – No infringement
8. Sheldon v. MGM (1936)
a. Dishonored lady
b. Holding – Infringement
c. Substantial similarity based on literary work
d. Idea-Expression Dichotomy
e. Key – Abstractions Test – p. 445
f. How abstract (realm of idea) are you taking?
g. Stock Characters – Not protected
h. Developed Characters – Protected
i. Issue: Infringement; not Derivative work issue
j. Similarities of Expression
k. Parallel Incident (plot, action)
l. Subjective – goes to a detailed level of similarities/incidences
m. Ex) Obscure South American Gaucho song

Total Concept and Feel
1. Collection of uncopyrightable elements
2. Greetings Cards – see Roth Greetings Cards case
3. Tee Shirts

Computer Software
1. Is code CR?
2. Is Structure & Originality CR?
3. Does not fit well with Patents/CR/TM
4. 1974 CONTU
a. S/W can be CR
b. S/W treated as a literary work – Sect 101
c. Idea-Expression Dichotomy
d. Broad Expression – Protects S/W Procedures
5. Early Cases
a. H/W Companies
b. Literal copying – Infringing CR
6. 2nd Generation Cases
a. Non-literal elements – Structure, sequence, organization
b. How far does CR protection extend?

Non-literal Copying Cases
Whelan v. Janslow
1. Overruled in Computer Associates (CA) case
2. Dental lab S/W
3. Only idea of computer program
4. CR protects expression, not idea
5. How do you separate idea from expression?
6. CT – Treats program like literary work
7. Case criticized in CR community

Computer Associates v. Altai (1992)
1. Idea v. Expression
2. Access and copying proven
3. Substantial Similarity
4. Abstraction/Filtration/Comparison
5. Ideas/Expression
a. Nichols Test – somewhat vague
b. Eliminate ideas
c. Compare Expression
6. Abstraction
a. Program – High Level
b. Modules – Low Level
7. Filtration – Defines scope of protectable expression
8. Comparison – of programs

Non-Literal Copying – Conclusion
1. Issue in most CR cases
2. Nichols v. Universal Pictures – L. Hand – Non-literal copying actionable
3. Scenes a Faire – Incidents, characters, settings indispensable to a topic
4. Steinberg v. Columbia Pictures
a. Moscow on the Hudson – Movie Poster
b. Based on New Yorker magazine illustration
c. CT – Scene a Faire does not apply
d. Ordinary Observer Test – Goes beyond copying
e. Was it taking?
f. Was it wrongful to take?

Software & CR Wrap up
1. CONTU – Recognized CR for S/W
2. No Alternative Intellectual Property Regime for S/W
3. Open Sourcing licensing does not apply
4. Increase in patent protection for S/W
5. Paper Idea: Need some middle ground for S/W CR
6. Non-literal copying harder to identify
7. CT – Non-literal CR possibly infringing, but test hard to identify
8. Policy
a. Economic arguments
b. Economic incentive to protect
c. No copying of non-literal works limits creativity
9. Jurisprudential arguments
a. De minimus
b. Fair Use
c. Idea-Expression – Merger Doctrine
10. Whelan v. Janslow
a. Idea-Expression Test
b. Heavily criticized
11. Computer Associates v. Altai (2nd Circuit, 1992)
a. Access found – but not a major issue
b. CT – Overturns Whelan
c. Abstraction/Filtration/Comparison Test (Based on L. Hand test)
d. Applies to non-literal S/W issues only
12. Problems with applying A/F/C to literary works
a. What is protectable?
b. Overall structure may be composed of unprotectable elements
c. Key: Ordinary observer can only see protectable expression; may look different with items removed
d. Counter: Too much protection is bad
e. A/F/C – Endorses limited S/W protection
f. Practical – How to decide what is protected looking at the structure of the program
13. Some courts have followed Altai; others have not
14. See Gates Rubber case (10th Circuit, 1985)
a. Uses A/F/C
b. Then adds guidelines for Abstraction
c. Main purpose – Algorithms-modules-code…
d. Filter – Ideas, facts, PD, common expression
e. Fuzzy Test

Kurt Adler v. World Bazaars (1995)
1. Substantial Similarity
2. Idea – not protectable
3. Can’t protect the idea of Santa Clause blowing bubbles
4. Can protect expression
5. Argue – What was taken was protectable and wrongful
6. CT – Protects expression
7. Difficult to apply Abstraction test
8. Criticisms by other courts

Making New Works after Assignment
1. Ex) Jill is author of a CR work
a. Assigns all rights to Andy
b. Can she make new work based on original after assignment?
2. Gross v. Seligman
a. Finds infringement
b. Copy of original work
3. Franklin Mint v. National Wildlife - If original work found elsewhere, may not be infringement.
4. Copying from public domain is okay
5. Copying from the CR original is infringement

Phonorecords
1. Covers CD’s, albums, DAT’s – See definition
2. Song with lyrics may have 2 different CR’s
a. Sound Recording may be CR
b. Lyrics may be CR
3. Compulsory licensing for phonorecords
4. Synchronization license – Negotiated
5. Compulsory license – Set fee, permission granted without negotiations

Mechanical Licenses
1. Separate Ideas, Separate CR
a. Reproduction Right
b. Sound Recording Right
2. Ex) Alison by Elvis Costello, wrote and owns CR
a. Rerecorded by Linda Rhonstadt
b. Right to reproduce phonorecord
c. Separate CR
i. Lyrics
ii. Music
iii. Song
d. If Linda wants license, obtains a compulsory (pre-negotiated) license
3. Mechanical license is one type of compulsory license
4. Mechanical licenses have pre-determined, set fees (which increase over time)
5. Music publishers v. Recording Industry
6. Arbitration panel decides fees
7. CR office supervises compulsory license process
8. Compulsory licenses – not on exam

Sect 115 – Making and Distributing Phonorecords
1. Must give notice to obtain compulsory license
2. Failure to comply nullifies license
3. See Harry Fox Licensing Agency – Mechanical licenses
4. Book recommendation – “This Business of Music”
5. 115(a)(2) – KEY – Fundamental work of Character
a. Basic melody and fundamental character of work
b. Sampling – copying sound recording; taken portion of song
i. Is it derivative?
ii. Rarely tested in CT
iii. CT tends to be hostile to idea
6. Sound Recording - 2 Separate issues; 2 Separate groups of royalties
a. 1st – Compulsory License
b. 2nd – Sound recording license
7. Mechanical License – Copy musical composition
8. Separate permission to distribute sound recording
9. Ex) Elvis Costello’s Song and Words Musical Composition; Sound Recording
a. For Linda Rhonstadt to distribute both Song and Words
b. Mechanical license for musical composition – song and words
c. Separate license for sound recording
10. Cherry River Music v. Scimitar Entertainment
a. Serious Remedy
b. Preliminary Injunction to stop further copying
c. Recalled all phonorecords distributed

Harry Fox Agency, Inc.
1. Collects mechanical royalties for Music Publishers
2. Power of ASCAP
3. Represents 22,000 U.S. Music publishers
4. Collections, auditing, mechanical and negotiated licenses,…

Sect 114 Copying of Sound Recording
1. Can’t rerecord original recording
2. May make recording of own creation
3. Audio Home Recording Act (1992)
a. 9th Circuit Napster Case – Not a home recording device
b. DAT Concerns by industry
c. Home Recording Analog & digital permitted
d. Charges imposed on manufacturers and importers of DAT recorders/tapes
e. Consumers may only use DAT for non-commercial purposes

RIAA v. Diamond
1. MP3 Download/player
2. Sued on Audio Home Recording Act
3. Serial Copy Management Systems
4. Some consumer digital
5. CT – No CR violation; not covered under AHRA
6. Big defeat for RIAA
7. Sect 1008 CR Act Amendment
8. Problem – Imposing technology on the law; legislating technology
9. Electronic signatures – Technology neutral

Digital Millennium Copyright Act
1. Sect 1201(k)
2. Home videotaping mandates technology fix in the law
3. Copy control technology for VCR’s
4. Specific technology fix
5. Restricts circulation; CR owners may “encode” audiovisual works

Right to Prepare Derivative Work
1. Sect 106(2)
2. Out of copying realm
3. Into realm of creating derivative work
4. Infringing derivative work does not have to be fixed
5. May be found in:
a. Copy, but no derivative work option
b. 1st Sale doctrine
6. Horgan v. MacMillan, Inc.
a. Pictures in sequence of ballet
b. Many photos from George Ballanchine version of Nutcracker
c. Substantial similarity test
i. Can infringe on different mediums
ii. Just a portion can be infringing
d. 2nd Circuit remand for further review
7. Derivative work must be based on 1st work – Sect 101 on Derivative works
8. Keys
a. Issues
b. Infringing CR Work
c. Separate CR
9. MicroStar v. Frogmen, Inc. – Duke Nuk’em Software Game
a. User – Created levels
b. Issue – Are these infringing derivative works?
c. Issue – Can audiovisual displays be CR?
d. Fixation – Are they in a sufficiently different format to cause infringement?
e. D – Not infringing derivative work
f. CT – Concern about harm to author – rationale
g. AV screenshots can be CR; but doubts about CR for all AV displays
i. Lacks originality for computer code
ii. Fixed – but user can alter display
10. Lee v. Art Co.
a. Annie Lee – Note cards affixed to tiles
b. See also – Mirage Editions v. Albuquerque Art
c. P – Unauthorized derivative work
d. D – Purchased cards, affixed to tiles and resold
e. Picture framing generally not considered derivative work
f. Recasting or transforming
i. 7th Circuit – Derivative work
ii. 9th Circuit – Original work
g. Profit from someone else’s creativity
11. National Geographic v. Class. Geographic, Inc.
a. D – purchased Nat’l Geographic, rebounds and resells
b. Infringed P right to compile
c. Consistent with Mirage case
d. Inconsistent with Lee case

Moral Rights
1. French law concept – le droit moral
2. Different from economic rights
3. Moral rights sticks with author
a. Certain rights go with author
b. Cannot be taken away
c. Cannot be given up
4. Types of Moral Rights
a. Integrity – not mutilated or destroyed
b. Paternity – Acknowledging author
c. Disclosure – When work is published
5. French Moral Rights
a. Perpetual
b. Unwaivable
c. Inalienable
6. Berne Convention
a. VARA 106(A)
b. Not really incorporated into U.S. Law
7. Gilliam v. ABC (1976)
a. CR infringement by unauthorized derivative work
b. Integrity
c. CT uses Lanham Act – Unfair Trademark Competition
d. Moral rights used, but rarely used since this case
e. 10 states have laws – NOT ON EXAM


Visual Artists Rights Act (1990)
1. A6-bis
2. Covers visual rights listed in VARA
3. Snapshot is not under definition
4. See Sect 106(A)
5. Can waive rights by signing written instrument
6. Cannot transfer
7. Doesn’t apply to works made for hire
8. Rights of Attribution and Integrity

Right to Adapt/Prepare Derivative Work
1. 106(2) – unauthorized recasting, transfer, adaptation
2. Derivative markets may be more imposing than original works
3. Generally applies to merchandizing characters
4. Substantial similarity test – must be derivative work to perform test

Right of Distribution
1. Sect 106(3) – Sale by rental, lease or lending
2. Video rental without permission
3. Public distribution through electronic devices
4. Infringing reproduction and distribution rights
5. “Transmission” term not added to 106(3)
6. Judges tend to infer limitations
7. Internet – Blurs bundle of rights

First Sale Doctrine
1. Sect 109(a)
2. Separate thing from CR work
3. Property v. Intellectual Property
4. Does not apply to bootlegged works
5. Prevents CR with interfering with trade, realienation of things
6. Faucett Publishing v. Elliot Publishing Co.
a. Resold comics under different cover
b. CT – finds practice acceptable
7. First Sale can clash with the following rights
a. Reproduction
b. Adaption

First Sale Exception
1. Sect 109(b) – Exception to the CR Ownership rules
2. Computer Records and Program
3. Record rental and Computer S/W Rental Amendments
4. Prohibits rentals of phonographs and S/W
5. Contrast
a. Book rentals permitted
b. S/W rentals prohibited
6. Exception for libraries and schools

Public Lending
1. Public lending right does not exist in U.S.
2. Public lending right does exist in Europe.

Droit de Suite
1. In California, for fine arts only
2. European concept
3. Artists gains % of sales each time work is sold or resold

Quality King v. L’Anza Research – Subject to 1st Sale Doctrine
1. Grey Market
2. Buying products cheaply, then reimporting and selling through discounters
3. Assumes strong dollar
4. Takes advantage of manufacturer’s discounting/benefits
5. Theoretically benefits consumers
6. P argues
a. Labels CR
b. 1st Sale Doctrine
7. Issue: Are goods imported from abroad subject to CR and 1st Sale?
8. D – Quality King – Reimports products and gets sued
9. Claim
a. 106(3)
b. 602 – Can’t import copies without permission of CR owner
10. CT – If product lawfully produced for export, subsequent reimportation permitted under 102(9)
11. Sect 501 – “or” who imports
12. SC – Good argument, but still loses; broad interpretation; unknown if applies to imports only.

Right of Public Performance and Display – Sects 106(4), 106(5), 106(6)
1. Does not apply to all public performances and displays
2. Public Performance Issues
a. Is an act a performance?
b. Has it been publicly performed?
c. Is there an exemption from liability? – Sect 110
3. Public Place
a. Park, hotel
b. Place-specific clause in Sect 106(1)
4. Friends and neighbors at home – not considered a public display
5. Summer camp – found to be infringing and public place
6. Based on statutory exception
7. Not based on profit/non-profit issue
8. Narrowly worded exception
9. Consider hotel room transmission/broadcast

Columbia Pictures v. Aveco
1. VCR screening rooms
2. Rooms rented to general public
3. Public performance
4. Link to General Public = Public Performance

Performing Rights Society
1. 2 Biggest Societies
a. ASCAP
b. BMI
2. Act on behalf of artists to police rights
3. Terms to agreement
a. Polices infringement
b. Brings suits in name of member
c. Binds method of distributing royalties – Blanket licensing agreement

Ocasek v. Hegglund
1. P called to WY to obtain deposition
2. CT – forbids action

Grand and Small Rights
1. Grand
a. Dramatic rights
b. Individual basis with CR ownership
c. Musicals
2. Small
a. Non-dramatic musical rights
b. Licenses handled by ASCAP
c. Television

Right of Public Display
1. Right of Display
2. Sculptures
3. Pictures
4. Internet downloads
5. First Sale Doctrine – Owner may object display publicly or privately

Digital Performance Right – Sect 106(6), 110
1. Only applies to sound recordings
2. Digital Audio Transmissions

Public Interest Exceptions – Sect 110
1. In the public interest
2. Know Sect 110(1-4) for EXAM
3. Lists public interest exceptions

Compulsory Licenses – not on exam
1. Sect 115 – Recordings on Musical works may be on exam
2. Sects 111, 119, 116, 118, 114 not on exam
3. Non-negotiable license
4. Must be licensed
5. Statutory rate set by tribunal
6. Disputes resolved by arbitration or privately otherwise
7. Royalty panel abolished by Congress in 1993

Digital Performance Right in Sound Recording
1. Sect 106(6) – 1995 – Digital audio transmissions
2. Limited to right of public performance by certain audio transmissions
3. New compulsory right created in Sect 114 – Digital sound recordings
4. Complication
a. 1998 DMCA
b. Expands CR to non-sub. Individual web casting
c. Reasonable notice of use requirement
5. AM/FM broadcast signal over Internet subject to Sect 106 – Compulsory Licensing
6. Exclusive right
7. Not exempt under Sect 106
8. 114 exempt under certain performances
9. Royalty payment issues

Fair Use
1. C/L referred to as Fair Dealing
2. Sect 107
3. No Specific standards
4. Certain factors considered
5. Frustrating area of law
6. Factors
a. Purpose and character of use
i. Commercial; or
ii. Non-profit educational use
b. Nature of CR work
i. Creativity of work
ii. Core of Intended CR protection
iii. Factual v. Fictional
c. Amount and Substantiality of portion used
i. How much taken
ii. De minumus copying
d. Effect of use on Potential Market
i. Market/Value
ii. Harm to Market
iii. Incentive; Economic rationale
iv. Strong economic rights, weak moral rights

Campbell v. Acuff-Rose Music, Inc.
1. 2 Live Crew parody of “Pretty Woman”
2. Parody – Must refer to underlying work to be parody. Directed at original work
3. Parody special – Amount and Substantiality
4. Must be able to recognize original work
5. May be able to take more of original work than in other CR infringement cases
6. “No more taken than necessary” is general CR infringement standard
7. Market for or value – Parody unlikely to kill demand for original work
8. Question of law worthy of Supreme Court review
9. Parody is subject to the Fair Use Doctrine

Napster
1. P – Music publishers & recording industry artists, A&M Records et. al.
2. Situs – Northern District of California – 9th Circuit
3. Legal Arguments
a. Secondary Infringement claim
b. Vicarious liability
i. In a position to supervise
ii. Financial interest
c. Contributory Infringement
4. Must prove direct infringement, then prove Secondary infringement
5. If can’t prove direct infringement, then Secondary infringement also fails
6. Napster’s future revenues depend on infringement
7. S/W related issues
8. Fair Use Category
9. D – Argues space shifting
a. No denial of direct infringement by users
b. Not liable for
i. Contributory CR infringement
ii. Vicarious infringement
c. Space shifting
i. RealPlayer
ii. Diamond Rio MP3 Player
iii. Like taping a TV show
10. 9th Circuit
a. TV shows are different than music CD’s
b. TV is a private activity
i. Used in own home
ii. No distribution
c. Space Shifting = Distribution of music to the public
d. Evidence of Napster trying to supersede music marketers
e. Broad interpretation of Fair Use does not apply to Napster
f. D – Argues Sampling
i. Industry studies show damage to sales in college markets
ii. Commercial v. Personal use
iii. Sampling is commercial
iv. Promotional to make money
g. 9th Circuit dismissive of Napster’s arguments
h. Some arguments accepted
i. Sony-related videotaping arguments – not accepted by CT
i. TC – finds significant non-infringing uses
ii. SC – 5-4 decision
1. Manufacturers have only constructive knowledge of use
2. Sony doesn’t have actual knowledge of use
3. Don’t know of infringing v. non-infringing use
4. Possible for commercially significant non-infringing use
iii. Napster has actual knowledge of contributory infringement
iv. Napster can police work if so choosed
j. Swapping public domain songs, or by author permission permitted; but this argument doesn’t help Napster
k. Ray of Hope by appellate court
i. Injunction overbroad
ii. Must reformulate injunction
iii. Limited guidance
iv. There must be actual notice on part of Napster – register CR infringement
v. All burden put on Napster – Wrong
vi. Industry must identify and actively notify Napster of any infringements
vii. Napster has burden to police users
l. Injunction revised by TC
i. P must give Napster notice
ii. Reasonable measures to have variations on names
iii. Reasonable knowledge of infringement requires action
11. Napster Reaction
a. Implemented filtering system
b. P claims not enough action taken to stop CR infringement
12. Rule of Law in Society
a. Is technology a source of law?
b. 3rd party rights – Users
c. See Wired magazine online news site for more details

Reverse Engineering
1. Concern: Fair Use
2. Process
a. Purchase product
b. Work backwards to learn development of product
c. Trade Secrets & CR concerns
3. SW
a. Disassemble to create readable code
b. Use results to create commercial product
c. May end up competing with original product
4. Issue: Is this fair use?
5. Usually requires decompiling of program
6. Phases
a. Disassemble program
b. Use results to create commercial product
7. Sony & Sega cases
a. Reverse Engineering à Fair Use
b. Exception to access control measures in DMCA

Sega v. Accolade
1. Sega Genesis game console
2. Accolade – Game producer
3. Accolade RE’s Sega’s game console program; claims fair use
4. Intermediate, not final copying
5. Accolade Arguments
a. Intermediate copying is not infringement
b. Disassembly is lawful and Sect 102(b)
c. Disassembly authorized by Sect 117
d. Fair Use
6. CT
a. Fair use argument accepted
b. Other arguments rejected

Fair Use in Sega v. Accolade
1. Review all factors
2. Copying for commercial purposes is damaging to Fair Use Defense; but not always
3. Effect on market favors Accolade – triggers more Genesis console sales
4. Nature of CR favors Accolade – weak CR protection for part RE’ed
5. Certain public interest
a. Development of more independent games
b. No presumption of fairness in commercial use
6. Purpose
a. Independent creative expression
b. Opening market to new competitors
c. Does not destroy Sega’s market
7. Games are different
8. No monopoly granted on the market
9. Functional and creative
10. Hard to determine
a. Protected Expression
b. Unprotected Idea
11. Rejects clean room option
12. Recognizes Disassembly/Fair Use Defense

Sony v. Connectix
1. Connectix making Sony games playable on PC’s
2. Transformation of game console
3. Similar CT analysis on parts 1&4 of FU in Sony v. Sega

Copyright Misuse
1. Very few cases
a. Lasercomb v. Reynolds (1990)
b. Alcatel v. DGI (1994)
c. Morton Salt v. VGS Shipping (1942)
2. Patent Misuse – trying to get more than permitted under patent monopoly
3. CR Misuse – Trying to get more than permitted under CR laws
4. C/L + Antitrust
5. Not in statute
6. CT’s uphold C/L – 4th, 5th, 9th circuits
7. Abusing monopoly & leveraging power for bigger monopoly
8. Key in S/W licensing
9. Hypothetical
a. Reverse Engineering restriction in most S/W licenses
b. Is this CR Misuse?
c. Industry uses restrictively
d. Arguments
i. Reverse Engineering is fair use; therefore outside of CR
ii. Protection of Trade Secrets

Practice Management v. American Medical Association
1. D succeeds in case
2. AMA misusing CR
3. License = CR misuse in this case
4. CT appears to go out of way to find misuse
5. Don’t need to prove antitrust laws
6. C/L defense floating around statutes
7. Adds validity to theory of CR Misuse

Technical Protection Measures
1. Digital Copying
2. Copy protection measures – Digital watermarks
3. Access control measures – Passwords
4. CR management information measures
a. Tampering work
b. Removing name from work to personally benefit
c. See Sect 1202
5. DMCA 1201
a. Access Measures – Technical Blocking
b. Copy Control Measures – Subsequent Copies