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Intellectual Property
Belmont University College of Law
Alexander, Melissa





(1) Requirements

i. Fixation

1. Requires that a work be “fixed in any tangible medium of expression,” regardless of form, manner, or medium. 17 USC 102(a).

ii. Originality

1. Independent creation

2. Modicum of creativity

1) Low threshold

2) Cannot be so routine or mechanical as to require no creativity Feist (phonebook case)

iii. Formalities – (largely voluntary but offer better protection)

1. Notice

1) 1909-1976: All have copyright mark, copyright holder name, date

2) 1976-1789: Protection begins upon creation, not publication; notice still required on publication, but inadvertent and small-scale admissions okay

3) Since (Berne) 1989: Eliminates notice req., but still encouraged because precludes “innocent infringement” (in mitigation of actual or statutory damages) if copied

2. Publication

1) Avoid the public domain

2) 1909: publication triggered by “publication” (or registration), unpublished works could be protected under state law

3) 1976-1989: protection begins upon creation; state law preempted; publication triggers notice requirements

4) Since 1989: publication does not determine validity; does trigger deposit requirement; running of time, etc.

3. Registration (can’t enforce unless you do it)

1) 1909: Not required initially (publication w/ notice sufficient; required by 18th year to renew for additional 28 years; required to bring suit

2) 1976-1989: not required generally (abolished renewal)

i. Required to bring suit (s. 411)

ii. Registration prima facie evidence of validity (s.410)

iii. Statutory damages and att. fees only available for period after registration (cannot collect damages for period prior to registration)

3) Since 1989:

i. Not required to bring suit by foreign owner whose country of origin is a Berne Convention Member

ii. Required to bring suit for others

4. Deposit (s.407): (pay fine if you want to enforce and you haven’t/didn’t in three months of publication)

1) Requires deposit of 2 copies of each work published in US within 3 months of publication

i. Library of congress

ii. Copyright Office

2) Since 1976 Act, failure to comply does not affect validity

i. Triggers fines

ii. Stands in way of registration completion

(2) Subject Matter Proper 17 USC 102(b)

i. Idea Expression

1. Baker v. Selden (Bookkeeper case à can protect expression of idea, but not the idea itself)

1) Cannot copyright a “procedure, process, or system”

2) Blocking Patents: allows a second inventor to obtain a patent on his improvement even though the improvement also infringes on another patent

ii. Merger Doctrine

1. When there is only 1 or but a few ways to express an idea, the idea merges w/ its expression and the expression is not CRable. Morrissey v. Procter & Gamble (Sweepstakes rules case)

iii. Useful Article

1. s.101: As an “article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information” Brandir International, Inc. v. Cascade Pacific Lumber Co. (RIBBON bike rack case)

2. Conceptual separability

1) Purpose was not utility

3. Physical separability

1) Can’t “take the art off” the useful article

iv. Government Works

1. Government works are not protectable by copyright (federal only, however states have also extended the ban to state government officials)

1) s.101 expressly limits federal governmental works from copyright protection

i. Limits agents of the government from copyright of works in their official capacity

2) Why?

i. Don’t want to limit law access

ii. Government employees work for the people via tax

2. Government can hold copyrights transferred to it

(3) Ownership & Duration Established?

i. Work for Hire

1. Written, signed agreement

1) When

i. Contri. To collective work

ii. Motion picture

iii. Audiovisual work

iv. Translation

v. Supplementary work

vi. Compilation

vii. Test

viii. Answer material

ix. Atlas

2) Or employee/employer relationship

3) Community for Creative Non-Violence et al. v. Reid (Modern Nativity Sculpture Case)

i. Adopt the traditional test of principal/agent to characterize employee/employer relationship

1. Control

2. Skill

3. Source of instrumentalities and tools

4. Location of the creation

5. Duration of relationship

6. Hiring parties right to assign additional jobs

7. Hiring parties

8. Paying

9. Discretion

10. Hiring party is a business

11. Taxes

2. Joint/Collective Work

1) Joint works

i. Work made by two or more authors. There must be

1. Copyrightable work

a. Each author’s work must be copyrightable independently Aalmuhammed v. Lee (Malcolm X Case)

2. Two authors

a. Authors must intend their contributions be merged into inseparable or interdependent parts of a unitary whole

2) Collective works

i. Work in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole (101; 201)

3. Duration

1) Copyrights are of limited duration

2) Duration has evolved significantly

3) The 76 Act came into effect Jan. 1st 1978

i. All works made Dec. 31, 1977 and acts before are governed by 1909 Act

1. 28 year term, renewable in final year for 28 more

ii. All works made Jan 1, 1978 and on are controlled by 1976 Act

1. Life of author plus 50 years (75 years form publication or 100 years from creation if corp, anon, work for hire.)

iii. 1988-added additional 20 years to copyright duration (NOW à life + 70 or 95 from publication or 120 from creation (whichever first) for works for hire/anon.

1. The 1998 renewal reg is optional clause à applies only to works still in the 1st term of 1909 act (those created b/w 1964-1977)

4) Division Transfer

i. Under 1909 Act

1. NOT divisible

2. Licensee cannot bring suit without proprietor

ii. Under 1976 Act

1. Divisible, 17 USC 201(d)(1)

2. Exclusive licensee can bring suit (101)

3. Any transfer must be in WRITING, SIGNED by owner (204)

4. Allows older works to terminate b/w 56 and 61st year to profit from 19 years addl. Protection added by 1976 act

a. 1998 Sonny Bono Act also allows termination to capture addl. 20 years

5. Termination of transfers may NOT be assigned in advance

6. Termination is not available for works for hire

(4) Violation of protected right?

i. Right to Make Copies

1. Broad (any material part; substantially similar)

2. Does NOT prohibit independent development (unlike patents)

1) Even if similar, not protected

3. Infringem

Right to Prepare Derivative Works?

1) Art tiles and framing? (Can purchaser of cards and books containing artwork mount and affix the pictures to ceramic tiles for later sale?)

i. Courts divided. Ninth Circuit – process of attaching art form a book onto ceramic tiles constituted preparation of a derivative work

ii. Seventh Circuit – mere mounting of pictures on tiles did not rise to the level of originality required to create a derivative work and that the first sale doctrine immunizes the defendants for liability for unauthorized distribution

iii. “Making available” right?

1. File sharing w/o proof of download? Courts divided

iv. Old License Agreements…new distribution platforms

1. i.e. eBooks

2. Courts interpret contracts narrowly

(7) Public display (17 USC s.106(4), (5))

i. Author has exclusive right to perform or display works publicly

1. If it moves, it’s performance

1) Limited in sound recordings

i. Don’t need a license to play a sound recording on traditional radio

2) Performance rights are broader than display

i. Blanket license-musical compositions

1. BMI/ADCAP/SESAC – negotiate blanket licenses for performance of recordings

2. If it stays still, it’s a display

1) Right to display – owner of the work has the right to display a copy in a particular location

i. How do you violate the right of display? Cannot transmit the display through broadcast

2) No display right in architectural works

ii. Exceptions to Public Performance & Display

1. Public interest – i.e. education, distance learning, religious

1) Record stores may play; video stores may not

2) Fairness in music licensing act v. Berne Convention

2. Compulsory license

1) i.e. cable and satellite transmissions, jukeboxes, webcasting, public broadcasting

(8) Moral Rights

i. Beyond protection of work, moral rights protect the “personality” of the author (Personhood theory of IP –who you are is bound up in the work you create

ii. Right of attribution

1. Have one’s name associated with art

iii. Right of integrity

1. Protect work from destruction/mutilation

iv. Berne Convention

1. Even if a copyright is transferred the author has the right to claim authorship and to object to any distortion of the work

v. Generally more narrow in US than Europe (Visual Artists Rights Act of 1990)

1. Only applies to “visual art”

2. Only exercisable by artist, cannot be transferred; may be waived

3. Allows claim authorship; avoid false attribution; attribution modified work

4. If work of recognized stature, may prevent destruction

5. Time frame

1) On or after 1991 – life of author

2) Before 1991 – must have retained copy of the work