STANDING & PROCEDURE

Does the plaintiff have standing?

- legal or beneficial owners of copyright as well as licensed television broadcasters
may bring suit ( 501)
- licensees must be entered into a formal, exclusive, written agreement with licensor
to sue (2d Florelee)
- BUT: standing may be secured via an informal agreement if it is confirmed in
writing (2d Florelee)

Is the plaintiff an author?

- did P provide original intellectual conceptions and exercise a high degree of
control? (S.D.N.Y. Titanic)
- if joint authorship claimed, did P contribute to an individually copyrightable extent?
(7th Trinity)
- Goldstein test: each author must contribute to an individually copyrightable
extent
- Nimmer test: each author may make de minimis contribution as long as final
product is copyrightable
- BUT: Nimmer test may discourage collaboration and be hard to adjudicate
- if joint authorship claimed, did P have superintendence over the work?
(Aalmuhammed)
- if joint authorship claimed, were there objective manifestations of intent to coauthor?
(Aalmuhammed)

Is the work a work for hire?

- balance the 12 the Reid factors (Reid)
- or the 5 most important Reid factors: (1) hiring partys right to control the manner
and means of creation; (2) skill required; (3) provision of employee benefits; (4) tax
treatment of hired party; (5) whether hiring party may assign additional projects to
hired party (2d Aymes)
- BUT: some of these factors may discriminate against smaller businessese.g.
benefits
- is it within the scope of employment? ( 101)
- (1) is it within the kind of work he is employed to perform; (2) did it occur
substantially within the authorized time and space limits; (3) is it actuated, at least
in part, by a purpose to serve the master? (D.D.C. Roeslin)

Is the complaint in the proper court at the proper time?

- district courts have original jx over any action arising under any Act relating to
copyrights ( 1388)
- a suit arises under the act if (1) "the complaint is for a remedy expressly
granted by the Act," and (2) "the complaint asserts a claim requiring construction of
the Act" (2d T.B. Harms, 2d Bassett)
- registration or preregistration is required before a civil suit may be filed ( 411)
- BUT: failure to register does not foreclose federal jurisdiction (Muchnick)
- civil actions must be brought within 3 years of cause; criminal actions within 5 years
( 507)

Is it within the statutory provisions for duration and protection?

- life of the author and 70 years for works created on or after January 1, 1978 (
302(a))
- pseudonymous works, works for hire, etc. = 120 from creation or 95 from
publication ( 302(b))
- notice of copyright must be affixed to cover innocent infringement ( 401405)
- deposits must be made for Library of Congress ( 407)
- registration must take place before initiation of civil suit or receipt of damages (
411412)

General publication
(1) "If tangible copies of the work are distributed to the general public in such a
manner as allows the public to exercise dominion and control over the work," or (2) if
the work is exhibited or displayed in such a manner as to permit unrestricted copying
by the general public (11th Estate of MLK)

Is the copyright term constitutional?

- limited term extensions generally comport with the IP clause (Eldred, Golan)
- BUT: public interest concerns and incentive-structure arguments loom (dissents)

Have the rights been assigned or terminated?

- if author does not renew before death, assigned renewal rights are void (Abend)
- successors retain rights over derivative works
- transfers after 1978: can terminate transfer during a 5-year window that begins 35
years from the date of grant, and must be preceded by notice to the grantee 2-10
years prior ( 203)
- transfers before 1978: can terminate transfer of interest in renewal term during
specified window that runs from the time of original copyright ( 304(c)(d))

EXCLUSIVE RIGHTS

106
(1) reproduction, (2) derivation, (3) distribution, (4) performance, (5) display, (6)
transmission

Was there actual copying of protected material?

- did the defendant have access to the material?
- did the defendant have a reasonable opportunity to hear or see plaintiffs work?
(9th Bolton)
- (1) was there a particular chain of events linking D to Ps work? OR
- (2) was Ps work widely disseminated?
- is a similarity so striking as to make it unlikely to have occurred without access? (7th
Selle)
- BUT: this similarity must occur within unique aspects of the work (7th Selle)
- AND: expert witnesses may testify to the uniqueness of the similarity (7th Selle)
- can the D rebut a presumption of access by showing lack of access or independent
creation? (9th Bolton)
- Access (and copying) may be inferred when two works are so similar to each other
and not to anything in the public domain that it is likely that the creator of the second
work copied the first, but the inference can be rebutted by disproving access or
showing independent creation. (7th Ty)

Are the two works substantially similar?

- does similarity take place at a sufficient level of detail rather than generalized
abstration? (2d Nichols)
- did D [take] from P's works so much of what is pleasing to the ears of lay listeners,
who comprise the audience for whom such [work] is composed, that D wrongfully
appropriated . . . ? (2d Porter)

2d Circuit
- would ordinary observer regard aesthetic appeal as the same unless looking for
differences? (2d Boisson)
- with uncopyrightable elements filtered out, would a discerning observer still see
similarity? (2d Boisson)
- BUT: this runs the risk of filtering out elementary componentse.g. colors and
shapes
- AND: some courts ambivalent about dissection; against isolation of elements
(S.D.N.Y. Mannion)
- infringing similarity may involve only a small portion of the work (2d Steinberg)
- SJ if evidence so overwhelming that directed verdict would be justified (2d
Steinberg)
- BUT: D may be excused for using scenes a fairedetails which, as a
practical matter, are indispensable or standard in the treatment of a given topic
(2d Steinberg)

9th Circuit
- extrinsic test for ideas: all manifestations, analytic dissection and expert testimony
okay (9th Krofft)
- intrinsic test for expression: reasonable perception of substantial similarity, no
dissection (9th Krofft)
- both are required for infringement
- tests get conflated: main difference is that pre-jury dissection, expert testimony, and
SJ are allowed via the extrinsic test (9th Cavalier)
- extrinsic: whether two works share a similarity of ideas and expression as
measured by external, objective criteriaif indicia of a sufficient disagreement
exist then case should go to jury (9th Carey)

Computer programs
- apply abstraction/filtration test to Ps program and then Ds to avoid unnecessary
inquiry (2d Altai)
- expert witnesses are optional (2d Altai)
- courts should (1) "dissect the allegedly copied programs structure and isolate each
level of abstraction, (2) successively filter out protectable expression from non-
protectable material, and then (3) compare what remains as the core of protectable
expression (2d Altai)
 - non-protectable material includes (i) elements dictated by efficiency (merger), (ii)
elements dictated by external factors (scenes a faire, e.g. compatibility
requirements, design standards, industry demands, widely accepted programming
practices), and (iii) elements taken from the public domain (2d Altai)
- at highest level of abstraction, analyze interrelationships among elements (2d
Softel)

Musical works
- owners of musical recordings only retain rights under 106(1), (2), (3), and (6) (
114(a))
- owners of musical recordings retain rights over re-recording and remixing, but not
sound-alike records
( 114(b))
- those who make recordings of musical works must obtain a license from the author (
115)
- de minimis sampling allowed if not a quanitatively or qualitatively significant portion
of the work
(9th Newton)
BUT: in the 6th Circuit, sampling requires a license under 114(b) (6th Bridgeport)
- webcasting services are subject to different requirements depending upon
interactivity
( 114(d), Launch)

Has there been infringing derivation?

- did the work cross a de minimis quantitative threshold for similarity (e.g. quotations)?
(2d Castle Rock)
- is the work qualitatively based on original, protectable expression? (2d Castle Rock)
- BUT: these two tests generally conflate the reproduction and derivation right
- AND: other courts say derivation right not infringed if work does not recast,
transform, or adapt
(S.D.N.Y. Warner Brothers)
- is the work likely to fill a market niche that D would in general develop? (2d Castle
Rock)
- does the work constitute a sequel to the original work? (9th Micro Star)
- 2d Circuit: substantial similarity
- 9th Circuit: substantial incorporation

Recast, transform, adapt

- chopping up a book and selling pages as art prints constitutes RTA (9th Mirage v.
A.R.T.)
- First Sale Doctrine does not apply unless entire book is resold
- chopping up a book and selling pages as art prints does not constitute RTA (7th Lee
v. A.R.T.)
- this would illegalize most forms of art collecting, framing, and display

Fixation requirement
- a derivative work must incorporate a protected work in some concrete or permanent
form (9th Galoob)
- this concrete or permanent form may include referential MAP files (9th Micro Star)
Has there been infringing distribution?
- mere making available is not distribution; distribution requires dissemination (D.
Minn. Thomas)
- is the distribution covered by the First Sale Doctrine? (Straus, 109)
- First Sale Doctrine may trump 602 importation restrictions if product bought
domestically (LAnza)
- BUT: FSD may not apply to works that are reproduced abroad and then imported
(9th Omega)

Have the copyright holders public performance rights been infringed?

- did D perform or display the work in a place open to the public or analogous space?
( 101, 3d Columbia Pictures)
- BUT: if the performance was transmitted to a single person, that is not public
(2d Cartoon Network)
- the First Sale doctrine does not limit secondary performance rights ( 101, 3d
Columbia Pictures)

Have the copyright holders public display rights been infringed?

- display rights are largely superseded by First Sale display permission ( 109(c))
- online display requires fixation by the D (9th Perfect 10)

Does the performance or display fall within a statutory or legal exemption?

- (1)(2) classrooms, (3) religious worship, (4) & (10) charitable purpose, (5)
broadcasting within FCC regulations, (6) agricultural fairs, (7) advertising work, (8) (9)
disabled, (11) censorship ( 110)

Do provisions of the DMCA apply?

- has D circumvented a technological measure that effectively controls access to a
copyrighted work?
( 1201(a)(1))
- has D manufactured or imported a device produced for the purpose of
circumventing such a measure?
( 1201(a)(2))
- has D manufactured or imported a device produced for the purpose of
circumventing [a measure] that effectively protects a right of a copyright owner under
this title? ( 1201(b)(1))
- BUT: no protection for individual circumvention of rights protection measures
- reverse engineering for interoperability explicitly allowed (( 1201(f))
- computer programs are protected speech, but hacking under the DMCA is not
(S.D.N.Y. Reimerdes)
- BUT: linking to hacks is legal absent clear and convincing evidence that (a) linker
knows the tech is on the site, (b) linker knows the tech is illegal, and (c) linker
intends to distribute it (S.D.N.Y. Reimerdes)
- protects access to encrypted code, not associated product; does not undermine
antitrust (6th Lexmark)

1201(a)(2) plaintiffs must prove: (1) ownership of a valid copyright (2) that is
effectively controlled by a technological measure that has been circumvented (3) and
that third parties can now access (4) without authorization, in a manner that (5)
infringes or facilitates infringing a right protected by the Copyright Act, because of a
product that (6) the defendant either (i) designed or produced specifically for
circumvention, (ii) made available despite only limited commercial significance other
than circumvention, or (iii) marketed for use in circumvention of the controlling
technological measure (Chamberlain)

LIABILITY

Has direct infringement occurred?

- was an element of volition or causation present? (N.D. Cal. Religious Tech Center)
- third party ISPs and board operators cannot be held liable for direct infringement
(RTC)

Has indirect infringement occurred?

- vicarious: did D have (1) the right and ability to supervise the infringing activity
and (2) a direct financial interest in such activities? (9th Fonovisa, 2d Gershwin)
- practical ability under prong (1) might be dependent upon, e.g., filtering
technology (9th Perfect 10)
- ability to withdraw payment does not equal ability to control (9th Perfect 10 v.
Visa)
- contributory: did D know about the infringement and induce, cause or materially
contribute to the infringing conduct? (9th Fonovisa, 2d Gershwin)
- requires actual knowledge and reasonable and feasible means to limit
infringement (9th Perfect 10)
- BUT: may include failure to purge material that operator knows is infringing
(9th Perfect 10)
- AND: services that magnify borderline infringing behavior are contributory (9th
Perfect 10)
- requires direct connection to infringing activity (9th Perfect 10 v. Visa)
- providing the site and facilities for a known infringing activity is sufficient (9th
Fonovisa)

Is the defendant vicariously or contributorily liable as a device manufacturer

or OSP?
- does the device have no commercially significant noninfringing uses? (Sony)
- does the device allow specific knowledge of infringement and ability to purge? (9th
Napster)
- encryption to prevent specific knowledge amounts to willful blindness (7th
Aimster)
- has D distributed the device with the object of promoting its use to infringe
copyright? (Grokster)
- promotion must be shown by clear expression or affirmative steps to foster
infringement (Grokster)
- BUT: this arbitrarily raises the bar for noninfringing use (Grokster dissent)
- has OSP complied with DMCA requirements for safe harbor protection? ( 512)
 COPYRIGHTABILITY

Is it copyrightable according to 102(a)?

- is it an original work of authorship fixed in any tangible medium of expression, now
known or later developed, from which it can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device?
- is it a (1) literary work; (2) musical work, including any accompanying words; (3)
dramatic work, including any accompanying music; (4) pantomime or choreographic
work; (5) pictorial, graphic, and sculptural work; (6) motion picture or other audiovisual
work; (7) sound recording; or (8) architectural work?

Is it fixed?
- is the work embodied in a manner sufficiently permanent or stable to permit it to
be perceived, reproduced, or otherwise communicated for a period of more than
transitory duration ( 101)
- if AV, is the AV repetitive and constant from display to display? (3d Williams)
- if a computer program, is the work copied to RAM? (9th Cir MAI)
- is the embodiment more than transitorye.g. longer than 1.2 seconds? (2d
Cartoon Network)
- is it being simultaneously recorded and transmitted? ( 101 fixation)
- if not, is it being bootlegged? ( 1101(a))
Is it original?
- is it the product of . . . intellectual invention? (Burrow-Giles)
- would finding it unoriginal constitute an arbitrary aesthetic judgment? (Bleistein)
- does it possess at least some minimal degree of creativity? (Feist)
- the phone book is not subject to copyright
- BUT: taxonomies may be copyrightedclassification is a creative endeavor
(Delta Dental)
- if it is a copy, are there sufficiently distinguishable variations, even accidental
ones? (2d Alfred Bell)
- merely very good copies that took a lot of work and skill are not original (10th
Meshworks)
- BUT: possible exception for high-quality fine art reproductions with public benefit
(S.D.N.Y. Alva)
- if it is a photograph, is it original in rendition, timing, and subject creation? (S.D.N.Y.
Mannion)

It may be original but it is not copyrightable if:

- it is an idea rather than an expression (Selden)
- these should be patented
- the expression is the only way to communicate the idea (doctrine of merger, 1st
Morrissey)
- e.g. an instruction manual
- BUT: some circuits allow thin copyright on merged works (9th Johnson Controls)
- it is an historical account (2d Hoeling)
- it is uncopyrightable by regulation (37 C.F.R. 202)
- e.g. names and short phrases; blank forms; calendars; lists of public information;
typeface

If it is a derivative work:
- does it contain an original contribution not present in the underlying work of art?
(2d Batlin)
- is there a putative exception for high-quality reproductions with public benefit?
(S.D.N.Y. Alva)
- are the original aspects of the derived work more than trivial and not purely
mechanical? (9th Genesis)

If it is a compilation:
- did choices as to selection and arrangement . . . entail a minimal degree of
creativity? (Feist)
- even if individual elements are uncopyrightable or not infringed, is the total concept
and feel of the compilation sufficiently original? (9th Roth Greeting Cards)
- did the compilation involve discretion, judgment, interpretation, and skill? (5th
Mason)
- does variation in similar compilations prove that there is a range of possible
expressions? (5th Mason)
- are there at least four separate elements in the compilation? (Copyright Office)

If it is an architectural work:
- is it original in its overall form as well as the arrangement and composition of spaces
and elements (101, D.Md. Nelson-Salabes)
- similar to compilations: thin protection for originality in selection and arrangment
(11th Intervest)
- BUT: actually unique designs (e.g. Epcot Center) may be protected
- ALSO: architectural work copyright does not extend to pictures or destruction of
buildings ( 120)

If it is a database:
- obvious arrangements of publicly available information are not copyrightable (11th
Donnelly)
- original arrangements of data involving professional judgment and expertise are
(2d Maclean Hunter)
- merger doctrine avoided if ideas are in the weaker categoryinfused with
opinion (2d Kregos)

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

If it is a computer program:
- object code as well as source code may be copyrighted as a literary work (3d
Apple Computer)
- command menus are uncopyrightable methods of operation ( 102(b), 1st Lotus)
- Supreme Court is ambiguous on patentability of software (Bilski)

If it is a fictional character:
- is the character the story being told rather than a pawn in a plot? (C.D. Cal. MGM,
9th Sam Spade)
- is the character sufficiently unique and especially distinctive (C.D. Cal. MGM, 2d
Air Pirates)
- is the characters distinctively delineated? (D.Conn. Titan Sports)
- BUT: does this clash with the right that performers have in their own personas?

OTHER DEFENSES

Is there a fair use defense?

- weigh (1) the purpose and character of the use; (2) the nature of the copyrighted
work; (3) the substantiality of the portion used; and (4) the effect of the use upon the
market for the work ( 107)
- protection stronger for unpublished workFirst Am publication right (Harper &
Row)
- protection narrower for non-fiction and historically important material (1st Nunez,
S.D.N.Y. Time)
- when use is transformative (e.g. parody) under prong (1), prongs (3) and (4) are
lowered (Campbell)
- documentary use may be transformative use (2d Bill Graham)
- BUT: transformation is difficult to adjudicate without violating Bleistein
- when work is not subject to apportionment (e.g. photos), prong (3) is neutral (1st
Nunez)

Technological interchange
- when unprotectable aspects of work are inaccessible without disassembly, prong (2)
favors fair use
(9th Sega, 9th Sony)
- this has an antitrust motivation: supports innovation and interoperability
- online search indexing is significantly transformative, although unrelated to
expression (9th Perfect 10)

Market failure
- fair use should be permitted when: (1) market failure is present, (2) Ds use is socially
desirable, (3) award of fair use would not cause substantial injury to the incentives of
the copyright holder (Wendy Gordon)
- when markets exist for payment, these markets should be entered (Texaco); BUT:
circular? (dissent)
Is a copyright misuse defense available?
- is plaintiff using the right asserted contrary to the public interest? (3d Video
Pipeline)
- generally relates to anticompetitive behavior, but may go further
- BUT: anticompetitive behavior must be in a nexus with copyright allegation (N.D.
Cal. Napster)

REMEDIES

Is injunctive relief available?

- on such terms as it may deem reasonable to prevent or restrain infringement of a
copyright ( 502(a))
- apply EBay factors with an eye toward the special situation of copyright: (1)
irreparable injury; (2) damages inadequate compensation; (3) balance of hardships
favors injunction; (4) public interest would not be disserved (4th Galloway)
- pre-Ebay, injunction followed from past infringement + threat of continuing
violations (3d MAI); or
only in special circumstances when great public injury would result (9th Abend)
- BUT: this is disfavored as it creates a presumption of irreparable harm (N.D. Cal.
Grokster)

Are damages available?

- plaintiffs may receive actual damages . . . and any profits . . . attributable to the
infringement ( 504(b))
- plaintiffs may receive direct damages, indirect damages, and prejudgment interest
(9th Frank Music)
- P presents proof of revenue; D must present deductible expenses, elements of
profit attributable to factors outside of infringement, and creative input; doubts
favor P (9th Frank Music)
- defendants are entitled to SJ w/r/t any revenue for which (1) there exists no
conceivable connection between the infringement and those revenues; (2) despite the
existence of a conceivable connection, only speculation is offered in regard to a causal
link (4th Bouchat)
- BUT: other courts shift burden to D to disprove profit-infringement connection by a
preponderance
(4th Bouchat dissent, 4th Walker)

Statutory damages
- if copyright is registered in advance, between $750 and $30k available per work (
504(c))
- up to $150k for willful infringement, down to $200 for innocent infringment
- willfulness = knowledge that ones conduct constitutes copyright infringement (6th
Zomba)
- those who infringe innocently must do so (1) reasonably, and (2) in good faith
- large statutory damages (44:1) are not violations of due process (6th Zomba)
 - BUT: Gore factors for punitives may at some point play a role: (1) degree of
reprehensibility, (2) disparity between harm and award, (3) difference between
award and penalties for comparable cases

Do criminal provisions apply?

- liability requires willful infringement + purpose of financial gain or commercial
advantage ( 502)
- financial gain includes receipt, or expectation of receipt, of anything of value,
including the receipt of other copyrighted works ( 101)
- willful infringement entails voluntary, intentional violation of a known legal duty (D.
Neb. Moran)
- mere intent to copy is not sufficient; although subject to reasonability standard
(D. Neb. Moran)

CONTRACTS

Was there a license or transfer of copyright?

- was the document of transfer in writing and signed by the owner of the rights
conveyed? ( 204)
- was there an implied license for use: (1) did licensee request the creation of the
work; (2) did licensor deliver it; (3) did licensor intend that the licensee
copy/distribute/use the work? (9th Gagnon)

Did use fall within the revision privilege?

- revision privilege does not cover transfer of publications into databases ( 201,
Tasini)
- this involves policy considerations: which rightsholder will create more public
good?

Did use fall within contract language?

- broad language (any manner, medium or form) should be construed against
licensor(2d Boosey)
- BUT: broad language may be construed against licensee in some cases (S.D.N.Y.
Random House)
- this incorporates efficiency and public policy; might be federal common law re:
copyright/contract
- licensing contracts may constitute transfers of ownership, depending upon terms
(W.D. Wash. Vernor)
- open source copyright holders may pursue copyright claims under licensing contracts
(Fed. Jacobson)
- contracts may limit reverse engineering right (Fed. Bowers)
- BUT: dissent argues vehemently that this eviscerates fair use policy

PREEMPTION
Is a state law preempted?
- does it interfere with federal patent laws? (Sears, Bonito Boats)
- state trade secret laws are compatible with federal patent (Kewanee Oil)
- state copyright laws were compatible with federal copyright before 1976 Act
(Goldstein)
- is it (1) equivalent to an exclusive right under 106, and (2) within the subject
matter of 102?
( 301, 7th Baltimore Orioles)
- conversion claims are NOT preempted (2d Harper & Row)
- replevin claims are NOT preempted (D.N.J. Video Pipeline)
- unfair competition claims are NOT preempted (D.N.J. Video Pipeline)
- misappropriation claims are NOT preempted (5th Brown)
- tortious interference with contract claims ARE preempted (2d Harper & Row)
- unjust enrichment ARE preempted (D.N.J. Video Pipeline)
- right of publicity claims ARE preempted for AV recordings of performances (7th
Baltimore Orioles)
- BUT: may NOT be preempted if right of likeness extends to evocation of
identity (9th White)
- BUT: this is a big problem for parody and fair use (Kozinski dissent)