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

Intellectual Property

Prof. Post

Fall 2013


I. Copyright Protection

a. Purpose of a Copyright

i. U.S. Constitution, Art. I §8, Clause 8: “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;”

ii. Copyright law provides a right to exclude others from reproducing the copyrighted expression, publicly performing or displaying the expression, distributing copies of the expression, and from creating derivative works based on the expression (17 USC S 106). Today, copyright protection does not require registration or notice of copyright. A work need only be original and “fixed” in a tangible medium of expression. Not as robust as patent protection (“Fair Use” Doctrine), but lasts for the life of the author + 70 years.

iii. Eric Eldred et al v. John Ashcroft (2002): CTEA retroactively extends copyright protection for another 20 years. Extension is constitutional- part of congress’s enumerated powers (Art. I). Rational basis standard – up to Congress to decide what promotes the progress of science and the useful arts.

1. Copyright protection is a tradeoff. There is value to society to incentivize authors to produce. But at some point, it’s also valuable for society to have free access to the works. Dissemination of the works is hindered by the copyright.

b. Requirements for copyright protection: must be an original work of art fixed in a tangible means of expression (by or under the authority of the author).

i. Lueddecke v. Chevrolet Motor Co et al (1934): Lueddecke provided an idea to Chevy that was neither novel nor useful, but common knowledge. No property right, not copyrightable (and no contract – no meeting of the minds)!

ii. §102(a): Copyright protection subsists, in accordance with this title in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

1. literary works;

2. musical works; including any accompanying words;

3. dramatic works, including any accompanying music;

4. pantomimes and choreographic works;

5. pictorial, graphic, and sculptural works;

6. motion pictures and other audiovisual works;

7. sound recordings; and

8. architectural works **not an exhaustive list

iii. §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, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

iv. Fixed: in a tangible medium of expression – embodied in a copy or phonorecord, by or under the authority of the author, that is sufficiently stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.

c. Originality: all forms of writing, printing, engraving, etching, etc. by which the ideas in the mind of the author are given visible expression”. That which owes its origin to the author. It does not need to be novel, but cannot be copied.

i. Compare to Patent Law novelty requirement: Novel – New, original, came from my head not from another. Higher standard than “original”. Original is simply not copied from something else. Patent law has novelty standard, Copyright law uses lower originality standard.

1. If someone were to come up with the poem Ode to a Grecian Urn word for word, but had never seen or heard it – it’s copyrightable.

ii. Distinguishable variations: For a work based on derivative work, copyright protection extends only to the material contributed by the author (original stuff) as distinguished from pre-existing material.

1. Bell v. Catalda (1947): Bell holds copyright in 8 mezzotint engravings of well-known paintings that have entered the public domain. Catalda produced color lithographs of mezzotints. “All that is needed to satisfy the Constitution and the Statute is that the author contributed something more than a mere trivial variation – something recognizably their own”

2. You can satisfy the originality requirement while violating another’s copyright!! Catalda could be infringing on Bell, but have an original work of art that is copyrightable!!!

iii. Burrow-Giles v. Sarony (1883): Sarony (photogropher) is suing Burrow-Giles for copyright infringement of photo of Oscar Wilde that he took and sold to public. D reproduced photograph. A photograph is copyrightable – cannot distinguish from maps, charts, designs, engraving, etchings, cuts, prints, etc. A photograph is copyrightable because author arranges costume, background, lighting, shade, evokes the expression, etc. It was Sarony’s original mental expression and gave fixation to it by pressing the button on a camera.

d. Duration of a Copyright Copyright Act § 302

i. (a) Copyright in a work created on or after January 1, 1978, subsists from its creation and endures for a term consisting of the life of the author and 70 years after the author’s death. (Life + 70)

ii. (b) Joint work- 70 years after the death of last author

iii. (c) For anonymous work, pseudonymous work, or a work made for hire– copyright protection lasts 95 years from date of 1st publication or 120 years from the year of its creation (whichever expires first). If author is discovered before that time, look to (a) or (b).

e. Limits of Copyright Protection

i. Compilation: work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. Author must contribute to selection & arrangement.

1. Feist Publications v. Rural Telephone Service (1991): Originality doesn’t require innovation or surprise, but cannot be so mechanical or routine as to require no creativity whatsoever. Rural’s white pages do not satisfy minimum for copyright protection. Entirely typical arrangement – listed alphabetically by surname, devoid of the slightest trace of creativity, could not be more obvious, “so commonplace that it has come to be expected”. Not even any selection because state statute required them to list all their subscribers.

2. Facts are never copyrightable – they are discovered, not created! But the selection and arrangement of those facts can be copyrighted as a compilation.

a. INS v. Associated Press: news articles are copyrightable, but that protection does not extend to the factual information they contain.

3. Key Publications v. Chinatown Today (1991): compilation can be original if it’s arranged and selected with a modicom of creativity.

a. Creativity in selection – exercised personal judgment about what Chinese businesses to include (didn’t include places she thought would go out of business, included businesses she thought would be of interest to Chinese Americans)

b. Creativity in arrangement – created 260 categories to categorize businesses. Some typical, some unique. No evidence of another directory using the same or sim

(d) Transfer Of Ownership:

i. (1) Ownership may be transferred in whole or in part by any lawful means of conveyance

ii. (2) Any exclusive rights comprised in a copyright, including any subdivision of any of the rights specified in §106, may be transferred and owned separately. The owners of any particular exclusive right is entitled to all the protection and remedies accorded to the copyright owner by this title.

e. Joint Authorship

i. Joint work if: a joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. (§101).

1. Childress test: each of the co-authors: (1) made independently copyrightable contributions to the work; and (2) fully intended to be co-authors.

2. At the point of creation, all parties must consider themselves co-authors of the work and each contribution must be individually copyrightable (Childress v. Taylor)

ii. Joint Ownership Rights: Co-ownership (under Section 201) is like “tenancy in common” in that all parties own the entire indivisible whole of the copyright, subject to the other co-owners’ similar ownership interest

1. Co-owner of copyright can exercise all of the rights of the copyright owner as set forth in §106

2. Co-owner of copyright may authorize others to exercise those rights (w/o obtaining permission from other co-owners)

3. Neither co-author can grant an exclusive license to 3rd party w/o consent of other co-owners

4. Co-owner of copyright can sue for infringement of copyright w/o necessity of joining other co-owners

5. All co-owners are entitled to a share (usually pro rata) of all proceeds generated by any such exploitation of the work

iii. Thomson v. Larson (1998): Thomson was hired as a dramaturg to assist Larson with the final stages of his writing the musical “Rent”.

1. Childress v. Taylor test for joint work when parties have failed to sign a written agreement:

a. made independently copyrightable contributions to the work

b. fully intended to be co-authors

2. Mutual intent: joint authors must regard themselves as joint authors. Not enough that they intend to merge their contributions into a unitary work. Look at how author regarded his/herself in relation to the work in terms of billing and credit, decisionmaking, right to enter into contracts.

a. Larson retained and intended to retain at all times sole decision-making authority as to what went into Rent.

b. Every script and playbill says “Rent, by Jonathan Larson” with Thomson listed as “dramaturg”

c. Written Agreements with 3rd parties: Larson listed himself as author in Nov. 1995 contract revision w/NYTW, which states that Larson “shall receive billing as sole author”.

d. time and again Larson absolutely, vehemently rejected the idea of a bookwriter, steadfast in his determination to make Rent “entirely his own project”