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

Copyright
·         Elements of Copyright claims
–         The work is protected by copyright
–         Plaintiff owns of the copyright
–         Defendant infringes the one or more of the plaintiff’s exclusive rights.
Copyright Protection
·         Copyright is the bundle of rights associated with the work. The work is protected by copyright from the moment it is “created” for the first time, if it is an
§ 102(a)(b)
–         Original
§         something that “owes its origin to the author” and is “recognizably his own” (Bell)
§         “distinguishable variations” compared to pre-existing work
§         “Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” (Feist). The requirement is not high. Novelty and uniqueness is not necessary.
§         facts are never original
§         selection and arrangement of uncopyrightable facts can be an original work
§ 103(a)(b)
·         alphabetical arrangement not original (Feist)
·         Protection for a work employing preexisting material in which subsists does not extend to any part of the work in which such material has been used unlawfully. (103(b)).
§         originality doesn’t depend on the time/effort the author spends (Feist, Rockford)
–         Work of authorship
§         Within one of the categories listed in 102(a) (or a category similar to them). List in 102(a) is illustrative instead of exhaustive.
·         Congress can protect “all forms of writing by which the ideas in the mind of the author are given visible expression.” (Burrow-Giles)
§         The author must show his “own original mental conception.” (Burrow-Giles)
§         Representatives of original intellectual conceptions of the author. (Burrow-Giles)
§         An original work of art, the product of intellectual invention of the author. (Burrow-Giles)
§         An author is “he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.” (Burrow-Giles)
–         Fixed in a tangible medium of expression
§         embodied in a material object (a “copy” or a “phonorecord”)
§         copyright is not the same to the ownership of the object containing the work. Transfer of the tangible copy of the work does not convey the copyright.
§         This requirement seems to correspond with the “writing” in Constitution. Although it has not been claimed that these two are identical, practically, it is very hard to find any substantial difference. Writing is construed as “any physical rendering of the fruits of creative, intellectual or aesthetic labor.” The construction of “writing” or “fixed” is very broad. However, the minimum requirement still existed that the “idea” must be reduce to a physical expression.
§         The idea of “writing” and “fixation” is strongly association with the notion of “copy.” A copy must be something from which the underlying work could be reproduced.
§ 202
·         Not all the original works are protected by copyright
§ 102(b)
–         Facts and ideas are not protected by copyright
–         Merger doctrine: Where certain expression, such as diagram, form, is indispensable for use of a method, or a process, or an idea, “such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public.” (Baker)
–         Merger doctrine can be expanded to situation where there are only few ways to express an idea. These expressions are not protected by copyright. (Morrissey)
–         Copyright law tends not to protect works that are for utilitarian purpose. Baker is an example. Those works probably should seek protection in patent law. Probably, we can say a utilitarian method, procedure, etc. is an “idea.” The availability of patent protection may be decisive to a court in determining where on the functional-nonfunctional continuum a particular work lies.
Ownership of Copyright
§ 201
·         One can be the owner of copyright through different ways
–         Original owner
§         Including joint ownership
–         Works made for hire
–         Ownership can be transferred. Transfer could happen to the whole bundle of rights, or only parts of the bundle.
·         Original owner is generally the author of the work
–         Author: The author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection. The author is the person who creates the work mentally. Copyright protection begins when he fixes the work itself or has someone else to fix it. (Andrien)
§         Mechanical transcription does not entitle a person authorship. (Andrien). Uncreative labor in the fixation process does not create authorship.
§         Creative work in fixing process could entitle a person authorship. (Andrien).
–         Joint work. (Childress)
§         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.
·         Both parties have the intention to merge their work into an inseparable unitary work
·         Contribution is independent copyrightable work.
–         Facts are not included.
–         Ideas are not included. On these two, Taylor would have difficult time to prove this element. But Taylor can argue that she selected and sifted the facts . . . . The court did not really focus on whether Taylor’s contribution is copyrightable.
§         Does the contribution have to be fixed in “tangible medium?” Probably not. The court used the word “copyrightable,” and didn’t talk about “fixed” and copyright protection.
·         Joint author must intend to be considered joint authors.
–         How do we know the intention? Evidences: such as contract, play poster, etc. They don’t have to understand the legal consequence. Taylor needs to show that Childress intended that Taylor is a co-author. It does seem to matter how much one party contributes. This could be evidence. The rule is that all the parties have the intention. Another good argument is we don’t care about brow of sweat. One does not have to work hard to become a copyright owner.
–         A co-owner of copyright can exercise all of the rights of the copyright owner as set forth in §106 of the Copyright Act; he/she can reproduce the work in copies, create derivative works from the copyrighted work, distribute copies of the work to the public, etc.
§         A co-owner of copyright may authorize others to exercise those rights. If “John Lennon” and “Paul McCartney” are co-owners of the copyright in the musical work “I Am The Walrus,” either one of them can authorize (via license) a third party to reproduce the work, create derivative works from the work, etc., without the necessity of the third party obtaining permission from the other co-owner. 
§         None of the co-owners, however, can grant an exclusive license to a third party on his/her own (i.e., without the consent of the other co-owner(s)). Thus, Lennon can grant me a license to record “I Am The Walrus” and to publicly perform “I Am The Walrus,” and I will not be infringing the copyright if I do so. But Lennon can’t grant me an exclusive license to do any of those things, because he can’t be sure that McCartney, co-owner of the copyright, isn’t at this very moment granting a license to someone else. 
§         A co-owner of copyright can sue for infringement of the copyright. 
§         And finally, all co-owners are entitled to a share (usually pro rata, although courts can make exceptions in special cases) of all proceeds generated by any such exploitation of the work. (So if I’ve paid Lennon $2000 for the license he granted to me, Lennon will have to share that with McCartney).
§         Neither owner can commit waste by depleting, squandering, or otherwise destroying the value of the property.
·         Works made for hire
§ 101
–         (1) a work prepared by an employee within the scope of his or her employment; or
§         Employment: common-law agency meaning. (CCNV).
–         (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “ supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwards, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
–         Two types of “works made for hire” are exclusive to each other. (CCNV). (This is questionable.)
–         In CCNV, the Supreme Court’s decision supports a literal reading of the Act such that other works, even though specially commissioned or ordered, and even if the parties expressly agree that they are to be works for hire, cannot be so treated. In other words, if a work is not made by an employee within the

statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his “idea,” to which, apart from their expression, his property is never extended.
–         With respect to sequence, the continuum runs from an unprotected idea, to a relatively unprotected theme, to an arguably protected plot, to a relatively protected incident, to an almost certainly protected dialogue or language. With respect to characters, the point at which they become protected depends upon their state of development in the work and their importance to it. The general idea of a character is unprotected. Characters become more protected as they become more detailed and become the centerpiece of the story.
–         Hand applied this rule to the theme and character of two plays.
·         To demonstrate that defendant copies plaintiff’s work, the plaintiff must show (Andrien, Selle)
–         Defendant copies Plaintiff’s work
§         Access plus similarity
·         Evidence of Access
–         Direct communication
–         Large dissemination of the work
§         Subconscious copying
·         Similarity
–         Dissection and expert witness are allowed at this stage.
·         Without evidence of Access
–         Striking similarity could suffice (a more appropriated phrase would probably be “probative similarity”)
§         Need to eliminate the possibility of coincidence, independent creation, and common source.
§         This is very unusual.
–         Similarity can only tend to prove access, so generally speaking, similarity alone is not enough.
·         Plaintiff has the obligation to prove defendant’s access. With respect to whether striking similarity would suffice proof of access, decisions of second and third circuit on Andrien and Selle created tension.
–         Defendant copies substantially as to constitute improper appropriation (Selle, Steinberg)
§         Copying is sufficient to establish copyright infringement. Facts and ideas are not protected by copyright.
§         Plaintiff has to show that defendant copied the copyright protected expression. The two works have substantial similarity
·         Test:
–         Whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.
–         The copying need not be of every detail so long as the copy is substantially similar to the copyrighted work.
·         What the infringer does not copy is irrelevant.
·         Necessity of registration
§ 411
–         Generally, copyright owner needs to register his/her United States work to gain access to a court for copyright action. But registration is not a condition for copyright protection.
§ 408
–         Registration also has impact on damages.
Defense to Copyright Claim
§§ 107-122
·         These provisions provide affirmative defense for copyright infringers.
·         Section 108 provides exception to exclusive right in library situation
·         Section 110 provides exception for certain performances and displays, especially for educational purpose.
·         Section 109 codifies the common law first sale doctrine. The owner of the copy has certain privilege to do something with the copy, which otherwise would infringe the copyright of the owner
Fair Use
·         Fair use most commonly is raised in certain contexts, including: educational activities, literary and social criticism, parody, and, importantly, First Amendment activities such as news reporting.
·         Fair use involves a balancing process by which a complex of variables determine whether other interests should override the rights of creators.
§ 107
Section 107 codifies the common law fair use doctrine. In some sense, fai