Trademark and Unfair Competition Law: Cases and Comments

COPYRIGHT LAW

Sixth Edition

Joyce, Leaffer, Jaszi, Ochoa

Outline by Brian Pedigo

Spring 2006, Whittier Law School

Notes: Spoken by Professor Winston

1. INTRODUCTION – THE LANDSCAPE OF COPYRIGHT

a. The Importance of Copyright

i. Note: © protects a diverse number of industries. It gives an exclusive right as to who controls the original works. Should not copy more than 10% of a work. Fair use is good for two years only. 17 USC § 102 says what can be copyrighted – works of authorship fixed in a permanent form. A © gives you the right to reproduce, make derivative works, distribute copies, publicly perform the work. You can’t © an idea, only an expression of the idea.

b. Copyright and Related Bodies of Law: patents, trademark, trade secret, right of publicity, etc.

c. History of Anglo-American Copyright Law: 1710 Statute of Anne gave right to authors to make copies for 14 years plus 14 year renewal. 1776 State © laws were modeled on the Statute of Anne, but each state had conflicting requirements. The U.S. Constitution Art I § 8 cl. 8 says, “To promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” In 1790 there was the first Fed © act. The first major overhaul to this was in 1909 which made it 28 years and 28 year renewal. Finally, in 1976 it was overhauled to life + 50 or 75 years for corporate authors. These revisions were necessary because of technological developments and because of the Berne convention (not signed until 1988).

i. Note: the protection of the author vs. the protection of the public is the hard double-purpose in © law.

ii. Recent Amendments to the 1976 Act:

1. 1980: computer software included

2. 1988: Berne ratified; formalities eliminated

3. 1990: architectural works protected

4. 1992: audio home recording act

5. 1998: Sony Bono Term Extension (life + 70) & Digital Millennium © Act (DMCA)

d. Copyright in a Changing World:

e. Copyright and the Digital Challenge: the ’92 home recording act pays a royalty to the recording industry for every digital recording device that is sold. § 1201 of the DMCA prevents reverse engineering (anti-circumvention).

f. Thinking and Talking About Copyright Law:

2. PREREQUISITES FOR COPYRIGHT PROTECTION

a. Fixation: requires a physical rendering of the fruits of the author’s creativity; fixed in a tangible medium of expression. Fixation is sufficient if the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 17 U.S.C. § 101, 102. Must be more than a transitory duration – more or less a permanent endurance that can be reproducible. CA has a statute that protects works that are not fixed.

i. Note: pre-1994 it was not illegal to record an unfixed transmission from a live musical performance. But 17 U.S.C. § 1101(a) was a quasi-copyright statute passed by Congress protecting unfixed live musical performances.

b. Originality: can be defined as:

i. independent creation by the author and a

ii. modest quantum (some minimal degree) of creativity.

1. © protects expression of an idea, but not the idea itself. A © is an award for the originality by the author. When evaluating the work, evaluate the work as a whole. Simple geometric shapes when combined may be sufficiently original. A photograph is copyrightable as a writing. An advertisement is also protectable. Originality is an attempt by the court to draw a line and say what they think is deserving of protection.

2. Idea / Expression Dichotomy: there is no protection for an idea, but only an expression of the idea. Blank account books are not subject to ©. “Where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public. (i.e. merger doctrine)” Two different expressions of the same idea are both copyrightable.

3. Merger Doctrine: when the idea and expression merge. Where there are only one or a few ways to express an idea, then the expression is not copyrightable. To © would be, effectively, to protect an idea, and this is not allowed. The more difficult it is to narrow an idea, the less likely the merger doctrine will come into play. A broad idea is usually subject to merger with the expression (e.g. e=mc^2, or a sweepstakes form).

4. Averages: averages are just facts and are not copyrightable because this is not original. Replacing the word “average” with “prediction” will not convert this into a fact. You must ask what the basis for the prediction is.

c. Other Preliminary Considerations:

3. WORKS OF AUTHORSHIP

a. Subject Matter in General

i. Literary Works: works expressed in words, numbers, or other verbal or numerical symbols or indicia.

1. Short words/phrases: not protected by © law.

2. Fictional Characters: you cannot get a © in a character in and of itself, however, if you have a literary work with that character you can sue for someone infringing the character contained in your work. The less developed (and distinct) the characters, the less it can be ©; that is the penalty an author must bear for making it too indistinct. If the character acts predictability and consistently, then it is probably ©’able. If the character is fully developed, then it is more likely copyrightable. If the character is a mere vehicle for telling the story, then this is not copyrightable. Remember the 2 factors in considering characters:

a. Developed/Distinct?

b. Mere Vehicle for Story?

3. Research: research is generally not protected by © law because © does not protect the “sweat of the brow,” rather © protects originality. © does not protect facts or history, as these belong to the public domain. Research may be considered on a sliding scale as to originality – e.g. reconstructed dialog or victims internal thoughts could possibly be ©.

4. Note: before you can prove infringement, you must show evidence that the infringer knew of the original. Look to see if the infringer has access to the original. Then you must find substantial similarity between the two.

5. Computer Software: both source code and object code are copyrightable. It does not matter that one cannot read object code because a machine can read that code. It is both original and fixed, and can therefore be ©.

a. § 117: gives limitations on exclusive rights to computer programs. You can make an additional copy of computer programs for backup purposes (archival purposes only).

ii. Musical, Dramatic, Choreographic Works:

1. Musical Works: encompasses music and lyrics. There is a limitation on compulsory cover licenses; there is a statutory royalty set for every copy sold (17 U.S.C. § 115) – much like a taking.

2. Sound Recordings: a fixation of sounds cannot be directly duplicated, but you can make a similar sounding recording. E.g. you can infringe both the musical work and the sound recording by copying the musical work. Musical work protection is stronger than the sound recording protection. The compulsory license allows others to make sound recordings of original musical works (e.g. American Pie).

3. Choreography: needs to be fixed in a tangible medium of expression to be protected.

iii. Pictorial, graphic, and sculptural works: includes form but not the mechanical or utilitarian aspects. While you may not be able to © the whole, you may be able to © parts. A useful article has intrinsic utilitarian value.

1. Separability: the test is whether it possesses artistic or aesthetic features that are physically or conceptually separable from their utilitarian dimension. If utility and art are inseparable, then not copyrightable.

2. Tests for Conceptual Separability:

a. Primary use

b. Primarily aesthetic

c. Marketable (or marketed) as art

d. Artistic design process (creator’s intent – utility or art)

e. Temporal displacement (two different concepts not inevitably entertained simultaneously – i.e. can you separate the art from the function? If yes, ©’able)

3. What’s at stake? subtracting from the public domain. However, we need to reward artists. At one end of the spectrum is applied art, at the other, industrial design. Applied art is ©’able, industrial design is not.

iv. Motion Pictures and Audiovisual Works: a series of related images presented serially.

v. Architectural works: the design of a building as embodies in any tangible medium of expression. No protection for elements that are functionally required – like doors, windows, etc. Architectural works are not evaluated under the separability test.

1. Pictures of Architecture: pictures of buildings do not violate a © on the architecture.

vi. Derivative Works: a derivative work is a work based upon a preexisting work. Almost everything under the sun in a derivative, but originality does not have to be so broad. An identical copy, with nothing contributed or original, is not a derivative. Originality is essential to a derivative work.

1. More than trivial addition: in order to be a derivative, there must be more than trivial changes. There must be substantial contributions to the original.

2. Can’t affect original: the derivative must not affect the scope of protection in the original.

3. First Sale Doctrine: says that an owner of a work exhausts her economic rights therein, and thus loses control of the copy, by selling it.

4. Permission Required: the owner/author must give permission for someone to create a derivative work, otherwise it is infringement.

vii. Compilations: a factual compilation is eligible for © if it features an original selection or arrangement of facts, but the © is limited to the particular selection or arrangement. But © never extends to facts themselves. © is not a tool by which a compilation author may keep others from using the facts or data he has collected. © rewards originality, not effort.

b. Original Works of Authorship Under § 102

c. Derivative Words and Compilations Under § 103

4. OWNERSHIP AND TRANSFERS

a. Initial Ownership: belongs to the one who creates a work at his own instance and expense (i.e. the author). The authors of a joint work are co-owners of a © in the work.

i. Anonymous Works: occurs when no natural person is identified as the author.

ii. Collective Works: occurs when there are numerous contributing authors to a collective whole. Each author of a ©’able contribution gets a copyright in that element; in addition, the compiler of the whole gets a © in the work. “Compilation” and “collective work” are interchangeable terms, but “collective work” is preferred. By default, the author retains the rights to his contribution, unless there is a signed writing transferring the ©. Giving someone else exclusive rights transfers a ©.

iii. Joint Works: occurs when two or more authors intend for their contributions to be merged into an inseparable unitary whole (inseparable & interdependent). Each part of a joint work must be worthy of © in order to © the joint work; however, you can K around this.

iv. Works Made for Hire: occurs when a work is prepared by an employee in the scope of his employment; or when there is an express agreement (written) that the work is made for hire. The courts will use principles of agency regarding works for hire before they apply © law. The term of a work for hire is 95 years from creation or 120 years from publication. The artist has no right to terminate a work for hire, but can terminate an assignment after 35 years. There are four ways to define employee:

1. employee if hiring party retains the right to control the product

2. employee if hiring party actually wielded control with respect to creation of a particular work

3. employee if common law agent (factors below)

a. Right to control work being performed?

b. Skill required?

c. Source of instrumentalities and tools

d. Location of work

e. Duration of relationship

f. Right to assign additional projects

g. Hired party’s discretion

h. Payment method

i. Role in hiring and paying assistants

j. Whether in the regular business

k. Payment of employee benefits, taxes

4. employee if formal salaried employee (use restatement of agency § 228)

a. whether work was of the type the employee was hired to perform

b. whether the creation of the work in question occurred substantially within the authorized time and space limits of the employee’s job and

c. whether the employee was actuated, at least in part, by a purpose to serve the employer’s purpose.

i. See Avtec Systems v. Peiffer, 67 F.3d 293; see also Cramer v. Crestar, 67 F.3d

b. Transfers of Rights: a transfer of © requires a signed writing. This performs a cautionary function, like the Statute of Frauds, so that people won’t lie.

i. Implied Licenses: an implied nonexclusive license is the way around the signed writing requirement. E.g. a movie producer can use the special effects shots done by a 3^rd party that it didn’t get a © ownership interest in (b/c there was no signed writing).

5. DURATION AND TERMINATION

a. Duration of Copyrights:

i. Individual author = life of author + 70 years; or

ii. Work for Hire = 95 years from publication or 120 years from creation, whichever earlier

iii. Joint Works = life + 70 years for last surviving author

1. Term extends to end of calendar year.

2. © duration has evolved from 28 years total to about 100 years total duration.

3. Reason for changes: the Berne convention pressured the U.S. to change.

iv. History of Duration - Specifics (important to know):

1. Created after 1978: term = life + 70

2. Published 1964-78: term = 28 init + 67 auto renew

3. Published 1923-63: term = 28 init + 67 manual renew

4. Published pre-1923: work is in public domain

v. Renewal as a right: an author has a right to renew and to assign the rights to his ©. Renewal is right of author, next of kin, or executors unless posthumous, collective work, work for hire, or corporate ©. Renewal can be assigned by author before time for renewal.

vi. Eldred Sonny Bono Act: the argument is life + 70 is not a limited time. Court says that there are no limitations placed on Congress as to extending © protection. The court “trusts Congressional discretion.”

i. Types of transfers: assignment, licenses (exclusive and nonexclusive). Transfer of ownership must be in writing and signed. You do not need a writing to give someone a non-exclusive license.

1. Creation vs. Publication: Creation is the key action if post-1978, Publication if pre-1978.

iii. Terminability: an author has the inalienable right to terminate any exclusive or nonexclusive grant of a transfer or license. The effect of termination is that all rights revert to the author. You cannot waive or K around termination rights, for termination is an inalienable right. Transfers are limited to 35 years rather than permitting complete conveyances. Termination does not apply to derivative works or works for hire.

iv. Timing:

1. Post 1978 Transfers: can terminate during a 5 year period, 35 years from/after date of original transfer. In order to terminate transfer, you must give written notice 2-10 years before termination. Author can terminate if alive, or if dead, his heirs. The effect of termination is that rights revert back to holder(s) in proportion to interest. Rights vest when notice served.

2. Pre 1978 Transfers: can be effective during 5 year period after expiration of original 56 year term under 1909 Act or 75 year term under 1976 Act (to recapture extra 20 years from 1998 extension).

v. Limitations: does not apply to works for hire; there is a derivative work exception where you can still continue to use derivative work under grand but cannot prepare new works. Transfers are only by author, during the author’s life.

vi. Who can terminate:

vii. Post 78 Example: transfer in 1978 gets 35 years before termination (2013-2018 is the termination window). Notice window is 2003-2011 or 2008-2016.

viii. Pre 78 Example: work published 1960; transfer in 1975; 1^st term ends 1988 (28 years); 2^nd term ends 2016 (28 years more); 76 Act Extension goes for 19 years, until 2035; Bono Extension act extends 20 more years, until 2055. Termination window is 2016-2021, and requires 2-10 years written notice. If you don’t know about the Bono act, then you get a 2^nd chance to terminate.

6. PUBLICATION AND FORMALITIES

i. pre-1976 if one published with no notice, there was no © protection and it became part of the public domain. However, no © notice is required when the distribution of the work constitutes a “limited publication.” Mere performance or exhibition of an artistic work does not amount to a publication.

ii. Post 1989 notice was optional.

iii. 1986-1989 no publication was required for protection – only fixation required; if published without notice, one must cure, otherwise becomes public domain.

iv. Limited Publication: occurs when tangible copies of the work are distributed to a limited class of persons and for a limited purpose – no loss of common law ©. Being publicly displayed (e.g. Oscar) does not make something part of the public domain, as this is not a general publication.

v. General Publication: occurs when a work is made available to members of the public regardless of who they are or what they will do with it. If the creator exceeds the scope of a limited publication and allows the work to pass into the public domain, a general publication occurs, and anyone can copy, distribute, or sell the work. General publication triggers the loss of the creator’s common law ©.

b. Notice:

i. Pre 1976: No notice, no protection

ii. 1976-1989: must give notice if general publication; 5 years to cure

iii. Post 1989: notice optional / not required; however, giving notice eliminates the “innocent infringer” defense.

1. Innocent Infringer: gets greatly reduced damages if liable for infringement. If infringement is willful, you can increase damages; intent matters. Even an innocent infringer must pay some damages, in order to retain a deterrent effect.

2. Cure: [pre-1989] means that reasonable efforts are made to add notice to all copies that have been distributed to the public after the omission has been discovered.

3. Notice Requirements:

b. Location: placed in a way to give reasonable notice; permanently legible; visible under reasonable examination.

c. Deposit and Registration:

i. Registration: not required for protection; cannot file an infringement suit without registration; prima facie evidence of validity of © if made w/in 5 years of publication; statutory damages and attorney’s fees if registration w/in 3 months of publication or infringement; registration allows customs cases.

ii. Deposit: you must deposit two copies of your work with the Library of Congress within 3 months of publication in order to register it. Failure to deposit does not affect © protection, but only imposes fines.

d. The Copyright Office:

e. Note/Hypo: 1940 book written, gets 28 years + 28 year manual renew. 1996. 19 extra years for the 1976 Act and 20 for the 1998 Sonny Bono Act. Ask if the book was a work for hire (written K for assignment of rights); if work for hire, then the employer owns the rights, and the rights cannot be terminated. If not a work for hire, then the rights can be terminated.

7. EXCLUSIVE RIGHTS AND THEIR LIMITATIONS

a. Overview: 17 USC § 106 gives the owner of a © the exclusive rights to: (1) reproduce the work, (2) prepare derivative works, (3) distribute, (4) perform, (5) display, (6) perform digital audio transmission.

i. Fair Use (§ 107): criticism, comment, news reporting, teaching, scholarship, or research is not an infringement of ©. Factors to consider include:

1. purpose and character of the use

3. amount and substantiality of the portion used

4. effect of the use upon the potential market

ii. Compulsory Licenses: certain limited uses of © works are permitted upon payment of specific royalties and compliance with statutory conditions. E.g. cable television, digital performance of sound recordings, mechanical license, public broadcasting, general satellite retransmission, local satellite transmission,

1. Benefits of Compulsory Licenses:

a. Avoid tr