Copyright Attack Guide F 13

ALWAYS USE THE STATUTE

Standing in court
Copyright is statutory, no common law copyright (Wheaton v. Peters)
o Constitution Art. 1 8, cl. 8
o Federal statutes
17 USC
DMCA
AHRA
VARA
o State statutes
Express preemption under Copyright Act 301 and VARA - 301 equivalent to a copyright
act claim and within 102
Some courts say that if an act violates 106, the other, related (contract) claim is
preempted
Other courts say the existence of a contract renders an action for breach qualitatively
different from one of copyright, so no federal preemption
Bowers (Fed. Cir.) under 1st cir law the copyright act doesnt preempt or narrow the
scope of the contract claim; 301 doesnt require preemption where the state claim
requires an extra elements beyond copying or violation of the rights in 106
o International treaties
Berne
TRIPs
WIPO
NAFTA
501(b) legal or beneficial owners of copyright or licensed TV broadcasters
o Florlee (2nd) Licensees in a formal exclusive written agreement with a licensor who has standing
under 501
Must arise under an act relating to copyright arise under if (1) the complaint is for a remedy granted in the
act and (2) the complaint asserts a claim requiring construction of the act (Basset (2nd))
411 Registration or preregistration is required before a civil suit may be filed
o Registration 408
Application 409
37 CFR 202.3
Family Entertainment and Copyright Act of 2005 408(f)(2)
Abbreviated preregistration for a class of works deemed to have a history of
infringement prior to authorized commercial distribution (motion pictures, sound
recordings, software)
Must file real registration within three months from publication or one month from
learning of an infringement
o Formalities
Berne prohibits formalities from affecting substantive rights but there are still incentives to
comply
Publication
MLK (11th): general publication if
o Tangible copies distributed to the general public as allows them to exercise
control over the work
o Displaying in a manner as to permit unrestricted copying
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Public Affairs Ass (DC Cir) distribution to news media is only a

limited publication
Getaped.com (SDNY) web pages are published when they go live

Notice
Because notice is not required any longer, the default status of a work is that it has
copyright protection abandonment can only occur as a result of intentional
relinquishment by owner
Must be affixed to cover for claims of innocent infringement 401-5
Registration
Still required to commence an infringement action, but not necessary for copyright to
vest
o Three months from publishing to register and remain eligible for statutory
damages and attorneys fees
Deposit
o Duration
Works published before 1/1/78 304
1909 publication with notice = 28 + 28 (renewal must be filed during first term)
1976 added 19 years (so either 47 years or 75 years depending on whether it was
renewed)
1992 automatic renewal, didnt re-protect works in the public domain
1998 CTEA added 20 years to the renewal term (so with a renewal its 95 years)
Works created but unpublished before 1/1/78 303
1976 act granted unpublished works copyright protection
Cant expire before 12/31/02
Works created on or after 1/1/78 302
Single author life +70
Joint authors life of last surviving author +70
Anonymous or work for hire 120 from creation of 95 from publication, whichever
comes first
Renewals
Stewart v. Abend (SC) renewal term as a second chance for the author to control
their work; control reverts to the author or his successors when renewal comes up
o Author must renew licensed after the renewal term for them to stand
o Miller Music (SC) when an author dies before renewal, his executor is entitled to the renewal rights
even if the author previously assigned his rights to another party
507 civil must be brought within 3 years of cause, criminal within 5

Who is the owner? 201

201(a) ownership vests initially in the author of the work
o Sole authorship
Lindsey Titanic case (SDNY) had a high degree of control over the film operation such
that the final product duplicated his conceptions and visions; standard of authorship is control
in the conception of the work (under Burrow-Giles)
The people filming were his instrumentalities, it was his work
o Joint authorship
101 definition: work prepared by multiple authors with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole
Intent and knowledge of merging at the time the writing is done (fixation)
Erickson (7th) two tests to evaluate the contributions of authors claiming joint ownership
2

Nimmers de minimus test requires that the combined efforts be copyrightable (not
used)
Copyrightable subject matter test each authors contribution must be copyrightable
(to qualify as an author, one must supply more than mere direction or ideas)
Almuhhammed (9th) for a work to be a joint work there must be
A copyrightable work (copyrightable subject matter test from Erickson)
Two or more authors (masterminds behind the wok
o Author = originator, the person superintending the arrangement, more than
mere creative contribution
o Factors to determine authorship
Whether the party exercises control (decision making authority)
Objective manifestation of intent to be coauthors (billing, contracts)
Whether the audiences appeal of the work turns on both contributions
such that the share of each in its success cant be appraised
Any objective manifestations of the intention that the works be merged
Joint owners are tenants in common undivided share of copyright, each can exercise the
exclusive rights of the copyrighted work without permission, each can issue nonexclusive
licenses without permission, duty to account to others for profits
Requires permission of all coauthors for an exclusive license
Work for hire 201(b)
o Agency relationship multifactor tests:
Employees (CCNV case):
Right to control the work
Skill required
Source of instrumentalities and tools
Location of work
Duration of relationship
Right to assign additional projects
Hired partys discretion
Method of payment
Role in hiring and paying assistants
Regular course of employers business
Payment of employee benefits
Tax treatment
Independent contractors:
Specifically ordered or commissioned
Within an enumerated category
o Collective work
o Motion picture
o Translations
o Supplementary work
o Compilation
o Test and answers for a test
o Atlas
Any written agreements
o CCNV (SC) four interpretations of employee:
When the hiring party retains the right to control the product
When the hiring party can control with respect to creation of the work
Common law agency meaning
3

Use this enhance predictability

See factors above
o Aymes (2nd) dont have to give all the factors equal weight: five that matter
the most are (1) riht to control manner and means of creation, (2) skill
required, (3) employee benefits, (4) tax treatment, (5) hiring partys right to
assign additional projects
Formal, salaried employee
o Roeslin (DDC) within the scope of employment if (Restatement (2) of Agency 228 test):
Within the kind he is employed to perform
Occurs substantially within the authorized space or time limits
Actuated by a purpose to serve the master

Is it valid, copyrightable subject matter? 102

Fixed in a tangible medium of expression 101
o Cartoon Network (2nd) two requirements: (1) embodied in a medium such that it can be perceived
and (2) remain in that medium for more than a transitory duration
o Copies/phonorecords 101
Material objects in which a work is fixed from which is can be perceived or communicated
o [P]erceived, reproduced, or communicated for a period of more than transitory duration
White Smith Pub (SC) must be intelligible to a human reader (piano player roll is not
copyrightable)
Williams Electronics (3rd) fixation is met when a work is sufficiently stable to permit it to
be perceived for a period of time, video game displays are fixed
MAI Sys (9th) copying occurred when s OS was transferred to a permanent storage
device, RAM is fixed sufficient to constitute copying
o Fixation can be made simultaneously with transmission by a recording 101
Broadcasts are fixed if a recording is made simultaneously with transmission (transmission
alone fixation)
o Chapman Kelley v. Chicago Park (7th) VARA claim; to be fixed a work must be a product of
human authorship not the forces of nature; plants are not fixed
Original works of authorship 102(a)
o Nimmer: some minimal degree of creativity, low threshold of creativity
Chapman Kelley novelty is too high of a bar for originality; must only be independently
created by the author
Burrow-Giles (SC) before adding photos to the copyright statute, photos are copyrightable
because they are orchestrated and designed; originality only requires minimal creativity
Bleistein (SC) original = owes its origin to the author, no large novelty required
Alfred Bell (2nd) recreations in different mediums may have protectable elements depending
on originality; we dont protect works just because you worked really hard on them
o Feist (SC) facts are not copyrightable because they arent original; compilations of facts are
For compilations to be protected, but exhibit some degree of originality/creativity in
selection, coordination, or arrangement
Facts dont owe their origin to authorship; distinction between creation and discovery
Standard = independent creation + modicum of creativity
o Merkos (2nd): translation process requires scholarly judgment; English translation of Hebrew prayer
is copyrightable
o CCC Information Services (2nd) prediction of future car prices required judgment and expertise
such that the resulting data is sufficiently original
Two categories of ideas: publicly useful hard facts and those infused with opinion (here, its
the latter)
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o Parsing out original elements

Meshwerks (10th) - filter out nonprotectable elements to determine what copyrightable
expression remains; digital models here are nothing more than copies of s cars, so theyre
not copyrightable
Ets-Hokin v. Skyy (9th) - s photos didnt infringe on s vodka bottle because the
bottle cant be copyrighted
Mannion (SDNY) nature and extent of copyright depends on what makes the photo original;
photographs may be original in three aspects
Rendition lighting, depiction, exposure, etc. (copyright in the image)
Timing (copyright in the image)
Creation of the subject (copyright in the subject of the image)
o Rogers v. Koons (2nd) s attempt to replicate a photo in a sculpture
constitutes infringement; the photo was original in rendition and creation of
the subject
o Gross v. Seligman (2nd) copyright in the photo was infringed by another
photographer using the same model in an identical pose
With sound recording/phonorecords where only one is licensed, look to the differences
between the two
Idea/expression distinction 102(b)
o Baker v. Selden (SC) - book explaining a system is copyrightable, system itself is not
37 CFR 202.1(c) blank forms (time cards, for recording info) are not copyrightable as they
dont convey information
ADA v. Delta Dental (7th) taxonomies and how-to systems are not necessarily systems
under Baker; 102(b) precludes ADA from suing a dentist who uses the system but not from
suing someone from copyright and distributing the system
Classification is a creative endeavor
Southco (3rd) part numbers are not original if they are dictated by the rules of a system
o Merger doctrine if only a one or a limited number of ways exist to express an idea, the idea and
expression merge into an uncopyrightable whole
Morrissey v. P&G (1st) instructions for sweepstakes arent copyrightable
Some courts view merger as a defense to infringement (1st Cir.) and some view it as making
copyright thinner so that infringement only occurs with an exact replica (9th Cir., Johnson
Controls, 2nd Cir. Hoehling)
More broad the idea, the less likely youll find merger
o Scenes a faire doctrine bars protection for preordained elements such as character types or settings
which are indispensible or standard in the treatment of a topic
o Hoehling (2nd) the scope of protection for historical accounts extends only to the expression of
facts/ideas and not to the fact/ideas themselves
Myers v. Mail Express (SDNY) no copyright in order of presentation of facts
Rosemont (2nd) an author may make sifgnificant use of a prior work so long as he doesnt
bodily appropriate the expression of another; want to encourage public dissemination of
historical and biographical works (Nimmer)
Compilations and derivative works 103
o Parsing out the copyrightable material
No copyright over unlawfully used matter
Only copyright to material contributed by the author
o Derivative works
L. Batlin v. Snyder (2nd) author must contribute substantial (not trivial) originality beyond
the preexisting work
See originality analysis
5

Gerlack-Barlow distinguishable variation of something in the public domain may

support a copyright
Nimmer: reproduction must contain original contributions beyond the underlying
work of art and must be more than a copy
Ent. Research Group (9th) courts should look to the impact that the derivative work will
have on the copyrights of the underlying work; difference here extend only to functional
considerations so a copyright in the secondary work would impinge on the rights of the
original works owner
Doran test: if the form of the derivative work and the underlying work are different,
the derivative work is original enough to be copyrightable (in this case, the original
work was in the public domain so there was no market for the underlying work to
consider)
Durham Ind. (2nd) two prong test to determine whether a work is copyrightable as a
derivative work:
o Original aspects of the derivative work must be more than trivial
o Original aspects of the derivative work must reflects the degree to which is
relief on preexisting material and must not affect the scope of copyright
protection in the original material
o Compilations
Feist p. 4
Use of the disjunctive or in the definition of compilation original expression cab be
found in the selection regardless of coordination or arrangement (or in the arrangement
regardless of selection)
Feist (under originality p. 4)
Roth Greeting Cards (9th) total concept and feel may be copyrightable even if individual
elements are not original or were infringed
Dissent doesnt want the whole becoming more substantial than the sum of its parts
Mason (5th) the maps at issue, although representative of publicly available data, involved
sufficient discretion in interpretation and expression to be copyrightable; variations in
competitors maps are dispositive of the originality of arrangement, etc.
Architectural works see below p. 7
Non-copyrightable subject matter and works which must be parsed
o Idea/expression or merger, see above p. 5
o 37 CFR 202.1:
(a) names, titles, slogans, familiar symbols or designs, variations of typographic
ornamentation, letting, coloring, listing of ingredients or contents
(b) ideas, plans, methods, systems, devices (not their expression)
(c) blank forms, time cards, graph paper, account books, bank checks, scorecards, etc.
(d) common property information with no original authorship such as calendars, weight
charts, rulers, etc.
(e) typeface as typeface
o 105 no protection for government works
Wheaton v. Peters (SC) court opinions are not copyrightable
Veeck (5th) when a state adopts a privately drafted code as law, the law is not copyrightable
o Useful article 101 definition intrinsic utilitarian function
Mazer v. Stein (SC) expression gets protection, not the useful part; separability
If the item meets the definition of useful article, extra test of conceptual separability
Keiselstein-Cord (2nd) when a feature can be identified separately from and is
capable of existing independently of utilitarian aspects; ornamentation of the belt
buckle is copyrightable
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Carol Banhardt (2nd) the features claimed to be aesthetic in a torso mold for
showing shirts are intertwined with their utilitarian function
o Newman, dissenting relevant beholder should be the ordinary reasonable
observer; the test should be whether the concept of the utilitarian function can
be displaces in the mind of the ordinary observer by the aesthetic concepts
Brandir (2nd) if form follows function, no protection
o Form follows function if design elements reflect a merger of aesthetic and
functional considerations such that they are not conceptually separable
Esquire (DC Cir) the overall design or configuration of a utilitarian object is not
eligible for copyright
Industrial design protection
Semiconductor Chip Protection Act of 1984 - 901
Vessel Hull Design Protection Act of 1998 - 1301
Computer programs
Apple Computer (SC) a computer program, object or source code, is a literary work
and is protected form unauthorized copying
o Makes no difference whether the program tells the computer to do something
or to interpret object code, no reason to protect instructions for an OS any less
than for an application
o The existence of other means of achieving the same result shows an
idea/expression dichotomy such that there is no merger
Altai (2nd) To determine the protectable elements of a program
o Filter out the elements of a computer program which are necessarily incidental
to its function and thus are unprotectable
Whelan where there are multiple ways to achieve the desired result,
this is evidence that the means chosen isnt necessary/entirely
functional
o Substantial similarity test for computer program structure
Abstraction determine to which sections protection should apply
Filtration look to
Originality
Merger
Scenes a faire
Elements dictated by functionality, efficiency, compatibility,
mechanical constraints, etc.
Comparison
Softel (2nd) nonliteral similarity of computer programs can constitute copyright
infringement ????
Lexmark (6th) a brief program is less likely to be copyrightable because it offers
fewer opportunities for original expression
Dunn & Bradstreet (3rd) in determining whether or not a programs elements are
dictated by external factors like interoperability, a court must examine the program
from the viewpoint of its creator not the infringer
Architectural works
Architectural Works Copyright Protection Act of 1990 (to comply with Berne): (1) an
author of architectural plans can use them to register and protect against another
building the structure described and (2) protected buildings arent subject to
separability analysis
Nimmer: The term design of a building is intended both to describe the protected
work of intellectual property (the design) and to distinguish that work from its
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material embodiment (the building) in order to remove any doubt that the legislation
protects artistic elements in constructed architectural works
Overall form as well as arrangement and composition of spaces and elements in the
design but not individual standard features
o Nelson-Salabes (4th) the fact that component parts arent protectable doesnt
preclude the combination of them from being original and copyrightable
Look to whether there are original design elements
o If so, whether those elements are functionally required
o If not, the work can still be protectable without regard to physical or
conceptual separability ???
Characters
X One X (8th) characters can be copyrighted if they are sufficiently distinctive
o Copyright based on how the character is expression (consistent, wildly
identifiable traits)
2nd Cir test for characters to get protection separate from the story, the character has
to constitute the story being told
MGM v. American Hondo (CD Cal) copyright in characters where consistent traits
across all films
Databases
Required under TRIPs
See compilations section p. 6
Bellsouth (11th)
CCC Info (2nd) compilations of facts that also devise new and useful information are
protectable; the fact that arrangement of data responds logically to the needs of the
market doesnt negate originality so long as there is actual originality in the
judgments/expertise underlying the statement

What rights does the owner have?

106
o Reproduction right (See similarity analysis below p. 12)
o Distribution right
Thomas (D Minn) Making it available is not distribution, distribution requires
dissemination
109 First sale doctrine you can resell the physical copy of a copyrighted work that you
lawfully own (Bobbs-Merril (SC))
Library limitation
602(a)(1) importation into the US without the authority of the copyright owner of a work
is an infringement
Quality King Dist. (SC): 602(a)(1)s reference to 106(3)s exclusive distribution
right incorporates the later subsections limitations, including the first sale doctrine
Kirtsaeng (SC) first sale doctrine applies to copies of copyrighted works lawfully
made abroad and imported into the US
o Derivative works (see p. 5)
Ty Inc (7th) guides are not derivative works because they dont recast, transform, or adapt
the original work; a work is not simply derivative because its based on another work
Mirage Editions (9th) the first sale doctrine doesnt give the purchaser the right to create
derivative works; reframing cutouts from a coffee table book constitutes a recasting, making
another version of the work (so, a derivative work)
8

Lee (7th) framing or mounting a work for resale doesnt constitute a derivative work
(decline to follow the 9th cir.)
Lewis Galoob (9th) derivative works must incorporate a protected work in some concrete
form
Recast, transformed, or adapted
Must be fixed to be protected but not necessarily to infringe?
Microstar (9th) derivative work must incorporate the original work in some concrete or
permanent form???
o Public performance and display
Redd Horne (3rd) to perform a work is to show it in any sequence or make it audible
Publicly:
o Open to the public
o Semi-public depends on the size and composition of the audience
Public performance does not constitute legal appropriate of a physical good under the
first sale doctrine and so is a violation of copyright
Cartoon Network (2nd) to determine whether a showing constitutes a public performance,
look to the potential audience of a given transmission
Perfect 10 (9th) two tests for what constitutes a public display on the internet
Server test displaying is the act of serving content over the web to the users
browser (this test is preferable)
Incorporation test displaying content into a web page that is then pulled up on a
browser (this test implicates search engines)
114 sound recordings have a more limited right than musical works
For sound recordings, public performance is only violated if it occurs via digital
transmission where sales are affected
Three tiered system for categorizing digital transmissions from least to most likely to
affect sales
o Interactive transmission at the full control of the copyright holder, requires
license
o Noninteractive transmission can get a statutory license
Dont cause a receiver to change channels
Dont pre-announce the broadcast of a song
Include information about the recording if feasible
Dont violate the sound recording performance complement
No more than 3 selections from one record with no more than 2
consecutively nor more than 4 recordings by the same artist
o Fair use essentially Exempt from any fee
Arista (2nd) if interactive, must license; if not interactive, statutory license
o Reflecting user input/preferences user control/interactivity
ASCAP (2nd) downloading doesnt constitute a public performance
o Cellco Partnership (SDNY) downloading a or playing a ringtone isnt a
public performance and if it is its subject to 110(4)s limitation for nonprofit
performances
Bridgeport Music (6th) only the copyright holder can sample his own work
Transfers 204s
o Implied licenses and the scope of licenses, see below defenses to infringement p. 15/16
o Sun Microsystems (9th): a copyright owner who grants a nonexclusive license to use his material
waives his right to sue the licenses for copyright infringement and may sue only for breach of
contract; however, if a license is limited in scope and the licensee acts outside the scope of the
license, the licensor can bring an action for copyright infringement
9

Gilliam (2nd) unauthorized editing of the underlying work would constitute infringement of
the work similar to any other use of a work that exceeded the license grant by the proprietor
of the copyright
Jacobsen (Fed. Cir.) The choice to exact consideration in the form of compliance with
open source requirements of disclosure and explanation of changes rather than a fee is
entitled to as much legal recognition (there can be economic and reputational benefits)
Verner (9th)
o See renewals p. 2
Limitations (also defenses to infringement)
o 106 first sale doctrine
o 107 fair use courts can decide whether an infringing activity should be within the right holders
rights
Folsom (CCD Mass) a reviewer may cite largely from the original work if his purpose is
fair and reasonable criticism; if the purpose is to superseded the original work, then its
infringement
Look to (1) the nature and object of the selections made, (2) the value and quantity of
materials used, and (3) the degree in which the use will affect the sale or profits or
supersede the object of the original work
Harper & Row (SC) authors consent to a reasonable use of copyrighted works is implied
as a necessary incident of constitutional policy promoting progress; the fact that a work isnt
published negates fair use
Fair use test
o Purpose of the use (also look to intent, good faith)
More transformative the use, the less significant the other factors
(Acuff-Rose Music (SC))
Courts can consider any public benefit under this prong (Sega (9th))
The distinction between productive and unproductive uses is
helpful but not determinative (Sony v. Universal City (SC))
o Nature of the copyrighted work
Scope of fair use is narrower with unpublished works
If the wants a monopoly over the functional code underlying the
work (the stuff needed to make a program compatible with the system)
they should get a patent (Sega (9th))
Where the argues fair use of functional code segments, he must also
show the use of those code segments was necessary (Connectix (9th))
o Amount and substantiality of the portion used
A taking may not be excused merely because its insubstantial with
respect to the infringing use
o Effect on the market most important factor
If the market is usurped, all other factors are irrelevant (Sega (9th))
If the fair use only makes the a legitimate competitor, working
against a market monopoly, probably fair use (Sega (9th))
Economic loss from legitimate competition doesnt court as negatively
affecting the market (Connectix (9th))
Increased sales of copyrighted material attributable to the unauthorized
use shouldnt deprive copyright holders of the right to license the
material (Napster (9th))
Acuff-Rose Music (SC) - Threshold questions when fair use is raised in defense of a parody:
is parodic characters reasonably perceived?

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o
o

o
o
o

o
o
o

The fact that copied material is the heart of the work doesnt preclude fair use in
parody
Ty, Inc. (7th): copying that is complimentary to the original wok is fair use, but substitutional
copying is not
Chicago Board of Ed. v. Substance Inc (7th): published tests specifically to destroy the
potential for reuse; this is decisive even if it isnt a market value
Sega (9th) where disassembly is the only way to access the ideas and functional elements
embodied in a copyrighted program, and where there is a legit reason to do that, its fair use
Arriba (SC) thumbnail images was fair use based on transformative nature of the search
engine (source information vs. artistic expression) and no harm to the market for the original
good
Vanderhye (4th) turnitin uses papers to prevent plagiarism which is transformative
from the original use; fair use
Court more likely to find fair use if its either (1) productive and adds something new that
benefits the public, or (2) reasonable and customary
108 libraries
110 certain performances or displays (essentially education and non-profit)
Fairness in Music Licensing Act of 1998 can play a radio or TV if
Its in a private home
No change is made to the transmission
Its not further transmitted to the public
Small business exemption less than 2k sq ft or 3750 sq ft for food
111 secondary transmission by cable
WPIX (2nd) TV broadcast retransmission isnt eligible to rely on 111 compulsory license
for cable providers
112
114
(a) reproduction and derivative work rights of sound recordings do not encompass sound-alikes
(d)
115 compulsory license for phonorecords
Must have been publicly distributed already
Statutory rate 9.1 cents or 1.75 cents per minute, whichever is greater
In the Matter of Mechanical & Digital Phonorecord Delivery Rate Adjustment (Copyright
Office 2006): ringtones qualify for statutory licenses and are not derivative works (and
therefore ineligible for the statutory rate) unless they amend the original work
Reproducing a work in an audiovisual context requires a synch license, not a compulsory
mechanical license
Karaoke split
Leadsinger (9th): karaoke devices that display lyrics are not phonorecords, but are
audiovisual works excluded from 115s compulsory licensing scheme
Priddis (D Utah): displaying lyrics doesnt amount to an audiovisual work and
doesnt require a synch license
Compulsory license doesnt apply to web streaming
117 limits for computer programs
118 noncommercial broadcasting
512 safe harbors for online service providers
Viacom (2nd)
512(c)(1)(A) safe harbor protection is only available is the service provier doesnt
have actual knowledge of specific infringing material, isnt aware of facts or
11

circumstances from which infringement is apparent, or upon obtaining such

knowledge acts expeditiously to remove or disable access
512(c)(1)(B) service provider must have the right and ability to control the
infringing activity (requires something more than the ability to remove or block
access to materials)
512(m) willful blindness doctrine

Violation of rights (always cite to the statute that is alleged to be violated)

Infringement 501 (the infringement analysis is tied to the rights analysis under 106 and above)
o SOS v. Payday (9th) to prevail on a copyright infringement claim, must prove ownership of a
valid copyright and copying of a protectable expression beyond the scope of any license
o Prima facie case of infringement:
(1) Ownership of a valid copyrights (ownership + valid copyright)
Registration before publication or within 5 years of publication
(2) Violation of an exclusive right under 106
Must show that the obtained and used protected elements of the s expression, not
just coincidentally similar
Reproduce, derivative works, distribute, perform publicly, display publicly, digital
audio transmission
o Copying in fact (violation of the right to reproduce 106(1))
Two kinds of circumstantial evidence relevant to independent creation vs. copying in fact
Evidence suggesting access
The degree of similarity between the two works
Three Boys Music (9th) to show infringement (copying in fact), show
Direct evidence of copying, or
Proof of infringement by showing
o Access more than a bare possibility, a reasonable opportunity
Presumption of access is work is widely disseminated
Circumstantial evidence of reasonable access:
Chain of events between the works
Presumption of access if work is widely disseminated
o Dillingham (SDNY) subconscious copying is still
copying
o Substantial similarity between the works
(Once copying is shown, burden shifts to to show proof of independent creation)
Selle v. Gibb (7th) an important factor in analyzing the degree of similarity is the
uniqueness of the sections asserted to be similar; similarities should be sufficiently unique or
complex as to make it unlikely they are both independent creations (three notes are not
sufficiently unique or complex)
If two works are so strikingly similar as to make it highly probable that the latter is a
copy, the issue of access need not be addressed
th
Ty (7 ) the inference of access following a finding of striking similarity can be rebutted by
proof disproving access or showing independent creation
o Substantial similarity sufficient to show copying
2nd Cir.
Nichols (2nd) cant just look to overall similarity; have to break down which
elements are similar and whether or not theyre copyrightable
o Abstraction and filtration to remove uncopyrightable material before
investigating similarity
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Arnstein (2nd) in looking at similarities, look to

o The type of people to whom the work seems similar
o The nature of the similarities copyrightable elements
o The degree of similarity
Steinberg (SDNY) Substantial similarity = whether a lay observer would recognize
the alleged copy as having been appropriated from the copyrighted work (ordinary
observer standard, may be found where a small portion of the work is substantially
similar)
Boisson (2nd) substantial similarity if the ordinary observer would be disposed to
regard the items aesthetic appeal as the same
o Ideally should be an analysis of the total concept and feel of the works and an
abstraction and filtration of the copied elements
o Cites to Mannion (SDNY) Where the work incorporates both protectable and
unprotectable elements, would a more discerning observer see them as
substantially similar or different
Runs the risk of filtering out elementary elements such as colors and
shapes which may contribute to simlarity

9th Cir.
Sid & Marty Krofft (9th) in an infringement action you have to determine whether
there has been a copying of the expression of the idea, not the idea itself
o Abstraction test in Nichols
o Extrinsic test to determine substantial similarity in ideas:
Type of art involved
Materials used
Subject matter
Setting of the subject
Expert testimony
o Intrinsic test to determine substantial similarity in expression average law
observer of the intended audience
Children are not to be discounted
o Use both extrinsic and intrinsic analysis!!
o (Court found no reasonable observer would dissect the elements of the
commercial so much as would be necessary to find the two works arent
similar)
Cavalier v. Random House (9th) two tests for substantial similarity
o Extrinsic test objective comparison of expressive elements (focus on
articulable similarities and filter out the unprotectable elements)
o Intrinsic test subjective comparison of the total concept and feel from the
perspective of a reasonable audience (also parse out unprotectable elements)
Swirsky (9th)
In derivative works cases see above p. 5/8
Castle Rock (2nd) substantial similarity of derivative works requires that copying by
quantitatively and qualitatively sufficient to support action
o Qualitative copying of expressive elements
o Quantitative amount of copying more than de minimus
o (Total concept and feel isnt helpful in analyzing similarities between totally
different works)
o Quantitatively enough (more than de minimus)
Newton v. Diamond (9th) assuming the sampled section was original, we have to see
whether it was actionable

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Fisher (9th) a use is de minimus only if the average audience wouldnt recognize the
appropriation
Look to the qualitative and quantitative significance of the copied portions
In the 6th Cir., sampling requires a license under 114 (Bridgeport)
Nimmer: if the similarity is only as to nonessential matters, then courts should find no
similarity
Fragmented literal similarity where a copies some portions exactly from a s
work without appropriating the works overall essence or structure
o Technology cases
Altai (2nd) three step idea/expression abstraction test (above under computer programs)
Once a court has sifted out all elements that are dictated by efficiency or external
factors are in the public domain or are just ideas, whats left is the protectable
expression
Then look to whether the copied any of those elements
Then look to the copied portions relative significance to the s program (expert
testimony optional??)
Vicarious and contributory infringement and liability
o Vicarious liability
Gershwin Pub (2nd) even in the absence of an employee relationship, one may be
vicariously liable where (1) one has the right and ability to supervise the infringing activity
(control) and (2) one has direct financial interest in the activity (financial benefit)
Perfect 10 (9th) control element requires the legal right to stop or limit the directly
infringing conduct as well as the practical ability to do so
o Contributory infringement
Gerswin Pub (2nd) contributory infringement: one who (1) with knowledge of infringing
activity (2) induces, causes, or materially contributed to the infringement
Perfect 10 (9th) Napster refined test in the context of cyberspace: if a computer systems
operator learns of specific infringing material available on his system and fails to purge it, the
operator knows of and contributes to the infringement
Service providers knowing failure to prevent infringement can be the basis of
liability (intent may be imputed)
o Device manufacturers liability for inducing infringement
Sony v. Universal City (SC) applied patent rationale to copyright contributory infringement;
someone who sells something suitable for a substantial non-infringing use is not liable for
contributory infringement
A&M (9th) absent specific information which identifies infringing activity, a computer
systems operator cant be held liable for contributory infringement merely because the
system allows for an exchange of copyrighted material
In re Aimster??
Grokster (SC) when an article is good for nothing but infringement, there is a presumed
intent to infringe
Sony barred secondary liability based on imputing intent solely from design or
distribution of a product that is capable of substantial lawful use, even where there is
a knowledge of the potential for unlawful use safe harbor rule
Advertising an infringing use of instructing how to do so shows an affirmative intent
that the product be used to infringe even where substantial lawful uses exist
inducement rule
o One who distributed a device with the object of promoting its use to infringe
is liable for the resulting infringement by third parties
Criminal infringement
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o 1976 mens rea is willfully and for the purpose of commercial advantage or private financial gain
o 1982 two classes of felonies
Above 1k copies of phonorecords or 64 copies of motion pictures or audiovisual works up
to 5 years in prison and $250k
Above 100 sound recordings or 7 motion pictures or audiovisual works up to 2 years and
$250k
o Copyright Felony Act of 1992 expanded felonies to all copyrightable works
o TRIPs Art. 61 criminal penalties to cases of at least willful piracy on a commercial scale
o Moran (D Neb.) willfully = voluntary, intentional violation
Nimmer: willful means the infringement was done with the knowledge that it was an
infringement
Rule doesnt require that the s belief that his conduct is lawful be reasonable, just
that it be truthful
o NET Act of 1997 criminalized willful computer theft of copyrights works whether or not the
derived a financial benefit
Financial gain receipt or expectation of receipt of anything of value including the recept of
other copyrighted works (need not have a commercial motive)
o Artists Rights and Theft Prevention Act of 2005
Felony to knowingly use an audiovisual device to make a copy of a copyrighted movie from
a performance of the work (like in a movie theater)
Willful infringement amounts to a felony where distribution of the copyrighted material
occurs over a publicly accessible computer network when the film is intended for
commercial distribution where the person knew or should have known it was intended for
commercial distribution
o DMCA criminal violation when a person sells a product primarily designs for the purpose of
circumventing technological protection measures
o Determining the retail value of a work is relevant for meeting the threshold req for certain ciminal
infringements as well as to establish a felony:
4th cir says retail value = (1) price assigned to commodities for sale at the retail level at the
time of sales at issue, or (2) price of commodities determined by actual transactions between
willing buyers and sellers at the retail level
Circumvention of technological protection under the DMCA 1201
o Reimerdes (SDNY affd 2nd) a measure effectively control access if it requires the application of
information or a process with the authority of the copyright owner to gain access
To find violation of 1201(a), must find
Protection sufficiently controls access to a work
s technology was created for the purpose of circumventing that control
When considering the good faith research exception, look to
Whether the results are disseminated in a manner design to advance the state of
knowledge or just to infringe
Whether the person is engaged in a legit study
Whether the results are going to be communicated in a timely fashion to the copyright
owner
1202(f) Interoperability exception to the DMCA that allows you to develop and distribute
a program that doesnt infringe others copyright solely for the purpose of interoperability
with other programs
o Skylink Tech (Fed Cir) to show violation of 1201(a)(2) must show
Ownership of valid copyrights
Effectively controlled by a tech measure
Which has been circumvented
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That third parties can now access

Without authorization
In a manner that infringes or facilitates infringement of a right protected by the Copyright
Act
Because of a product that is either designed/made primarily for circumvention, made
available despite only limited legitimate uses, or marketed for use in circumvention
o Lexmark (6th) where a code can be accessed by purchasing a product, it is not an effective means
of controlling access to a program
o 1203 and 1204 establish civil and criminal penalties, respectively, for violation of 1201
Moral rights (see below p. 17)

Defenses
Falls within a limitation on exclusive rights (see above, p. 10)
License
o Implied licenses
Gagnon (9th) exclusive licenses must be in writing, but non-exclusive licenses need not be
and may be granted orally or my implication
Implied license is granted when
o Licensee requests creation of the work
o Licensor make that particular work and delivers it to the licensee
o Licensor intend that the licensee copy and distribute the work at the time of
creation and delivery as manifested by conduct, look to:
Whether parties were engaged in a short-term discrete transaction or
an ongoing relationship
Whether the creator utilized unwritten contracts providing that works
only be used with creators future involvement or express permission
Whether creators conduct indicated that use without his involvement
or consent was okay
o Bartsch licensees may purpose any uses which may be reasonably said to fall within the medium
described in the license; new use must be foreseeable at the time of contracting
o Random House (SDNY, affd 2nd) a written contract is to be interpreted so as to give effect to the
intention of the parties as expressed in the contract language as a whole; where the agreement said
print, publish and sell in book form, it didnt include the right to publish as an e-book
Misuse
o Fox Film v. Doyal (SC) author has the right to arbitrarily refuse to license his work
o Video Pipeline (3rd) court may withhold aid where the is asserting their right contrary to the
public interest and copyrights policy goals of encouraging dissemination of creations (doesnt
invalidate copyright, just decline to protect right then)

Remedies
Injunctions 502
o Four factors to consider (eBay)
Irreparable injury to
Other remedies are inadequate to compensate for the injury (other remedies are preferred)
Showing the is likely to continue to infringe or induce infringement may suffice to
show this (Grokster (ND Cal))
Balance of the equities is in favor of the
Public interest wouldnt be disserved
Impounding 503
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 Damages and profits 504

o Damages may be damages as a result of the infringement
TVT (SDNY) punitive damages arent banned in copyright cases where the is seeking
damages and has shown willful infringement before a jury
o Profits are those attributable to the infringement beyond actual damages
Bouchat (4th) to establish profit, must prove gross revenue and then must prove
deductible expenses and elements of profit attributable to other sources
Courts can deduct expenses where there is no conceivable connection between the
infringement and those revenues or despite a conceivable connection the offered
only speculative evidence as to the causal link between the revenues and the
infringement
Mackie (9th) when asking for profits, must show causal link between the profits and the
infringement
Hamil Ameica (2nd) overhead expenses are deductible once a sufficient nexus has been
shown between the overhead and the sale of the infringing conduct; where there is willful
infringement, courts should give s evidence here extra scrutiny
o Statutory damages 504(c) (instead of actual damages)
Zomba (6th) guideposts for deciding damages (in the 8th cir these factors determine punitive
damages, and not statutory damages (Thomas-Rasset))
Degree of reprehensibility of s conduct
Disparity between harm or potential harm and punitive damages
Difference between this remedy and the civil remedies awarded in comparable cases
Shouldnt be so severe and oppressive as to be disproportionate to the offense and
obviously unreasonable (St. Louis IM&S Ry (SC))
o Frank Music (9th) Prejudgment interest may be awarded there it is required to adequately
compensate the s injury and prevent the from unjust enrichment
Costs and attorneys fees 505
Criminal sanctions 506 & 18 USC 2318, 2319, 2323

Policy
Theories of IP rights
o Labor theory you have a right to your body, the labor of your body is yours
Proviso leave enough of nature for everyone else
In the US, labor isnt enough unless theres originality
o Personhood theory to become self-actualized, you have to be able to control/own your
environment
Moral rights theory
Justifications
o Utilitarian necessary to solve the public goods problem
Incentivize dissemination of creations
Nonexcludable goods subject to nonrivalrous consumption
Public goods problem creation costs high, dissemination costs low
Encourage investment in intangible assets
Avoid monopolistic holdings
Balance between incentivizing creation and encouraging competition
o First Amendment theory incentivize the kind of speech we value
o Moral rights of the author
Art. 6bis of the Berne Convention author can object to distortion, mutilation of
modification or derogatory action in relation to the work which would be prejudicial to his
honor or reputation
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Right of attribution to claim ownership, prevent use of his name in connection to a

work he didnt create, prevent use of his name in the case of distortion, modification,
etc.
Right to the works integrity
Right of divulgation or disclosure allows author to control the terms under which
his work is disclosed to the public
Right to withdraw the work from circulation
Droit de suite right to proceeds from resale
CA Resale Royalties Act of 1976 5% gross resale price
Gilliam (2nd) unauthorized editing the program from its original version exceeded any
rights to broadcast given in the license an constitutes an infringement
VARA of 1990 106A
Limited set of moral rights protections for visual art only
o Attribution
o Prevent distortion, mutilation or modification that would be prejudicial to the
authors reputation
o For works of recognized stature, to prevent destruction
Pertains only to works in singly copies or in less than 200 copies signed and
consecutively numbered
Lilley v. Stout (DDC) a court should begin the VARA anlaysis by determining
whether or not the work qualifies
o must show the work fits within qualifying visual arts
o Then must show
Intent only to exhibit at the time the work is produced/fixed
Uniqueness
Signing
th
Martin (7 ) Two part test to determine whether a work is of recognized stature from
Carter (SDNY) based largely on the testimony of experts: (1) stature + (2) recognition
Mass. MOCA Found. (1st) VARA protection applies to unfinished works which
would get protection when finished; VARA doesnt provide damages for past
attribution violations that no longer exist
Dastar (SC) ???
Public domain is the rule, copyright is the exception
o Except following removal of the notice registration, copyright is the rule?

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