Copyright Outline Netanel

Copyrightability:...............................................................................................4
Originality/Creativity.....................................................................................4
Burrows Giles v. Sarony.............................................................................4
Bleistin v. Donaldson.................................................................................4
Kelly v. Chicago Park District.....................................................................4
Magic Marketing v. Mailing Services of Pittsburgh.....................................4
Associated Press v. Fairey..........................................................................5
Merger Doctrine............................................................................................5
Baker v. Seldon..........................................................................................5
Lotus v. Borland.........................................................................................5
Compilation..................................................................................................5
Feist v. Rural Telephone Service................................................................5
CCC v. Maclean..........................................................................................6
Satava.......................................................................................................6
Open Source v. Bikram..............................................................................6
Sweat of the Mind v. Sweat of the Brow....................................................7
Nash v. CBS...............................................................................................7
Standard for Originality for Derivative Works...............................................7
Sobhani v. @Radical Media, Inc.................................................................7
Batlin.........................................................................................................7
Alfred Bell..................................................................................................8
Alva Studios...............................................................................................8
Meshworks v. Toyota..................................................................................8
Ets-Hotkin v. Skyy Spirits...........................................................................8
Useful Articles...............................................................................................9
Pivot Points Mara Mannequin case...........................................................9
Inhale v. Starbuzz......................................................................................9
CHARACTERS..............................................................................................10
Anderson v. Stalone.................................................................................10
Warner Bros. v. CBS.................................................................................10
Gaiman v. McFarlane...............................................................................11
Klinger v. Conan Doyle............................................................................11
SOUND RECORDINGS..................................................................................11
Newton v. Diamond.................................................................................12
Bridgeport Music v. Dimension Films.......................................................12
Audio Home Recording Act......................................................................12
Government Works.....................................................................................13
Veeck v. Southern Building Code.............................................................13
content-based restrictions to copyrightability:...........................................14
Mitchell Bros case....................................................................................14
Authorship Status; Work for Hire................................................................14
Lindsey v. RMS Titanic.............................................................................14
CCNV v. Reid............................................................................................15
Joint Authorship..........................................................................................15
Gaiman v. McFarlane...............................................................................15
1

Thomson v. Larson..................................................................................16
Aalmuhammed v. Lee..............................................................................16
Urantia Foundation v. Maheera................................................................16
Garcia v. Google......................................................................................17
Right to Make Copies.....................................................................................17
Defendant Copied.......................................................................................18
Cartoon Network v. Cablevision...............................................................18
Blackwell Publishing v. Excel Research Group.........................................18
Price v. Fox Entertainment Group............................................................19
Benay v. Warner Bros..............................................................................19
Bright Tunes Music v. Harrison.................................................................19
Arnstein v. Porter.....................................................................................20
De Minimus Copying...................................................................................20
Ringgold v. Black Entertainment Television.............................................20
Gottlieb v. Paramount Pictures................................................................20
Idea/Expression..........................................................................................21
Nichols v. Universal Pictures....................................................................21
Peter Pan Fabrics Case.............................................................................21
Kisch v. Ammirati.....................................................................................21
MERGER DOCTRINE:...................................................................................22
Herbert Rosenthal Jewelry v. Kalpakian...................................................22
Skyy Vodka Bottle Case...........................................................................22
Approaches to Substantial Similarity..........................................................22
Steinberg v Colombia Pictures.................................................................23
CBS v. ABC...............................................................................................23
Metcalf v. Boccho....................................................................................23
Swirsky v. Carey......................................................................................23
Funky Films v. Time Warner.....................................................................24
Colombia Pictures v. Miramax Films........................................................24
Derivative Works........................................................................................24
Micro Star v. FormGen.............................................................................24
Lee v. A.R.T. Co........................................................................................25
Futuredontics v. Applied Anagramics.......................................................25
Horgan v. Macmillan, Inc.........................................................................25
National Geographic v. Classified Geographic.........................................26
Sani Films Scenarios................................................................................26
Moral Rights...................................................................................................26
Gilliam v. ABC.............................................................................................26
Dastar v. 20th Century Fox..........................................................................27
Carter v. Hemsley Spear.............................................................................27
Public Distribution Right................................................................................27
London-Sire Records v. Does......................................................................28
First Sale Doctrine:.....................................................................................28
UMG Recordings, Inc. v. Augusto.............................................................28
Capitol Records, LLC. v. ReDigi, Inc.........................................................28
Right of Public Performance...........................................................................29
2

ASCAP v. US :..............................................................................................29
Columbia Pictures v. Redd Horne................................................................29
Columbia Pictures v. Aveco.........................................................................29
On Command Video v. Columbia Pictures...................................................29
Fairness in Music Licensing Act of 1998:.....................................................29
Cartoon Network LP v. CSC Holdings, Inc....................................................29
ABC v. Aereo (2014):...................................................................................30
Right of Public Performance in Sound Recordingsthere isnt one............30
Right of Public Display...................................................................................30
Perfect 10, Inc. v. Amazon :........................................................................31
Fair Use..........................................................................................................31
Harper & Row Publishers v. Nation.............................................................31
Campbell v. Acuff-Rose...............................................................................32
Walt Disney Prods. V. Air Pirates:................................................................32
Castle Rock Entertainment v. Carol Publishing:..........................................32
Dr. Seuss Enters. v. Penguin Books.............................................................32
Leibovitz v. Paramount Pictures Corp.........................................................32
Suntrust Bank v. Houghton Mifflin Co.........................................................33
Bill Graham Archives v. Darling Kindersley Ltd...........................................33
Blanch v. Koons...........................................................................................33
Rogers v. Koons.........................................................................................33
Lennon v. Premise Media............................................................................34
Calkins v. Playboy Entertainment...............................................................34
Swatch Group v. Bloomberg.......................................................................34
Salinger v. Colting.......................................................................................34
Warner Bros. Entertainment Inc. v. RDR Books...........................................34
Gaylord v. US (Fed. Cir. 2010).....................................................................34
Cariou v. Prince (2d Cir. 2013):...................................................................34
Seltzer v. Green Day...................................................................................35
Kienitz v. Sconnie Nation LLC.....................................................................35
Perfect 10 v. Amazon..................................................................................35
Vanderhye v. iParadigms............................................................................35
Authors Guild v. HathiTrust :......................................................................35
Authors Guild v. Google :...........................................................................35
Fox v. Dish :................................................................................................36
A&M Recordings v. Napster.........................................................................36
BMG Music v. Gonzalez...............................................................................36
Princeton University Press v. Michigan Document Services........................36
Cambridge Univ. Press v. Patton.................................................................36
Third Party Liability........................................................................................37
Fonovisa Inc. v. Cherry Auction...................................................................37
Perfect 10 v. Amazon..................................................................................38
Perfect 10 v. Visa:.......................................................................................38
Sony v. Universal (1984):............................................................................38
A&M Records, Inc. v. Abdallah....................................................................39
A&M Records Inc. v. Napster, Inc................................................................39
3

MGM v. Grokster (2005):.............................................................................40

Internet Service Provider Liability and Safe Harbor....................................41
Religious Tech Center v. Netcom On-Line Communication Services........41
Perfect 10 v. CCBill (9th Cir.).....................................................................41
Viacom v. Youtube (2d. Cir.).....................................................................42
UMG Recordings v. Shelter Capital:.........................................................42

Copyrightability:
originalitymodicum of creativity

Originality/Creativity
Burrows Giles v. Sarony
1. (photographs are copyrightable)
a. D argued that photograph is not a writing, nor production of author
i. Because it was non-texual
b. Holding: photograph required creativity of the arrangement of the objects,
costumes, lighting etc. and is therefore afforded copyright protection contains
modicum of creativity
Bleistin v. Donaldson
(courts will not make judgment on quality of art)
c. Issue: D made copies of Ps posters
d. Holding; if the work meets the basic standing of art, the court does not look at the
PURPOSE for which the art was created (doesnt matter that purpose of posters
was for advertising)
i. Judges will not qualify the quality of the art, as long as there is a market
for the work, it will be afforded protection under copyright
Kelly v. Chicago Park District
(authors can only be humans)
e. P set up garden and planted specific wildflowers for installation
f. Holding: no protection because natural forces were constantly changing the
installation, therefore works that owe their forms to forces of nature are not
copyrightable
i. The creative expression must be the product of a human author, cannot be
left to intervening natural forces that change the expression (works owing
their form to natural forces are not copyrightable)
Magic Marketing v. Mailing Services of Pittsburgh
(single words/short phrases/basic shapes not copyrightable)
g. Issue: can words on an envelope be afforded copyright protection?
h. Holding: NO, despite low threshold of creativity, when expression is wholly the
product of functional considerations, it is not protectable
i. Holding otherwise would exclude competition from the market

Associated Press v. Fairey

(Obama pic/ campaign image)
i. Holding: Obamas facial features/expression not part of photographers creative
intuition (not like Burrow-Giles where photographer directed the expression of
Oscar Wilde) Here, this was a totally random event/occurrence (Obamas
expression was his own, not that of the photographers direction)

Merger Doctrine
Baker v. Seldon
(merger doctrine : idea/expression dichotomy)
j. Issue: was accounting form copyrightable? Was Bakers system of accounting of
slight difference infringing?
k. Holding: NO, merger doctrine says that where there are only a limited number of
ways of expressing an idea, the expression will not be afforded copyright
protection
i. Ideas cannot be protected by copyright
ii. Blank Form Rule: account books, blank cards, and other forms that are
designed for recording information and do not in themselves convey
information are not subject to copyright protection
Lotus v. Borland
(merger doctrine idea/expression dichotomy)
l. Issue: Lotus computer program and Borland used Ps commands/macros to make
it easier for users to switch to using their program.
m. Holding: commands are uncopyrightable because of merger doctrine: command
hierarchy is not a method of operation
i. Merger doctrine applies only where the data is hard data, not where it has
been infused with taste or opinion; granting copyright in such a case
would prevent the free-flow of data
ii. Also blank form rule rationale- a tool for use rather than conveying
information
iii. Maybe more appropriate for patent protection: commands are method of
operation, not an expression itself

Compilation
Feist v. Rural Telephone Service
(originality in compilation of facts no copyright in facts, but can be copyright in compilation of
facts)
n. Feist copied Rurals white pages book and provided that info in their own white
pages book
o. Issue: whether rural selected, coordinated, or arranged these uncopyrightable
facts in an original way (to constitute a compilation of facts that is protected by
copyright law)
p. Holding: no, alphabetical order is standard, mundane and probably dictated by
state law, not by Rural (lacks Constitutionally-required modicum of creativity)
Section 102
5

i. Not an original work of authorship because lacks modicum of creativity.

ii. For a compilation to be afforded protection:
1. Must be some creativity in the selection or arrangement
2. Sweat of the brow is not enough
3. No copyright in facts themselves
CCC v. Maclean
(originality in compilation of facts)
q. Issue: Is digital database that includes Redbook data infringing on redbook
copyright? (is Redbook afforded copyright protection for their compilation?)
r. Holding: Redbook has thin copyright protection of its work because the
valuations and estimates are predictions based on editors expertise rather than
preexisting facts merely discovered or aggregated; such expertise invokes sweat
of the mind doctrine
i. Redbook displayed amply sufficient originality to pass the low-threshold
requirement to earn copyright protection
Satava
(glass jellyfish case) (originality in compilation)
s. Holding: no protection because the form (selection & arrangement) was so lifelike that it was deemed not to have modicum of creativity
i. There is no copyright protection for the technique of glass sculpting
because it is instead a process more appropriately protected by patent law,
not by copyright. The form of expression was dictated by the genre. The
jellyfish here is so life-like that it is almost factual in its nature and
therefore cannot give copyright protection to factual things.
Open Source v. Bikram
(originality in compilation functional v. expressive goal)
t. Issue: Bikram created book with images of yoga positions to practice hot yoga- Is
there copyright protection afforded to selection/arrangement of poses and whether
it is choreography or function? Are yoga poses copyrightable?
a. Holding: ineligible for copyright protection
i. No, element not in 102.
ii. Simplicity of the sequence.
iii. Poses in public domain.
iv. System to acquire health benefits so its not a dance. Purpose is
functional in nature, not creative.
u. Settled out of court:
i. If yoga serves a functional goal, it is the process for which Bikram was
seeking protection (and would likely not be granted protection)
ii. If yoga is seen as an expressive work (like a ballet or other choreographed
work), the question turns to originality or creativity
Sweat of the Mind v. Sweat of the Brow
b. Trend toward giving thin copyright protection for compilations that have sweat of
the mind component
6

c. Sweat of the brow not afforded protection because doesnt involve any intellectual
creative contribution to the work

Nash v. CBS
(copyright estoppel factual v. fictional)
d. Nash had theory that Dillinger was, in fact, not killed and CBS came out with a
show copying Nashs theory
e. Issue: Was Nashs theory an expression protected by copyright when Nash
himself held out to the public that this theory was factual/nonfictional?
f. Holding: no copyright protection afforded to Nash.
iii. Fictional elements, or fictionalized versions of factual elements, of an
otherwise factual work are protectable under copyright law
iv. But EXCEPTION: copyright estoppel. Once an authors work has been
held out to the public as factual, the author-plaintiff cannot then claim that
the book is, in actuality, fiction and thus entitled to the higher protection
allowed to fictional works.

Standard for Originality for Derivative Works

Sobhani v. @Radical Media, Inc.
Cast Away
g. Sobhani used Cast Away film elements to create short films/scripts to sell to ad
companies on a freelance basis
h. Holding:
v. Radical Media used his work without telling him and argued successfully
that because Sobhanis work was not authorized to use the Cast Away
elements he could not be afforded copyright protection and so
@RadicalMedias use was permitted
vi. Sobhani not even given protection in his contributions to the new works
that were not borrowed from Cast Away because: Copyright protection
does not extend to derivative works if the pre-existing work tends to
pervade the entire derivative work
1. Burden on infringer to show that the original does not pervade the
entire work
i. Professor finds holding HIGHLY QUESTIONABLE:
vii. Whats to keep the studios from ripping off scripts/ideas submitted to them
on spec?
1. Implied contract not to steal ideas submitted to them
Batlin
(Uncle Sam Piggy Bank) Majority
viii. Derivative work must exhibit a SUBSTANTIAL VARIATION form the
underlying work
1. Variation must come from creative, aesthetic considerations, not
functional ones
7

Alfred Bell
(traced (meso-tints) classic works and someone copied his meso-tints)
ix. Compare derivative work with underlying work and ask whether there is
MORE THAN A TRIVIAL VARIATION between them
1. So long as slight variation, can be protected by copyright (Alfred
Bell & dissent in Batlin)
Alva Studios
(miniature replicas that are exact copies of works)
x. Even if no creativity or variation in end product, derivative work is
sufficiently original so long as LABOR OR SKILL IN PROCESS OF
CREATION
1. Special skill and knowledge (equates to sweat of the mind) vs.
sweat of the brow (which is not afforded protection)
Meshworks v. Toyota
(digital model of Toyota car was made and Toyota used it in print and tv ads)
j. Issue: is the digital model afforded copyright protection? / Is Toyota not allowed
to use them for different purposes?
k. Holding: No copyright protection for model: in assessing the originality of a
work for which copyright is sought, we look only at the final product, not the
process, and the fact that intensive, skillful and even creative labor is invested in
the creation process does not guarantee its copyrightability
xi. There needs to be a substantial variation and that variation needs to be
aesthetic, not functional
Ets-Hotkin v. Skyy Spirits
(9th Circuit so substantial variation test)
l. Issue: Is the bottle copyrightable expression? Does a second photograph of a Skyy
bottle infringe on another Skyy bottle photograph?
m. Holding:
xii. No, because bottle is useful article
1. Aesthetic elements must be separable from its functional elements
xiii. 2nd photo does not infringe the first because there was a substantial
variation between the photographs based on the different lighting and
other artistic contributions (angle, perspective, etc.) Each photograph only
granted thin protection because of limited ways to photograph a bottle.
xiv. Thin copyright that only would have prevented exact copying because the
originality was so minimal and therefore Ds image was not infringed

Useful Articles
n. 2-d and 3-d works of fine, graphic, and applied art, photos, prints and art
reproductions, maps, globes, charts, diagrams, models, and technical
drawings, including architectural plans. Mechanical or utilitarian aspects
are not covered. Only design that can be identified separately from and
capable of existing independently of utilitarian aspects of article.

o. does not include right to prevent making, distribution, or display of

pictures or photos of articles lawfully reproduced in useful articles in
connection with ads or commentaries.
p. Try to sever the artistic/design aspects of article from functional elements to get
copyright protection for the former
xv. Useful article is protected only to the extent that its design incorporates
pictoral, graphic or sculptural features that can be identified
SEPARATELY from, and are capable of EXISTENCE
INDEPENDENTLY of, the utilitarian aspects thereof
1. Conceptual Separability
a. Artistic features primary and utilitarian subsidiary?
b. Useful article marketable simply because of aesthetic
qualities?
c. Can conceptually separate out utilitarian function?
d. Artistic design not significantly influenced by functional
considerations?
e. Artistic features can stand alone as work of art and useful
article would be equally useful without it?
f. Artistic features not utilitarian?
2. Physical Separability
xvi. Design Patent
1. Form or graphic features that are designed to be aesthetically
pleasing, rather than determined entirely by function
xvii. Trade Dress
1. The design or packaging of a product that acquires a
distinctiveness serving to identify the product with its
manufacturer or source
Pivot Points Mara Mannequin case
(2nd Circuit)
xviii. Issue: Whether the hungry-look mannequin is a useful item or not and
therefore afforded copyright protection?
xix. Holding: Not a useful article because not motivated by functional
considerations
1. Test: Conceptual separability
a. Do not need physical separability if conceptual separability
is feasible
Inhale v. Starbuzz
(9th Circuit)
xx. Issue: was hookah water container protectable by copyright or useful
article?
xxi. Holding: either physical OR conceptual separability will suffice
1. Functional value of hookah container is overwhelming; no matter
how distinctive the shape of the container, not afforded protection
q. Brandier Intl. v. Cascade (2nd Circuit) Bike Rack Case
9

xxii. Artist created wire sculpture and company wanted to redesign it to enable
it to function as a bike rack; artist changed design accordingly
xxiii. Holding: not copyrightable because the ultimate design was determined by
functional considerations (authors intent was to create a functional useful
item)

CHARACTERS
r. Tests:
xxiv. Specificity:
1. The less developed the character, the less they can be copyrighted
a. Minor characters are more likely to receive copyright
protection under this test than under the story being told
test
xxv. Story being told:
1. Character can be copyrighted only if the character is the story
being told, not a not a chessman in the game of telling the story
Anderson v. Stalone
(Rocky Balboa Case 9th Circuit??)
xxvi. Plaintiff wrote a script for new Rocky movie and sued Stallone for using
parts of his script
xxvii. Holding: Stallone had copyright protection of his Rocky characters
because they were part of story being told
1. Writer infringed his characters, so Stallone cannot infringe the
script because there can be no copyright protection for derivative
works that infringe, including uses of copyrighted characters
without permission
Warner Bros. v. CBS
(9th Circuit over use of characters when having acquired story from the other studio)
xxviii. Warner Bros. bought some film rights from CBS but did not also buy the
exclusive rights to the characters therein
xxix. Holding: WB lost the claim because there was no provision in the
acquisition agreement relating to granting of rights to characters
xxx. EFFECT:
1. When buying story from authors, studios will put quitclaim clause
in the agmt to say they also own the rights to any characters within
the story whether or not they have enough specificity
2. WGA: Creators of characters are entitled to royalties if studios
want to use the characters for sequels/prequels/remakes
3. Trend is to give more protection to characters in TV/Film than to
give protection to characters in written works
Gaiman v. McFarlane
(comic book artist/ writer ; 7th Circuit)

10

xxxi. Issue: Gaiman (writer) wanted joint authorship in comic book characters
because P had idea but D illustrated
xxxii. Holding: Characters in writings still leave a lot to the imagination whereas
graphic characters give a more detailed complete representation
1. Therefore even under specificity test, it will be less likely to grant
copyright protection to a written author than to the graphic author
xxxiii. Exception to joint-author test of contributing something independently
copyrightableboth contributors contributed something that was not
copyrightable expression, but together they created a copyrightable work
Klinger v. Conan Doyle
(7th Circuit; Judge Posner; Sherlock Holmes Case)
xxxiv. Issue: Did characters copyright protection expire when the first story
entered the public domain or does protection extend until the final work in
the series is completed where the author has altered the character in a
subsequent work?
xxxv. Holding:
1. Copyright protection over a character expires with the first work in
which the character appears;
2. new works in the series are considered derivative works so only
new original elements / character developments added since the
original are afforded copyright protection (protection begins anew,
but only for the character as further developed)
3. Policy (Posner):
a. More in the public interest to increase what is in the public
domain to inspire artists than to extend protection for a
single artists creation
b. Ruling otherwise would discourage creativity because it
would incentivize the author to continue writing about the
same characters instead of creating new works
xxxvi. Industry Response: Rightsholders seek to protect their characters through
Trademark to achieve longer protection term (outside of copyright
protection)

SOUND RECORDINGS
v. The work that results from the fixation in a tangible medium of expression of a
series of musical, spoken or other sounds (but not audiovisual works)
w. Must be original works of authorship and must be fixed in a phonorecord
x. Compulsory Licenses exist to make and publicly distribute phonorecords of
nondramatic musical works (only applies to the musical composition, not to the
sound recording nor to public performances)
i. The nondramatic musical work must have been:
1. previously recorded; and
2. the phonorecord distributed to the public under authority of the
copyright owner; and

11

3. the nature of the work cannot be changed or modified (basic

melody and fundamental character must not change)
Newton v. Diamond
(Beastie Boys case 9th Circuit)
ii. Issue: Newton sought damages from Beastie Boys infringing his
underlying musical composition in the sound recording they sampled for
use in their songs.
iii. Holding: Copying of Newtons composition was not infringing because it
was de minimus (not substantial enough to warrant a remedy for the
copyright holder of the composition)
1. So little of the underlying work was copied that the average
audience would not recognize where it came from.
iv. NOTE: If Beastie Boys had copied the sound recording without
permission, there would not have been a de minimus ruling this defense
does not apply to sound recordings no matter how small or unrecognizable
the recording is.
Bridgeport Music v. Dimension Films
(2005 6th Circuit)
v. Issue: Dimension films sampled a part of song without obtaining
permission
vi. Holding: Any duplication (sampling, in whole or otherwise) is
infringement de facto
1. De minimus/ substantial similarity tests do not have any
application here
2. Court remanded for consideration of fair use defense because it
had been dismissed as noninfringing on SJ
Audio Home Recording Act
vii. No copyright infringement against consumers for noncommercial digital
or analog music recordings using audio recording devices or recording
medium as described in the act
1. Doesnt apply to computers because theyre general use
capabilities, not specifically audio recording devices
viii. Atlantic Recording v. XM Satelite Radio
1. XM Satellite not protected by audio home recording act because
XM is acting as a distributor of sound recordings without the
permission of the record labels
2. Paid the levy on the manufacturing of the device but since the
devices were streaming songs, XM was infringing digital public
performance right as well as infringing the public distribution right
because the device was capable of making copies of the songs
3. As digital content delivery provider, can still be held liable for
infringing copyrights distribution right while being in compliance
with the audio home recording act.

12

4. Professors proposal: have a levy on any product or service whose

value is substantially enhanced by peer-to-peer file sharing and
allow people to make as many copies as they want and distribute
proceeds from levy to record labels according to percentage of
content being copied/distributed

Government Works
y. Protection is not available for any work of the U.S. government or its
employees/officers
i. Only applies to US Gov, not state governments, though courts have long
held that state statutes, regulations, and judicial opinions are not
copyrightable
ii. Policy reasons:
1. Public taxes pay for the government workers
2. Public authorship
a. Democratie ountry govt is for the people, so government
employees are working for the people
b. Do not need copyright incentive to create the works its
for the public benefit
Veeck v. Southern Building Code
(5th Circuit)
iii. Issue: Is a private drafting of public documents/codes afforded copyright
protection?
iv. Holding: the law, whether its source being judicial opinions or statutes
ordinances or regulations, is not subject to federal copyright law.
1. Law only adopted the codes in the document, not the creative
elements that were included therein
2. Policy:
a. do not need copyright protection as incentive to create
these laws
b. once the codes are adopted by law, they enter the public
domain because citizens are authors of the law
v. Possible Exceptions: standardized codes for particular professions; there
are a few cases holding that classifications being created for the use by
doctors may be copyrightable even though the government has adopted it

content-based restrictions to copyrightability:

vi. Courts are not going to look into nature of expression (whether its
immoral/unethical) and will afford it copyright protection
vii. 1st Amendment: govt may not discriminate against public expression;
nothing in copyright act withholds/restricts copyrightability of obscene
works
1. counter argument: obscene works by their very definition are not
creative works that promote the publics general interest, science,

13

arts, etc. and therefore have no socially redeeming value (as

determined by local groups)
Mitchell Bros case
(5th Circuit):
2. Holding: Protection of all writings without regard to content is a
constitutionally permissible means for promoting science and arts;
Not going to make inquiry into what the content is and will instead
grant copyright protection for all writings
z. Mike Tysons tattoo shown in Hangover 2.
i. No copyright protection, in order to be protected the work has to be fixed
in a tangible medium of expression and human body cannot constitute a
medium of expression.
ii. It would impose an undue burden on the person on whom the tattoo is
fixed.

Authorship Status; Work for Hire

Lindsey v. RMS Titanic.
iii. Issue: Whether the director of the film owns the copyright in the creative
expression when she in fact did not transcribe the expression.
iv. General rule: the author is the party who actually creates the work that is
the person who translates an idea into a fixed, tangible expression.
v. Holding: the crew merely (too minimal) transcribed according to
Lindseys instructions and even when the transcriber physically fixes the
work in such cases the transcriber is not granted with authorship.
aa. Commissioned works: cannot qualify as work for hire unless the contractor was
salaried as an employee and unless it was done at the instance and expense of the
commissioning party.
ab. Considered a work for hire if the work fits into any of these categories & a written
agreement exists.
i. Contribution to a collective work.
ii. Part of a motion picture.
iii. Translation.
iv. Supplementary works.
v. Compilation.
vi. Instructional text.
vii. Tests.
viii. Answer material for a test.
ix. Atlas.
ac. Term 95 years from 1st publication or 120 years from creation.
ad. Termination rights: allows an author that granted the copyright to a third party to
terminate the assignment after 35 years. Doesnt apply if the work was under
Work for Hire.
ae. Teachers exception.
i. Universities do not supervise professors works.
ii. Universities are poorly equipped to exploit professors works.

14

iii. Professors do not write for the university.

CCNV v. Reid
CCNV created the idea of the statue that they then hired Reid to create. CCNV exercised some
degree of control over design and formation (rejected certain proposals, mentioned positioning
that was preferable), but did not control Reids work hours, tools, location, ability to hire other
assistants.
af. Issue: Whether there is an employment/employee relationship? Whether employer
owns the copyright in sculptures done by sculpture without any written agreement
depends on employment relationship (employee?)
ag. Holding: independent contractor and not an employee, thus not work for hire.
Court applied the Common Law Agency Test.
i. Hiring party has right to control the product.
ii. Tax treatment of hired party.
iii. Providing employee benefits.
iv. Skill required.
v. Whether the hiring party has the right to assign additional projects to the
hired party.
vi. Source of tools.
vii. Location and duration of work.
viii. Method of pay.
ix. Whether work is part of hiring partys regular business.

Joint Authorship.
ah. A joint work is a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or independent parts of a unitary
whole.
i. Undivided equal interest.
ii. Exploitation of work without other authors consent.
iii. Pro rata share of profits.
iv. Duration life of last surviving artist + 70 years.
Gaiman v. McFarlane
7TH Cir.
v. Neither author contributed independently Posner: joint authorship was
given, otherwise it would be absurd to not grant authorship because
individual contributions were not by themselves copyrightable
Thomson v. Larson
2nd Cir.
vi. Whether Larson had joint authorship when hired as dramaturge for
Broadway musical Rent.
vii. Holding: court held that Larson never intended co-authorship. (intention is
what matters in 2nd circuit)
viii. Objective Criteria Factors to determine intention:
1. Decision-making authority
2. Billing/credits

15

3. Ability to sign third party contracts

4. How they view themselves any kind of subordination in the
relationship?
Aalmuhammed v. Lee
9th Cir.
ix. Issue: Whether Plaintiff had joint authorship when he suggested extensive
script revisions, created new scenes with new characters, directed actors
on set and edited part on post production in Malcolm X.
x. Holding: no joint authorship
1. Rationale: progress in the arts would be retarded rather than
promoted if an author could not consult with others and adopt their
useful suggestions without sacrificing sole ownership of the work
xi. Failed the mastermind test: must make fundamental creative decision
regarding the workrationale of control
1. P offered extensive script revisions for historical and religious
accuracy, directed some actors while on set=technical help and
scholarly contributions
xii. WGA requirements are all set in collective bargaining agreement; dont
necessarily follow copyright law
1. According to WGA, there is a mandatory arbitration over screen
credit when a producer is given writer credit
2. 9th Circuit is more reluctant to adopt a test that is determined by
authorship billing b/c in Hollywood, credits are handed out all over
the place, so courts dont want to use that as an indicative factor of
who owns copyright
xiii. #6 pg 342
Urantia Foundation v. Maheera
(9th Circuit; copying of book/compilation by celestial beings into a CD)
xiv. Book by celestial beings compiled by foundation copied by maaherra into
CD
xv. Holding: Court says the work is a compilation by human authors which is
afforded copyright protection
1. Because of the way they asked questions to the celestial being and
transcribed the answers they determined the order and arrangement
of the compilation and therefore original work of authorship
xvi. Factors for determining joint authorship of compilation:
1. Intention, and
2. Contribution of
3. Inseparable or interdependent parts
4. Of Unitary whole
xvii. Conventional human-human interview:
1. Generally regarded as work of joint authorship but usually subject
to contractual provisions to change the rights afforded to each
party as to credit, licensing rights, everything

16

2. Each person loses the ability to veto copying of the recording of

the interview
Garcia v. Google
(9th Circuit; Anti-islamic video; actress claims copyright in her performance)
xviii. Issue: does actress own copyright in her performance?
xix. Holding: she has copyright to her contribution to the film that is non de
minimus; Google forced to take down the videos (injunction granted)
1. But court is reviewing this en banc; will very likely be overturned
a. Implicitly granted the producer the rights to use her
performance as he wishes
b. Fails joint authorship test

Right to Make Copies

ai. 101: copies are material objects in which a work is fixed by any method now
known or later developed, and from which the work can be perceived,
reproduced, or otherwise communicated either directly or with the aid of a
machine or device
aj. Fixed: a work is fixed when its embodiment in a copy is sufficiently permanent or
stable to permit it to be perceived, reproduced, or otherwise communicated for a
period of more than a transitory duration
ak. Factors for proving copyright infringement:
i. First show Defendant COPIED:
1. Direct evidence (admission by Defendant, eye-witness evidence,
video evidence, etc.)
2. Circumstantial Evidence
a. Access:
i. Actual content
ii. Reasonable opportunity for contact (can speculate
on this point)
b. Similarity (probative similarity; probative similarity
requires expert testimony)
i. If one cannot prove access, can use probative
similarities to prove copying and infer access was
somehow provided)
1. Striking similarity
a. Where works are so nearly identical
that access and copying may be
inferred
ii. Then Show the COPYING WAS IMPROPER APPROPRIATION
1. Question for the jury
2. Not just simple and trite copying

17

Defendant Copied
Cartoon Network v. Cablevision
(2nd Circuit; DVR case)
iii. Issue: Is Cablevisions DVR system of data storage on offsite servers of
copied programming a violation of Cartoon Networks right to make
copies?
iv. Holding: No, buffer data (RAM) are not copies because they do not meet
the transitory requirement:
1. Needs to be fixed (embodied in a medium of expression)
2. For more than a transitory duration (not long enough here but
were not sure how long is long enough)
a. Distinct from MAI where RAM not at issue but could last
until computer was turned off vs. 1.24 seconds
v. Also because customers are initiating the copying of buffer data onto a
hard drive and not Cablevision, cannot be held to be making the copies;
also customers are the ones initiating the transmissions to themselves by
choosing the specific programming to copy
vi. Distinct from Blackwell because:
1. The copy shop provided material to be copied, whereas in
Cablevision the customer chooses what content to copy which
Cablevision has no control over
2. Copyshop provides complete work to be copied Cablevision
merely provides service where the customer has to start copying at
beginning of program to get an entire work Cablevision merely
bundles channels
3. Blackwell technology is less sophisticated the copy shop
employees have to provide more direct assistance = more volition,
than Cablevision which provides an automated system should
that matter?
Blackwell Publishing v. Excel Research Group
(Michigan)
vii. Professor took some coursepacks to a copy shop and made available a
master copy for students to come and make copies for themselves
viii. Issue: whether the copy shop is infringing in the reproduction right of the
author
ix. Holding: yes, copy shop infringed
1. Had volitional conduct even though it was the students who, in
fact, were pushing the button to copy
2. Copy shop was in control of the master copy and made it available
for students and provided the elements needed to make the copies
on their premises

18

Price v. Fox Entertainment Group

(2nd Circuit; writer provided script for Dodge Ball movie to his agent at WME and another of his
colleagues had the original script from one of his clients and later fox made a movie using the
script)
x. Issue: whether there was circumstantial evidence showing that Fox had
access to the script and used it to make the movie
xi. Holding:
1. There wasnt proof that the two agents exchanged the script, but it
was enough to show that the defendant had a reasonable possibility
of access
2. Circumstantial evidence: The defendant had completed his first
draft with unusual speed (within a month of the plaintiff providing
his script to his agent) and was substantially similar to Ps script
3. Court denied Ds motion for summary judgment because a jury can
find that there was enough circumstantial evidence to determine
the D had in fact copied
xii. Inverse Ratio Rule:
1. The stronger the proof of access, the less the proof of similarity is
required;
2. The stronger the proof of similarity, the less the proof of access is
required
3. 2nd circuit applied to copying in fact
4. 9th circuit applies with no distinction
Benay v. Warner Bros.
(9th Circuit 2010; use of a screenplay w/ samurai)
xiii. Must be substantial similarity between the Ps idea and Ds production
xiv. Holding: No substantial similarity of protectable expression and therefore
not copyright infringement as a matter of law (summary judgment)
1. But this case was still sent to jury for judgment on idea theft
(submission of ideas)
2. A number of similarities between the works arise out of the fact
that both works are based on the same historical events, take place
at the same time and in the same country, and share similar themes.
These similarities are largely between unprotected elements
historical facts, characteristics that flow naturally from their shared
premise, and scenes-a-faire.
Bright Tunes Music v. Harrison
(2nd Circuit; My Sweet Lord Song)
xv. Harrisons song had the same musical keys and almost identical repetitions
of motifs A & B but Harrison said that if he copied the song, it was done
subconsciously
xvi. Holding: even subconscious copying is copying in fact; parties settled
Arnstein v. Porter
(2nd Circuit; no longer good law)

19

xvii. Judges Frank and Hand: no summary judgment for defendant whenever
there is the slightest doubt about the facts
xviii. Judge Clark says summary judgment for D unless the P produces credible
evidence that would support verdict in Ps favor
xix. Arnstein alleged that Porter broke into his house and stole his music and
that his hit song had been number one on the charts
xx. Holding: court adhered to striking similarity standard and didnt find
infringement but had initially found them sufficiently similar to not
dismiss the case on summary judgment

De Minimus Copying
(defense to substantial similarity; might be considered relevant to the defense of fair use)
al. copying is trivial
am.below a quantitative threshold
an. substantial similarity requires that the copying is quantitatively and qualitatively
sufficient to support the legal conclusion that infringement has occurred
ao. 9th Circuit on music sampling: a use is de minimus only if the average audience
would not recognize the appropriation
ap. 6th Circuit on music sampling: There is no de minimus defense to copying of a
sound recording
Ringgold v. Black Entertainment Television
(2nd Circuit; poster in background of television episode)
i. Poster appeared for total of 26 seconds and at least 80% of the poster was
shown in the longest segment
ii. Issue: was the copying de minimus?
iii. Holding: The use was not de minimus
1. Brevity of segment and lack of focus lends to audience not being
able to recognize the poster BUT the theme of the poster was wellsuited for decoration of black church scene and was clearly visible;
2. Audience had enough time to recognize it and the poster helped
define the venue in which the scene was shot, so not de minimus
Gottlieb v. Paramount Pictures
(2nd Circuit; pinball machine used in background of What Women Want movie)
iv. Issue: was it de minimus
v. Holding: despite the brand/name being legible on the machine, the court
found there was no qualitative connection between the plaintiffs work and
the film (machine was just one of many items suggesting sporty theme in
the background, obscured the whole time, occupied less than 5% of frame)
AND the pinball was never fully visibleout of focus, blurred or
obscured.
1. Work must be sufficiently discernible (subject and style) to
establish qualitative connection; work must add/contribute to the
set. Presence of two dilutes presence of infringing pinball. Average
observer would not recognize the pinball designs as anything other
than generic designs in a pinball machine

20

Idea/Expression
Nichols v. Universal Pictures
(2nd Circuit; copying of theatrical play)
vi. Nichols created a play in 1922 and Universal created a TV movie with 6
sequels (play about quarrel between jewish/irish fathers, marriage of
children, birth of grandchildren, reconciliation)
vii. Holding: court determined that the similarities amounted to copying of
ideas that were not copyrightable
1. The two plays corresponded in themes and basic plot points, but
did not result in copying of expression
2. Relevant question (Pattern test between abstractions of and original
work): Whether the ordinary observer, unless he set out to detect
the disparities, would be disposed to overlook them and regard
their aesthetic appeal as the same
viii. Levels of similarity that will be deemed copyright infringement of
expressions:
1. Fragmented literal similarity: literal copying or close paraphrasing
of dialogue or sentences
2. Comprehensive nonliteral similarity: copying a works overall
structure, plot line, sequence of plot incidents, and the like
Peter Pan Fabrics Case
(2nd circuit; if ordinary observer cant tell the difference, then infringement)
ix. Whether the ordinary observer, unless he set out to detect the disparities,
would be disposed to overlook them, and regard their aesthetic appeal as
the same
1. If we consider the aesthetic appeal, elements that are unoriginal
would be included/contribute, and the uses for which the design is
intended, the designs are sufficiently similar.
a. Opens the door for looking at protected and unprotected
elements
b. Overlooks variants irrelevant to the purpose for which the
design is intended (to be used for garments)
Kisch v. Ammirati
(2nd Circuit; two photographs taken at Village Vanguard with same background, lighting, mood,
etc.) pg 632 #4
x. The reproduction of a similar setting can be copying in fact so long as the
second photographer has seen the original and intended to recreate it
xi. Holding: enough similarities in tone and mood to leave the question open
for jury to determine whether there was infringement of copyrightable
expression; denied summary judgment for defendant)

MERGER DOCTRINE:

21

Herbert Rosenthal Jewelry v. Kalpakian

(9th Circuit; Jewel encrusted bees case)
1. Holding: there are only one or a few ways to express the idea of
jewel-encrusted bees so no copyright infringement because saying
so would grant a monopoly in the idea when the point of copyright
is to only protect the expression
Skyy Vodka Bottle Case
Filtration and Comparison Approach
2. Courts will not protect a copyrighted work from infringement if the
expression embodied in the work necessarily flows from a
commonplace idea (scenes a faire doctrine)
3. When similar features of a work are standard in a treatment of a
given idea, they are treated as unprotected ideas
4. Holding: very limited number of ways to produce photo of a bottle,
so court subtracted out the unoriginal elements of the photo and
held that the photo was left with only thin protection (against
literal copying) so there was no infringement (Filtration and
Comparison)

Approaches to Substantial Similarity

Audience Test:
xii. 2nd Circuit: whether the ordinary observer unless he set out to detect the
disparities, would be disposed to overlook them and regard their aesthetic
appeal as the same (uses probative similarity)
xiii. 9th circuit: whether the ordinary person would find the total impact and
effect of Ds work substantially similar to Ps work (uses substantial
similarity)
1. Concept & feel appears more in pictorial rather than literary
copyright matters.
Extrinsic Test:
objective test that focuses on whether the protectable elements, standing alone, are substantially
similar or not (rigorous filtration and comparison test)
xiv. `extrinsic test' is an objective comparison of specific expressive elements
i.e. articulable similarities between the plot, themes, dialogue, mood,
setting, pace, characters, and sequence of events in two works.
Intrinsic Test:
subjective test that focuses on audiences reaction to each work as a whole
xv. The `intrinsic test' is a subjective comparison that focuses on `whether the
ordinary, reasonable audience' would find the works substantially similar
in the `total concept and feel of the works.
Steinberg v Colombia Pictures
(2nd Circuit; New Yorker cover drawing and Moscow on the Hudson movie)
xvi. Issue: Was the Moscow on the Hudson movie poster substantially similar
to plaintiffs work on the cover the New Yorker magazine?
xvii. Holding: No summary judgment for defendant:

22

1. D admitted that he copied in fact

2. Plaintiff would fail the filtration and comparison test
3. While there wasnt literal copying, court applied audience test and
held that a jury could find that the total concept and feel are similar
CBS v. ABC
(2nd Circuit 2004) Survivor
xviii. Court employs total concept and feel test but in a more discerning
manner
xix. Mindful of uncopyrightable elements
Metcalf v. Boccho
(9th Circuit; P wrote screenplay and treatment of tv show about inner city hospital and pitched it
to CBS, which then produced a tv series and pilot episode dealing with predominantly black staff
in inner city hospital)
xx. Issue: whether there was substantial similarity between P and Ds works
xxi. Holding: No Summary Judgment for Defendant
1. On SJ, only extrinsic test is relevant because intrinsic test is for
jury to decide; here only articulable similarities between plot,
themes, dialogue, mood, setting, pace, characters and sequence of
events are considered
2. Court admits that individually, protectable elements are not
substantially similar
3. BUT the presence of so many generic similarities and common
patterns in which they arise help Metcalf satisfy extrinsic test
a. Infringement can be based on original selection and
arrangement of unprotectable elements (particular
sequence in which an author strings together a significant
number of unprotectable elements is itself a protectable
element)
Swirsky v. Carey
(9th Cir. 2004) : overturned SJ for D because passed extrinsic test of substantial similarity in
musical composition (based on expert testimony) and intrinsic is question for the jury
xxii. Extrinsic test requires "analytical dissection of a work and expert
testimony
xxiii. "Analytical dissection" requires breaking the works "down into their
constituent elements, and comparing those elements for proof of copying
as measured by 'substantial similarity.'" Because the requirement is one of
substantial similarity to protected elements of the copyrighted work, it is
essential to distinguish between the protected and unprotected material in
a plaintiff's work.
Funky Films v. Time Warner
(9th circuit) tv shows about funeral parlor owners found not substantially similar
xxiv. Producers of screenplay sue time warner for producing show on HBO

23

xxv. Holding: court applies extrinsic test, finding that the protectable elements
standing alone were not substantially similar to those elements in Ds
work; court prevented discovery to help P demonstrate access occurred
because there were not enough similarities to even warrant the access
question
Colombia Pictures v. Miramax Films
(9th circuit; Michael Moore trailer for Big One and MIBII)
xxvi. Substantial similarity in the expression of an idea may appear from the
mood evoked by the work as a whole
xxvii. Holding:
1. Under extrinsic test, MIB trailer is substantially similar to the
expressive ideas in the TBO trailer. The trailers contain a virtually
identical theme, format, pace, sequence of events
2. Under intrinsic test: an ordinary viewers would consider the
trailers to be substantially similar based on the above comparisons
(collapsed intrinsic and extrinsic tests- given all the general
elements, protected or unprotected, the viewer may find the trailer
to be substantially similar)
aq. 2nd Circuit v. 9th Circuit approaches to summary judgment phase:
i. 2nd Circuit is less inclined to grant summary judgment for D than 9th
Circuit is when the protectable elements standing alone are not
substantially similar to allow for P to demonstrate that access was granted
1. Because 2nd Circuit takes broader total concept and feel review
of the works, rather than 9th circuits approach which applies more
rigorous extrinsic test, 2nd Circuit is more likely to permit inquiry
into whether there was access to the original work.
2. 9th Circuit applies inverse ratio rule to both
3. 2nd Circuit; broader view, looking at the whole picture (protected
and unprotected elements) if a jury might find that the work is
substantially similar we are not granting summary judgment.

Derivative Works
Micro Star v. FormGen
(9th Circuit; Duke Nukem Case)
ii. MicroStarr copied and collected levels created by users to create a
derivative work and sold them on a CD to the public
iii. Game users are impliedly licensed to create levels so they are not
infringing, but Micro Starr was not licensed to do so and cannot use this
implied license for commercial gain
iv. Issue: whether MicroStar is infringing Form Gens exclusive right to
prepare derivative works
v. Holding: MicroStar created an infringing derivative work because it
substantially incorporates protected material from the preexisting work
1. Made a comparison to creating sequels to the game

24

2. Distinguished the Gottleb v. Nintendo case (which held that there

was no infringement because in Nintendo users couldnt save the
levels, so no permanent or concrete form)
Lee v. A.R.T. Co.
(7th Circuit; paintings mounted on ceramic tiles and resold)
vi. Doctrine of First Sale: if youve bought a work/copy legitimately, youre
allowed to resell that work/copy
vii. Issue: whether D created infringing derivative work
1. Relevant question: whether the mounting of the artwork
constituted a transformation that created a copyrightable derivative
work?
viii. Holding: Granted summary judgment to D; not infringing because not an
original work of authorship since no difference in form or function from
displaying a painting in a frame
Futuredontics v. Applied Anagramics
(yahoo banners framed around website held to not create derivative work)
ix. 9th circuit: would ask whether the framing is in a concrete and permanent
form
x. 7th Circuit: would ask whether the interaction between the frame and the
underlying material is sufficient to qualify as a transformation
Horgan v. Macmillan, Inc
(2nd Circuit; pictures of Nutcracker ballet published in a book)
xi. Issue: Can a photograph of a performance be substantially similar to the
performance to constitute infringement? More broadly, whether a different
media of expression can infringe the copyright of to prepare derivative
works of the original.
xii. Holding: still photos can infringe copyright of choreography
1. Snapshot of a single moment in a dance sequence can
communicate a great deal (capture the gesture, composition of
dancers bodies and placement on state)
2. Audience test: whether the ordinary observer, unless he set out to
detect the disparities, would be disposed to overlook them and
regard their aesthetic appeal as the same
National Geographic v. Classified Geographic
(2nd Circuit; publisher compiles articles/pictures from national geographic into a book; argued
first sale doctrine)
xiii. Issue: whether first sale doctrine enables a Defendant to compile and sell a
new work constituting parts of the original
xiv. Holding: Ds use of lawfully purchased Nat Geo magazines constituted an
unlawful compilation/adaptation/arrangement
1. Change in form or function from the original constituting a
transformation to an infringing derivative work of authorship

25

Sani Films Scenarios

(software that deletes/fast forwards through obscene scenese of movies)
xv. Makes edited, clean versions of movies on DVDs
1. Violates right to make derivative works
xvi. Software programmed to automatically delete offending scenes
1. Infringing
xvii. Program fast forwards through offending scenes
1. Not violative; original still in tact and user is the one that operates
the device to create the derivative work, device just enables them
xviii. Device recognizes profanity and substitutes nonprofane words
1. Selling the device wouldnt infringe, and user would be the one
operating device
2. Family Movie Act of 2005- if the device substitutes content for
profane words, then it is not permissible under this Act
a. Making the

Moral Rights
ar. Despite being a signatory to Berne Convention, American copyright law does not
recognize moral rights or provide a cause of action for their violation, since the
law seeks to vindicate the economic, rather than the personal, rights of authors.
i. DGA requires directors credit under name or pseudonym. If the film is
butchered, the aggrieved director may appeal to the Build to disown the
film by replacing his credit with a standard pseudonym, Alan Smithee.

Gilliam v. ABC
( 2nd Circuit; Monty Python Case)
ii. ABC deleted about of Monty Python scenes to insert commercials and
remove offensive scenes for US audience; was not authorized to do this
iii. Issue: whether an unauthorized derivative work constitutes a
misrepresentation of the original work in violation of Lanham Act
iv. Holding: Preliminary injunction was granted because substantial
likelihood that MP will succeed in proving infringiement of their
copyright by ABCs broadcast of edited versions of MP programs
1. Also likely that ABCs cuts to MP program constituted an
actionable mutilation of MPs work (deformation of the work)

Dastar v. 20th Century Fox

(S. Ct.; Video Cassettes where authors name was removed)
v. Holding: Lanham Acts prohibition of false designation of origins of goods
does not cover proper attribution of an author to the underlying material
contained in the tape, only to the tape itself
vi. Result: Lanham Act no longer available to vindicated authors moral
rights, undermining holding in Monty Python case (lower courts apply this
broadly)

26

Carter v. Hemsley Spear

(2nd Circuit; artist installation in building couldnt be removed because it would constitute a
mutilation of his work)
vii. Issue: whether sculptures incorporated into a building can be protectable
by VARA
1. VARA:
a. Artist can claim authorship
b. Artist can prevent intentional distortion, mutilation or other
modification of his work that would be prejudicial to his
honor or rep.
c. When there has been dist./mut./mod., Artist can prevent use
of his name
d. Artist can prevent the destruction of a work of recognized
stature
e. Limited to fine arts that exist in a single copy or limited
edition of upto 200 copies tht were not works for hire and
are not motion pictures
f. Rights can be waived in writing
viii. Holding: the sculpture was protected and preliminary injunction was
granted

Public Distribution Right

as. Right to distribute copies or phonorecords of copyrighted work to the public by
sale or other transfer of ownership, rental, lease or lending
at. Even if you have a lawfully acquired copy, may not be permitted to redistribute it
to the public
i. Discourages people who may not have done the copying from
reselling/distributing those copies
ii. Targets copying done outside scope of US CR law i.e. abroad
au. Electronic Transmission: digital phonorecord delivery where user receives digital
copy of sound recording
i. XM Satellite Radio case: where user receives digital transmission of sound
recording from satellite radio broadcaster, content delivery provider
infringed right to distribution

London-Sire Records v. Does

(D. Mass. 2008): P2P file-sharing of sound recordings infringed right of distribution
ii. Issue: whether phonorecord (through P2P network) made available for
download without a showing of actual downloads is sufficient to implicate
exclusive right to distribute.
1. Yes. Actively transmitting or making copyrighted material
available is circumstantial evidence that it is very likely
downloading occurredcan rebut this presumption
a. BUT KaZaA case held these jury instructions wrong

27

2. Electronic transmission that creates a material object at its finish

satisfies copyright requirements
3. Creating new ownership rights in another implicates authors
ability to control the market for his/her work

First Sale Doctrine:

iii. Limitation to public distribution right by divesting copyright owner of
ability to control their work upon legal saleconsistent with policy
against restraints on alienation of private property
iv. Vernor v. Autodesk, Inc. (9th Cir. 2010): owners of software held to be
licensees and therefore not entitled to resell
1. License, as opposed to sale, when:
a. Labeled as such (notice)
b. CR owner significantly restricts the users ability to transfer
or resell good
c. CR owner imposes notable use restrictions
2. Irrelevant whether CR owner ever anticipates regaining possession
of good
UMG Recordings, Inc. v. Augusto
(9th Cir. 2011): Ps distribution of promotional CDs labeled as licensed for personal use were held
to be a sale
3. Distinct from Vernor:
a. P lacked control over the copies after distributingnever
followed up to determine how CDs were used
b. Copies were unsolicited and recipient never gave
affirmative assent to license
Capitol Records, LLC. v. ReDigi, Inc
. (2d. Cir. 2012):
v. First sale doctrine does not protect uploading of a copy of a phonorecord
where access right is transferred because it is not a particular copy, even
when file is deleted from original owners computer
vi. Also the music file made available to new owner is an unauthorized
reproductionimplicating distribution

Right of Public Performance

av. Performance is that which can be contemporaneously perceived (i.e. streaming
a song is a performance, but downloading a ringtone is not)
aw. Transmission: communication to a different physical location than where the
performance originates
ax. Public: means open to the public and is determined by size and composition
(semi-public is substantial number outside of circle of family and friends)

28

ASCAP v. US :
downloaded musical works are transmitted, but not publicly performed therefore does not
implicate ASCAP licensing
i. No contemporaneous perceptibility. Downloaded with intention of being
listened to at later time

Columbia Pictures v. Redd Horne

(3d. Cir. 1986): D operating video rental store with onsite private viewing room
ii. Entire store was open to the public and movies were performed when
employees pressed play

Columbia Pictures v. Aveco

(1986): video store secondarily liable for infringing public performance of videos in store
iii. Here customers were responsible for pressing play, but store authorized
the movie and room rental that was open to the public

On Command Video v. Columbia Pictures

(1991): hotel guests ordering video to their room and video could only be viewed in one guest
room at a time
iv. Constitutes a transmission and therefore infringes public performance
because the guest room is a physical location distinct from where the
performance originates

Fairness in Music Licensing Act of 1998:

Performance of non-dramatic musical work (other than direct transmission) with no purpose of
direct or indirect commercial advantage is not a public performance for establishments of certain
sizes
v. Restaurants and eating establishments fall within this exemption, as do
record stores

Cartoon Network LP v. CSC Holdings, Inc.

(2d Cir. 2008):
vi. Issue: whether Cablevision violates Ps right to public performance when
users of the remote DVR service viewed programs previously recorded by
users
vii. Holding: because the DVR system only makes transmissions available to
one user for his/her personal use there is no performance to the public

ABC v. Aereo (2014):

Ds system allowed users to watch broadcast programming by transmitting to individual
antennas
viii. Holding: when an entity transmitting the same contemporaneously
perceptible images and sounds to multiple people, it transmits a
performance to them regardless of the number of discreet communications
it makesthis is consistent with the purpose and text of 1976 Copyright
Act governing cable companies as it performs the same function

29

Right of Public Performance in Sound Recordingsthere isnt

one
ay. Contrast with musical works, there is a right in the underlying musical
composition
az. BUT in 1995
ba. In the case of sound recordings, to perform the copyrighted work publicly by
means of a digital audio transmission
i. Limitations to 106(6)
1. 114(d)(1) Non-subscription digital broadcasts: no public
performance right
2. 114(d)(2)Webcasting (internet radio) and subscription broadcasts
(satellite) must pay statutory compulsory license
a. Restrictions: may not publish schedule in advance or
broadcast more than prescribed number of tracks from
same artist within a given time frame
3. 106(6), 114 (1) Interactive Services, and (2) webcasts or
subscription digital broadcasts that fail to comply with 114(d)(1)
must obtain copyright owners permission (rationale: facilitate
home copying or substitute ownership)
bb. Statutory rates are determined by Copyright Royalty Judges (based on willing
buyer willing seller standard) with possibilities of appeal and lobbying congress
bc. Record labels authorized to negotiate with webcasters through Sound Exchange
bd. Direct allocation of statutory license process to recording artists (45-5-50%)
be. Criteria for determining statutory license rates
i. Balance fair income and fair return on creative investment

Right of Public Display

bf. Section 101: to display a work means to show a copy of it, either directly or by
means of a film, slide, television image, or any other device or process
bg. Section 109(c): the owner of a lawful copy is entitled to display that copy publicly
to viewers present at the place where the copy is located

Perfect 10, Inc. v. Amazon :

P sought injunction for inline linking of full-size images on infringing 3rd party websites and of
googles display of thumbnail versions of these infringing copies
i. Because full-size images were not stored on Googles servers, merely
framed within their own site, D was not responsible for infringement
rejected incorporation test in favor of server test
ii. Thumbnails may be infringinglater held fair use because Googles
search function was transformative to be fair use
1. Under server test, Google found to have copiedGoogle does
publicly display thumbnails form Googles server
iii. Only violating public display if the entity is displaying the work that it has
made a copy of Ps images

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Fair Use
bh. Four Factors:
i. Purpose and character of the use
ii. Nature of the Copyrighted Work
iii. Amount and substantiality of the portion used in relation to the
copyrighted work as a whole
1. Both quantitative and qualitative
iv. Effect of the use on the potential market for value of the copyrighted work
bi. Market-Centered Approach:
i. Sony v. Universal (1984):
1. Purpose of use was time-shifting, not librarying, and therefore was
a non-commercial/personal use
a. Dicta: commercial use presumed to cause harm
b. Dicta: commercial presumption against fair use
2. Holding: sale of copying equipment does not constitute
contributory infringement if the product is widely used for
legitimate unobjectionable uses; merely capable of substantial noninfringing uses

Harper & Row Publishers v. Nation

(1985): emphasized commercial nature of use when scooping news story
3. Holding: use was not fair use because it was not de minimus, while
quantitatively small amount copied, it was qualitatively substantial
because it copied the important ideas and distinctive expression
4. Authors right to control the first public appearance of their
expression thus copying unpublished works cuts against fair use
bj. Transformative:
i. A use is transformative if the defendant used the copyrighted work for a
different expressive purpose from that for which the copyrighted work was
originally created or if the defendant used the copyrighted work merely as
raw material for substantially new expression that conveys a different
message or artistic conception from the copyrighted work
ii. Two-Step Test
1. Does the defendants use have a new different expressive purpose
from that of the copyrighted work? Then transformative
2. If the use is transformative, has the defendant copied more than
reasonable in light of the transformative purpose?

Campbell v. Acuff-Rose
(1994): Market harm is weighed equally among factors, not most important. The more
transformative the use, the more you can take
3. Transformative: whether central purpose of the work is merely
superceding the original or adds something new with a further
purpose or different character altering the first with new
expression, meaning or message.

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a. Difference between suppressing demand and usurping the

originals market
4. D used only enough of the original as was reasonably necessary to
accomplish transformative purpose as parody to conjure up the
original
bk. Market-centered v. Transformative/Campbell
i. Fair use is inappropriate unless a reasonable copyright owner [would]
have consented to the use given the importance of the material copied.
Nature of defendants use is key: whether use is transformative
ii. Sony presumption plus Harper&Row elevation of factor four. All factors
weighted equally. Transformativeness of use colors analysis of all factors.
iii. Commercial means failure to pay the customary price.
iv. Whether D took heart of original. If what was taken was
necessary/reasonable for transformative use.
v. Broad reading of harm to the potential market. Still broadincludes
derivate use marketseven if 4th factor is no longer single most important.

Walt Disney Prods. V. Air Pirates:

decided before Campbell; Ds parody used Disneys drawings beyond what was necessary to
make the commentary. Held not a fair use.

Castle Rock Entertainment v. Carol Publishing:

use of Seinfeld material for trivia game was not fair use.
vi. Transformative use was minimal to non-existent because its purpose of
entertainment was the same as the shows

Dr. Seuss Enters. v. Penguin Books

(9th Cir. 1997): Court find use of cat in the hat style drawings and word-play to describe OJ
Simpson was more of a satire than parody

Leibovitz v. Paramount Pictures Corp.

(2d. Cir. 1998):
vii. Applied : if a viewer could interpret it as a parody (commentary on the
seriousness/pretentiousness of the original) that is sufficient to find
parodic use
viii. No adverse effect on sale or use of the originaldeflating ridicule must be
tolerated
ix. Fact that parody is used in connection with ad may lessen indulgence to
which it is entitled but does not itself negate fair use

Barton Beebes An Empirical Study of U.S. Copyright Fair Use

Opinions 1978-2005 found that transformativeness was not always addressed (37%
found fair use with no transformative analysis)
x. Netanels Research 2005-2010: overwhelmingly fair use cases apply
transformative use doctrine
1. Statistically significant increase in rate of Ds winning under
transformative fair use analysis

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Suntrust Bank v. Houghton Mifflin Co.

(11th Cir. 2001): The wind done gone found to be a fair use parody of Gone with the Wind
xi. Campbell definition of parody: aim is to comment upon or criticize a prior
work by appropriating elements of the original in creating a new artistic
work.
xii. Although parody is also an expressive purpose, still transformative

Bill Graham Archives v. Darling Kindersley Ltd

. (2d. Cir. 2006): Grateful dead posters in archival book found to be transformative
xiii. Use was for historical purposes not aesthetic/entertainment
xiv. Ask whether secondary work uses material for a different purpose than
that for which the original was made
xv. Market analysis does not ask about effect on potential market but says that
transformative use implies transformative market and thus beyond scope
of originals market
xvi. Cannot prevent others from entering fair use market merely by developing
a licensing market for a transformative use

Blanch v. Koons
(2d. Cir. 2006) : evidence of Ds subjective intent is used to determine what the expressive was
xvii. Obliterates the distinction between parody and satire
xviii. Issue: Whether there is a distinction between purpose of creation of
original and its use in the defendants

Rogers v. Koons
(2d Cir. 1992): Ds sculpture based on couple holding eight puppies not fair use
xix. Not a fair use because it was a commercial and satirical critique of
consumer society rather than parody.
xx. Found likelihood of future harm in market for photographers work

Lennon v. Premise Media

(SDNY 2008): copying 15 seconds of Lennons song Imagine in motion picture film held to be
fair use
xxi. Expressive purpose was distinct from the reason it was initially created,
thus fair
xxii. Copying without any change can be transformativedidnt have to find
that the use was strictly necessary to convey chosen message

Calkins v. Playboy Entertainment

(E.D. Cal. 2008) yearbook photo included in playboy editorial found to be transformative
xxiii. Ds use was for entertainment whereas original was created as part of a
gift for family and friends

Swatch Group v. Bloomberg

(2d Cir. 2004): D published Ps conference call with financial analysis discussing reports found
to be transformative

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xxiv. Bloombergs purpose was to make the materials available to the audience
that Swatch had explicitly excluded. News reporting favored fair use

Salinger v. Colting
(S.D.N.Y. 2009): granted injunction against Ds book that depicted Hauldon Caufield 60 years
later held not fair use
xxv. D made public statements that it was not a parody, but a tribute thus not
transformativenot enough merely to add new expression

Warner Bros. Entertainment Inc. v. RDR Books

(SDNY 2008):
xxvi. Ds lexicon was a transformative use as a reference piece as opposed to a
book for entertainment.
xxvii. Not fair use, however, because it repeatedly copied too much of the prose
beyond what was reasonably necessary
xxviii. P had already licensed a companion reference and Ds copying of those
was for the same use so not transformative

Gaylord v. US (Fed. Cir. 2010)

Stamps depicting Korean War memorial not fair use
xxix. Both works had expressive purpose of honoring Korean War veterans
xxx. Even if expressive content is altered if the use is not transformative then
this is insufficientexpressive purpose must be transformative

Cariou v. Prince (2d Cir. 2013):

Ds paintings using Ps photographs of Rastas found to be transformative
xxxi. Dont need to be commenting or critiquing and did not consider Ds
comments on his use. Look only at images.
xxxii. Holding: D gave new expression and employed new aesthetics with
creative and communicative results distinct from Carious

Seltzer v. Green Day

(9th Cir. 2013): Ps drawing was made into poster that was plastered all over LA and D used as
backdrop in music video
xxxiii. Held: D used image as raw material to send a different message and has a
distinct aesthetic (criticized religion vs. representing youth skateboard
culture).
xxxiv. Considers aesthetic message that artist meant to convey rather than asking
about broad expressive categories

Kienitz v. Sconnie Nation LLC

(7th Cir. 2014): held that mayors image used on tee shirt was transformative and fair
xxxv. Considers fourth factor most important, believes asking if it is
transformative overrides protection of derivative works
xxxvi. Because image had been available without charge on website and
fundamentally altered the image so much that very little original
expression was left

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Perfect 10 v. Amazon
(9th Cir. 2007) Revisited : Googles display of thumbnails of Ps copyrighted images
xxxvii. Nature and character is transformative use because it serves a different
purpose or function from the original work ,
1. Also its function promotes goals of copyright law and serves the
interest of the public so this favors fair use
2. Transformative finding colors analysis of all other factors
xxxviii. Required proof of actual harm even of potential markets, even though
Perfect 10 markets thumbnail downloads for mobile

Vanderhye v. iParadigms
(4th Cir. 2009): turnitin plagiarism detection service was a transformative and thus fair use
xxxix. Considered function and purpose of storing entire copies of students
papersassignments vs. preventing plagiarism
1. Work need not be altered to be transformative

Authors Guild v. HathiTrust :

copying of full-text books into online searchable database and service for blind both fair use
xl. Fair use of search database: full-text searchable database held to be
transformative because it has a different purpose, character, expression,
meaning and message from the page from which it is drawn.
xli. Services for users who have disabilities: not transformative because
merely facilitates access to text to wider audience BUT consistent with
house report using this example as a fair usetransformative finding not
necessary for fair use

Authors Guild v. Google :

same basic facts as above BUT Google actually displays some of the text on the page as opposed
to just page numbers and is a more commercial entity than a library/university

Fox v. Dish :
motion for preliminary injunction against Dishs autohop (skips over commercials) and
primetime anytime service (auto-records primetime programming) found no direct infringement
(Dish has not volitional conduct for making infringing copiescustomer responsible) and no
contributory liability based on user activity
xlii. Prime-time Anytime is fair use : Non-commercial according to Sony: timeshifting for private home use is a noncommercial nonprofit activity. Users
are not librarying
1. Therefore even copying whole programming does not militate
against FU
xliii. Atuohop: Elements that are skipped (commercials) do not implicate
copyright interest therefore fair use.

A&M Recordings v. Napster

(9th Cir. 2001)

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xliv. Nature and character: considers whether the new work merely replaces the
object of the original creation or instead adds a further purpose or different
character
1. Merely retransmitted in a different medium, not transformative
2. Even indirect economic advantage is commercial: trading
infringing copies for other items is financially motivated
xlv. Materially impaired marketability of the work by offering free copies
1. Reduces audio CD sales
2. Raises barriers for P to enter market for digital downloads of music

BMG Music v. Gonzalez

(7th Cir. 2005): user downloaded music files claimed use was merely sampling and later
purchased works not fair use
xlvi. Interferes with authors right to decide how to market their worknot for
workers to determine
xlvii. Music downloaded for free is a close substitute for purchased works and
therefore causes market harm

Princeton University Press v. Michigan Document Services

(6th Cir. 1996): Commercial copyshops sale of coursepacks is not fair use
xlviii. Not a favored use because of 6th Cirs strict reading of classroom safe
harbor as the outer limits of fair use
xlix. Failure to pay permissions fees causes market harm to publishers, even if
academic authors would allow this use theyre not the ones with the
investment in publishing
l. Test of commercial use: using copyrightable expression without paying
commercial licensing price
1. Because copy-shop is commercial, then not fair use

Cambridge Univ. Press v. Patton

(11th Cir. 2014): academic eReserves of academic materials distinct from copy-shop cases
favorable to fair use with wider understanding of classroom safe harbor
li. Favored use for teaching purposes even if non-transformative
1. Fails commercial test requiring direct and conspicuous financial
rewards from use of Cr material
lii. District court weighed in favor of fair use because CR works were mainly
nonfictional and informational
liii. Ask whether quantity and value of materials used are reasonable in
relation to the purpose of copying.extent of permissible copying varies
with purpose and character of use (consider pedagogical purposes)
1. Overrules district courts strict application of no more than 10% or
one chapter
liv. Ds use of small excepts did not affect Ps actual or potential sales of
books, and fact that P made it easier to pay (permissions) does not
automatically dictate a right to payment.
1. Not all works were available under permission

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2. The vice of circular reasoning arises only if the availability of

payment is conclusive against fair use.

Third Party Liability

bl. **Supplier of a multiple use consumer good is not liable for user infringements
unless the supplier has actively encouraged purchasers to use the good to infringe
bm.
Contributory Liability
i. Two requirements
1. Knowledge (of infringing activity)
2. Contribution (induces, causes or materially contributes)
ii. Two basic types
1. Defendant provides the copyrighted work to the infringer
2. Defendant provides the means to infringe
a. More difficult because processes and services have multiple
uses that are not exclusively for infringing
b. Difficult when D helps but its aid is not direct (i.e.
promoting and advertising a service that infringes)
bn. Vicarious Liability
i. Right and ability to supervise the infringer
ii. An obvious and direct financial interest in the exploitation of the
infringing materials
iii. Not vicariously liable: residential landlords
1. Cannot easily control activities going on in property
2. Not financially benefitting from infringing activity, only
occupation of premises
3. Distinct from dancehall cases where landlord controls premises
and receives financial benefit

Fonovisa Inc. v. Cherry Auction

(9th Cir. 1996): swap meet operator may be contributorily liable even absent knowledge of
specific identifiable infringement
iv. Vicariously liable:
1. Right and ability to control the infringing activity by policing
vendors and either banning or forcing compliance with their rules
and controlled customer access
2. Direct financial interest in infringing activity where they enhance
the attractiveness of the venue to potential customers
a. Received rental fees, customer admissions and customers
paying for parking, food, and other services
v. Contributorily liable:
1. Sheriff had previously raided for infringement and received letters
and yet D did not exercise power to cease infringing conduct
2. D materially contributed to infringement by not exercising control
and continuing to provide the environment and servicesspace,
utilities, parking, advertising, etc.

37

Perfect 10 v. Amazon
(9th Cir. 2007) Google sued for adsense program by which it earns money through visits to 3rd
party websites
vi. Holding: no vicarious liability because Google did not have a contractual
right to control third party websites from posting infringing material and
no practical means to police against them given the current technology
vii. Right to discontinue Adsense does not give Google right and ability to
stop infringement
viii. No contributory liability because computer system operator must have
actual knowledge about specific infringing material on its system and can
take simple measures to prevent further damage to copyrighted works and
yet continues to provide access to infringing works

Perfect 10 v. Visa:
sued for secondary liability for continuing to process credit card payments for websites that
infringed plaintiffs IP in spite of notices
ix. Credit card companies do not materially contribute because they have no
direct connection to actual infringement (copying) only provides payment
x. Ability to withdraw financial carrot does not create stick of right ability to
controlexerting financial pressure is not enough
xi. Dissent: payment is a necessary part of the transaction, no reason to
provide infringing material if no financial benefitrenders financial
service material contribution; also things there should be vicarious liability
because financial process is the trigger for distribution of infringing
material (practical ability not absolute right is the standard)

Sony v. Universal (1984):

seller of off-the-shelf product that some purchasers use to infringe is not contributorily liable so
long as the product is capable of a substantial noninfringing usewill not impute knowledge and
intent
xii. Sony not contributorily liable for providing copying equipment where the
product is widely used for legitimate unobjectionable purposesstaple
doctrine
xiii. Staple doctrine: sale of staple article or commodity of commerce suitable
for substantial noninfringing use cannot constitute contributory
infringement.
1. Strikes a balance between a copyright holders legitimate demand
for effective protection of the statutory monopoly and the rights of
others to freely engage in substantially unrelated areas of
commerce
xiv. Recording a television program for later viewing is fair usegiven this
substantial non-infringing use, Sony not contributorily liable for any
infringing uses for Betamax

A&M Records, Inc. v. Abdallah

C.D. Cal. 1996): rejects argument that time-loaded cassettes were capable of substantial noninfringing usescannot apply to good made specially for infringement
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xv. Number of noninfringing users/uses insubstantial in light of counterfeiting

use and circumstantial evidence indicated heavy involvement in
facilitating counterfeit business.

A&M Records Inc. v. Napster, Inc.

(9th Cir. 2001): even if a computer system is capable of substantial noinfringing use, the
computer system operator is contributorily liable if it has actual knowledge of specific infringing
activity and materially contributes to that direct infringement
xvi. Holding: Napster knowingly encourages and assists the infringement of
plaintiffs copyrights.
xvii. Contributory:
1. A provider of online service will be liable when there is actual
knowledge even when there is a substantial noninfringing use as
well (distinct from seller of product with knowledge when
noninfringing use)2. Contributed by providing the marketplace/site and facility for
transfer of copyrighted songs
3. Contributed by failing to remove infringing materials with simple
measures available to them
xviii. Vicarious
1. Had right and ability to supervise but didntmust exercise right
to police to the fullest extent
a. Duty is cabined by existing system architecture, but
Napster could have located known infringing files by
searching indice and removing
2. Financial benefit because it made the venue more attractive to
potential new customers

MGM v. Grokster (2005):

D distributed free software that allowed individuals to share private e-files without authorization,
system encrypted and no central index to policestill liable
xix. Vicarious liability: Grokster had knowledge but no ability to control
infringing activity.
xx. Holding: Grokster is contributorily liable because it actively induced
users infringement
xxi. One who distributes a device with the object of promoting its use to
infringe copyright as shown by clear expression or other affirmative
steps taken to foster infringement is liable for the resulting acts of
infringement by third parties.
1. Mere knowledge is not enough, nor is tech support or incidental
promotional acts
2. Rule based on purposeful, culpable expression and conduct
xxii. Tension between new technology and appropriate copyright protection
xxiii. Distinct from Sony where the issue was imputed intent and the products
infringing use was incidental as opposed to express purpose of promoting
products infringing usefact specific based on evidence of appealing to
customers as new Napster
39

1. Distribution of a commercial product capable of substantial

noninfringing uses does not give rise to contributory liability for
infringement unless the distributor has actual knowledge of
specific instances of infringement and fails to act on that
knowledge to prevent the infringement
2. Staple sale doctrine not the only grounds for contributory liability
xxiv. Active inducement may be separate independent grounds for contributory
liability
1. Does not require actual knowledge of particular infringing acts
xxv. 3-3-3 split in regards to Sony
1. Court: leave Sony for another day, 9th cir misapplied
2. Ginsburg: Grokster fails Sony because a lot of non-infringing files
share does not automatically remove the possibility of liability
3. Breyer: Grokster passes Sony active inducement is separate
independent grounds for liability as opposed to providing material
contribution
a. Do not need to impute knowledge and intent where there is
evidence of actual knowledge and intent to induce
infringing
xxvi. Concerns for companies going forward
1. Discovery of internal communications
2. Procedure: now more difficult to win on SJ when intent is at issue
in addition to the product/service
3. Need to alter system architecture-duty to filter?
4. Initial inducement can taint business success going forward

Internet Service Provider Liability and Safe Harbor

Religious Tech Center v. Netcom On-Line Communication Services
(9th Cir. 1995)
xxvii. No vicarious liability in the absence of financial benefitcharging a flat
fee is insufficient
xxviii. Question of whether Netcom had knowledge during relevant time period
of infringement and would have been able to stop it
bo. DMCA: so long as Internet intermediaries respond expeditiously to copyright
owner takedown notices, which must identify the location and identity of specific
infringements, and have a reasonable policy of terminating service to repeat
infringers, they will not be liable for infringements that take place on their system.
Technically gave CR holders a new rightto control access to works in digital
format (cannot circumvent DRM)
i. Procedural:
1. Must reasonably implement policy for terminating repeat
infringers
2. Dont interfere with DRM protections
3. Comply with notice and take-down

40

a. Rights holder sends notice, ISP takes down and notifies

subscriber, if counter-notification ISP will repost unless
notice lawsuit
ii. Substantive (applies to user storage and info location tools)
1. No actual or constructive knowledge
a. Actual knowledge of specific instances of infringement
(subjective)
b. Constructive (red flag) Knowledge: must be subjectively
aware of facts that would have made the specific
infringement objectively obvious to a reasonable person.
2. Expeditious removal upon actual or constructive knowledge (or
notice)
3. No direct financial benefit directly attributable to infringing
activity in a case where ISP has the right and ability to control such
activity
iii. Do not have to actively search for infringement, only act upon notice
Perfect 10 v. CCBill (9th Cir.)
iv. Issue: Whether CCBill enjoyed benefit of safe harbor
v. Notices were all defective and therefore did not constitute constructive
knowledge must scream infringement
vi. Applies same standard of financial benefit taken from secondary liability
(one-time set-up fee is not enough)
1. whether the infringing activity constitutes a draw for subscribers,
not just an added benefit. Not found if no evidence that it
attracted or retained subscriptions because of the infringement or
lost subscriptions because of eventual obstruction of infringement.
Viacom v. Youtube (2d. Cir.)
: safe harbor extends to additional services (draws line at syndication for third parties) when
qualified as storage provider
vii. Youtube complied with DMCA procedural requirements, but issue was
related to standard of knowledge.
viii. Holding: Discontinuing community flagging for copyright infringement
and selectively implementing filtering (for those rights holders with a
license agreement) does not constitute willful blindnessno liability
1. A person is willfully blind or engages in conscious avoidance
amounting to knowledge where the person was aware of a high
probability of the fact in dispute and consciously avoided
confirming that factdeliberate effort to avoid guilty knowledge.
UMG Recordings v. Shelter Capital:
Veoh website allows users to upload content and authorized to host partner copyrighted content
ix. In order to have the right and ability to control, the service provider must
exert substantial influence on the activities of users (some kind of direct
involvement with users experience)

41

x. Right and ability to control requires control over specific infringing

activity the provider knows aboutno duty to police

42