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Intellectual Property
Temple University School of Law
Post, David G.

Introduction to Intellectual Property: Professor Post Spring 2013
COPYRIGHT
1.       U.S. Constitution, Art. I, § 8: The Congress shall have the power…to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries
a.       Eldred v. Ashcroft (US 2003)
i.      Rule: the CTEA comports w/ the limited times provision and does not violate the 1st Amendment
ii.      Analysis: although the term is extended, it’s still limited (doesn’t violate the “limited times” provision); Congress was bringing our © law in line w/the European Union’s, thereby allowing authors to enjoy the protections of EU overseas (promotes progress of science); Congress had rational basis for this extension (no higher scrutiny for this 1st A. claim b/c © law is a corollary of the 1st A. that has built in protections and seeks to advance the same goals)
b.       § 302 · Duration of copyright: Works created on or after January 1, 1978
i.      (a) In General. – Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the life of the author and 70 years after the author’s death
1.       “subsists from its creation” = © exists in the work from the moment it is created (no action/procedure is req’d); you can later REGISTER your ©
ii.      (b) Joint Works.—In the case of a joint work prepared by 2+ authors who didn’t work for hire, the copyright endures for a term consisting of  life of last surviving author +70 yrs after last surviving author’s death
iii.      (c) Anonymous Works, Pseudonymous Works, and Works Made for Hire.— the copyright endures for a term of 95 years from yr of 1st publication, or a term of 120 yrs from yr of creation, whichever expires first. If, before the end of such term, the identity of one or more of the authors of an anonymous or pseudonymous work is revealed in the records of a registration made for that work under subsections (a) or (d) of section 408, or in the records provided by this subsection, the copyright in the work endures for the term specified by subsection (a) or (b), based on the life of the author or authors whose identity has been revealed.
c.        ORIGINALITY
i.      § 102 · Subject matter of copyright: In general
1.       (a) Copyright protection subsists, in accordance w/this title, in original works of authorship fixed in any tangible medium of expression (OWAFTME), now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or w/aid of machine/device
a.       NOTE: § 101: a work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration
b.       NOTE: § 101: a work is “created” when it is fixed in a copy or phonorecord for the first time
2.       (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work
ii.      § 103 · Subject matter of copyright: Compilations and derivative works
1.       (a) The subject matter of copyright as specified by § 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully
2.       (b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material
iii.      Bell v. Catalda (SDNY 1947)
1.       Facts: Bell making mezzotints from pub domain paintings, Catalda reprinted & sued for infringement
2.       Rule: § 102(a): copyright protection subsists…in original works of authorship fixed in any tangible meaning of expression
3.       Analysis: the term original should be read to mean “owes its origin” to a particular author, and not that the work was “startling, novel or unusual, or a marked departure from the past”; every engraver would engrave the mezzotint slightly differently, and  subtle differences enough to meet originality req.
iv.      Burrow-Giles v. Sarony (US 1884)
1.       Facts: Sarony took Oscar Wilde’s picture, Burrow sold 85k copies and said photo can’t be copyrighted b/c not writing or production of author
2.       Rule: § 102(a)
3.       Analysis: wide variety of things subject to copyright, not just books; Congress can authorize © in all forms of writing “by which ideas of the author’s mind are given visible expression…so far as they’re representative of  author’s original intellectual conceptions”; Sarony gave his “mental conception” form by posing Oscar Wilde, choosing the lighting, wardrobe, etc. & all of that made photo the author's original work of art, even though the photograph was mechanically produced
v.      Bleinstein v. Donaldson Lithographing (US 1903)
1.       Facts: Bleinstein produced advert posters for circus. Circus needed more and hired Donaldson. Bleinstein sued for © infringement
2.       Rule: § 102(a) – copyright exists in commercial work even though illustrations were of actual people
3.       Analysis: Advertisements can constitute original works/works of art.  Court issued a warning that judges weren’t to evaluate artist or aesthetic merit of art when determining whether the work should be covered by copyright law
vi.      Feist Publications v. Rural Telephone Service (US 1991)
1.       Facts: Feist produced phonebooks, Rural didn’t give license to use their info, Feist used their directory info anyway
2.       Rule: © only applies to elements of work that are original to that author; protection not based on labor
3.       Analysis: originality req. for © protection is not satisfied, you can’t claim originality as to facts (don’t owe their origin to Rural; are discovered, not created); a compilation could be subject to © protection based on selection and arrangement if those are original, but that’s not the case here
d.       UNPROTECTED MATERIAL & “THE MERGER DOCTRINE” – The Limits of Copyright Protection
i.      Baker v. Selden (US 1879)
1.       Facts: Selden has copyrights on books involving new method of bookkeeping, Baker used similar plan w/different arrangement (sold copies of these forms); S wants the exclusive right to use the system
2.       Rule: : § 102 (b): In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery
3.       Analysis: subject matter (a system of bookkeeping) isn’t protected by © (would have to get patent for the method); the forms are part of the method (incidental to its use), giving exclusive use of the forms would amount to giving exclusive rights to the system (the “merger doctrine”: protection denied to some things if they’re too closely linked to unprotectable things)
ii.      ELEMENTS OF A © CLAIM:
1.       Work in question is protected by © (exclusive rights are attached to the work)
2.       π owns the © and holds the exclusive rights
3.       ∆, by his actions, has violated those rights (“infringement”)
iii.      Morrissey v. Procter & Gamble (1st Cir. 1967)
1.       Facts: Morrissey claims that Procter & Gamble violated his © on rules for a sweepstakes
2.       Rule: the “merger doctrine”: protection is denied to some things if they’re too closely linked to unprotectable things
3.       Analysis: the contest itself can’t be protected by ©; there are only so many ways to write rules for a sweepstakes – giving Morrissey protection would allow him to prevent all future uses by taking out a few ©s, and would prevent others from running a sweepstakes
e.        OWNERSHIP, WORK FOR HIRE DOCTRINE, JOINT AUTHORSHIP
i.      § 201 · Ownership of copyright
1.       (a) Initial Ownership.—Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of copyright in the work
2.       (b) Works Made for Hire.—In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright
3.       (c) Contributions to Collective Works.—Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series
4.       (d) Transfer of Ownership.—
a.       (1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession
b.       (2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title
5.       (e) Involuntary Transfer.—When an individual author’s ownership of a copyright, or of any of the exclusive rights under a copyright, hasn’t previously been transferred voluntarily by that individ author, no action by any governmental body or other official/organization purporting to seize, expropriate, transfer, or exercise rights of ownership w/respect to the copyright, or any of the exclusive rights under a copyright, shall be given effect under this title, except as provided under title 11.2

nd choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
e.        (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
f.        (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission
iii.      Ownership means having the exclusive rights listed in § 106
1.       Joint authorship: each author can exercise the exclusive rights under § 106, BUT they can’t give exclusive rights to others or sell the whole ©
iv.      § 109. Limitations on exclusive rights: Effect of transfer of particular copy or phonorecord (first sale doctrine)
1.       (a) Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord…
2.       NOTE: not a defense to anything but a distribution claim (106(3)); this is why there was no distribution claim in Redd Horne
v.      Columbia Picture v. Redd Horne (3d Cir. 1984)
1.       Facts: Redd = advert/PR firm of Maxwell (M rents/sells videos & lets people rent small booths where they can watch movies); video is transmitted from a VCR at storefront; Columbia claims showing work publicly
2.       Rule: § 106(4): the owner of © has exclusive rights to do & authorize any of the following: in the case of…motion pictures…to perform the © work publicly
3.       Analysis: “perform” = to show its images in any sequence or to make the sounds accompanying it audible; “publicly” = at a place open to the public or at any place where a substantial # of people outside of a normal circle of a family & its social acquaintances; transmission by any device constitutes performance; M was public, operated like movie theater; anybody could watch by paying; a performance is still public even though it is transmitted to a limited segment of the public
vi.      Three Boys Music Corp. v. Bolton (9th Cir. 2000)
1.       Facts: Isley Brothers sued Michael Bolton over the similarities in “Love is a Wonderful Thing”
2.       Rule: There are two elements for infringement, there must be evidence that the defendant had access to the copyrighted work, and there must be evidence that the works are substantially similar
3.       Analysis: Evidence was presented that showed that Bolton had access to the Isley Brothers’ song.  The evidence suggested that the songs were substantially similar as well
vii.      Selle v. Gibb (7th Cir. 1984)
1.       Facts: Selle composed song and obtained ©; he performed song in a few small shows in Chicago; years later, he hears a song by the Bee Gees that sounds very similar and sues for infringement
2.       Rule: Selle must show ownership of © in complaining work, originality, and infringement (copying by Gibb + substantial degree of similarity)
a.       The degree of similarity is irrelevant if there is no proof of copying (even if identical)
b.       Direct evidence of copying is rare, plaintiff can rely on circumstantial evidence/access
i.      Traditional view: some crts allow to infer access from similarities alone w/o other proof if the works are “strikingly similar” – so similar that explanations other than copying are excluded
ii.      Other explanations for similarity: both copied from an older song in the pub domain, coincidence (independent creation) – π has burden of eliminating other explanations
3.       Analysis: Selle was unable to show evidence that Gibb ever had access to his song; Selle’s only evidence was that of an expert witness who said that the songs were so strikingly similar that there was no way they could have been written independent of e/o – ct found that expert only eliminated the possibility of independent creation and not other possible explanations