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University of Iowa School of Law
Bohannan, Christina

FALL 2012
To Show Exclusive Right of Reproduction Must Show:
1)      Ownership of the Copyright
2)      It Was a Valid Copyright
3)      There Was Infringement
If There Was Infringement
4)      Was There a Fair Use?
If No Fair Use:
5)      Was There Contributory or Vicarious Infringement?
6)      What Are the Applicable Remedies
a)      Must distinguish between OWNERSHIP and AUTHORSHIP
a.       Author:  The initial owner of the ©
                                                              i.      May transfer any or all rights
                                                            ii.      Grant licenses
b.      Owner:  Person who holds the exclusive rights to the ©
                                                              i.      Transferred by the author
c.       Lindsay v RMS Titanic (1995)
                                                              i.      Authorship is not limited to putting pen to paper; even though P did not actually hold camera final product was a result of the creative choices and expressions in final film
1.      Could make argument that cameraman also has claim to some authorship
b)      §201: Ownership of Copyright (pg 253)
a.       Types of Ownership
b.      Works Made for Hire; Transferred Ownership; Copyright Licenses; Joint Works
c)     Work Made For Hire
a.       §101: Definition of Work Made for Hire (pg 152)
b.      Employer is the author and owns all rights UNLESS
                                                              i.      Parties agree otherwise through a signed, written instrument
c.       Two ways a work may qualify as a work for hire
                                                              i.      Work was prepared by an employee w/in scope of his or her employment OR
                                                            ii.      Work was specifically ordered/commissioned, falls into one of nine categories (see pg 152) AND parties agree in writing
1.      Writing must be close to saying work for hire
d.      CCNV v Reid (1989)
                                                              i.      Sculpture was not one of 9 categories: did not fit that part of WMH definition
                                                            ii.      When defining scope of employment, courts general use the agency standard
1.      Skill required, source of tools, location of work, method of payment, hired party’s role in hiring/paying for assistants, employee benefits/taxes – see pg 314 in TEXT for complete list
2.      Ct ruled D not an employee, but an independent contractor
a.       Maybe joint authors NOT WMH
                                                          iii.      Factors for when a work is made during employment
1.      Was the work the type the employee was employed to create
2.      Was the work created substantially w/in authorized work hours
3.      Was the purpose of the work to at least serve the employer
d)    Joint Authors
a.       Authors of joint works are co-owners of ©
                                                              i.      Share all profits
b.      Thomson and Larson (1998)
                                                              i.      Two Part Test to Prove Joint Authorship: Childress Test
1.      Each author contributed independently copyrightable expressions AND
2.      Each author intended to be joint authors
                                                            ii.      Written agreement is essential; will not look at whether independently contributed unless there is not a written agreement
1.      Courts look at objective evidence of intention
a.       Who had decision making authority
b.      Written agreement
c.       Billings
e)     Transfer of Copyright Ownership
a.       §204: Execution of Transfers of Copyright Ownership (pg 256)
                                                              i.      Transfer of ownership must be made in writing
b.      §101: Transfer of Copyright Ownership (pg 150)
                                                              i.      Assignment, mortgage, exclusive license
                                                            ii.      Non-exclusive licenses are not transferable
1.      No ownership rights, can be given orally
c.       Divisibility
                                                              i.      Provides more control to © holder; allows conveyance of different rights to others
1.      Tragedy of Anti-Commons: property divided up so much with so many pieces difficult to know whose rights are what
2.      Licensing important: provides feasibility in transferring rights
d.      Effects Associates v Cohen (1991)
                                                              i.      NO written agreement between parties for P to do special effects on The Stuff movie
1.      Non-exclusive transfer of ownership
2.      Was part of a motion picture but still not a WMH since no writing
e.       Oddo v Ries (1984)
                                                              i.      Handed over manuscript with knowledge that it would be published
1.      An implied non-exclusive license
2.      Acts as a gap filler when parties fail to address © in writing
a.      Ct gives little thought to boiler plate contracts that state ambiguous terms such as “rights not specifically outlined are reserved”
f.       Scope of Grant of Ownership
                                                              i.      Cohen v Paramount (1988)
1.      Language “in any manner, medium, form, or language is too narrow/ambiguous: precludes future medium
a.       Language that could circumvent this: “any present or future methods”
2.      New format (VCR) was not foreseeable and language in contract was specific to picture theater and tv
a.       Need to use language that describes work versus the form
b.      Must be reasonably foreseeable
                                                            ii.      Boosey Hawkes v Walt Disney (1989)
1.      License claimed “any manner, medium, or form”
2.      It is the burden of the grantor to make sure that the language of the contract expresses any limitations or exceptions
a.       Disney license is more reasonably read to include than exclude VCR distribution of movie
                                                          iii.      Random House v Rosetta Stone (2002)
1.      D was granted exclusive right to publish works “in book form”
2.      P sued when D published works as an E-book
3.      CT reasoned that a digital form of the work sufficed the “in book form” license; if wanted to be strict should have said “the book”
a)      Must show work is copyrightable subject matter and duration has not expired
b)      Why would D prefer court to show work un-copyrightable instead of infringement?
a.       Cheaper; would go to SJ where infringement is fact based: goes to jury
b.      Otherwise would be a case by case basis instead of bright line validity rule
c)      §102: Subject Matter of Copyright (pg 152)
a.       8 categories of works of authorship; not exclusive
b.      Requirements
                                                              i.      Must be an independent creation fixed in a tangible medium of expression
                                                            ii.      With a minimal degree of creativity
1.      Cannot be functional or utilitarian
a.       Recipes cannot be copyrighted but cookbooks are
d)     Magic Marketing v Mailing Services of Pittsburgh (1986)
a.       Envelopes are not copyrightable
b.      Courts must decide whether sufficient degree of creativity
c.       Items/words on envelope: TELEGRAM, GIFT CHECK, etc
                                                              i.      Analogous to ingredients in a recipe/list of instructions
e)      Sebastian v Consumer Contact (1988)
a.       Description on back of shampoo WAS copyrightable

t part of the © work is similar: arrangement/grouping/selection/co-ordination
b.      Example:  Atari Games v Oman (1992)
                                                                                                                                      i.      Simple geometric shapes/coloring NOT ©
                                                                                                                                    ii.      Ct chose to talk about elements and aesthetic choices that made it similar and copyrightable as a whole
i)       Derivative Works
a.      §101: Derivative Work (pg 147)
                                                              i.      any prior copyrighted work or work in the public domain that is recast, transformed, or adapted
b.      L. Baitlin & Son v Snyder (1976)
                                                              i.      Test for whether plastic replica is a derivative work of cast iron Uncle Sam bank
1.      Does it add substantial variation from the original OR
2.      Did it require unusual skill, artistry, mastery to replicate
a.      Ex) Rodins Hand of God
b.      May not still be good law since this was prior to Feist which said “sweat of the brow” not enough to prove originality
                                                            ii.      Court rules not enough sufficient variation; Ct requires a HIGHER degree of originality for DW’s
c.       HYPOs
                                                              i.      A owns ©; B makes an authorized DW; C makes copy of DW w/ no permission
                                                            ii.      Can B sue C?
1.      YES, new material added in B can be found in C’s work
                                                          iii.      Can A sue C?
1.      YES, B has © ONLY for new material added; does not invalidate A’s ©
a.      C had access to A through B
2.      Copying derivative work is copying it and the original
a.      DOES NOT require access
                                                          iv.      Assume A has a work in the PD; B copies A; and C copies B
1.      Can A sue C?
a.      NO, A does not have a valid ©
2.      Can B sue C?
a.      YES, but only for the variations in A; does not establish new rights to what was in PD
                                                            v.      Assume A has a ©; B copies A w/out permission; C copies B w/out permission
1.      Can A sue C? YES, C had access to B through A
2.      Can B sue C? NO, §103(a)
a.      Does extend protection to any part of work in which material was taken unlawfully
                                                          vi.      Assume A gives license to B to make a stuffed animal exactly like A; and C makes a similar stuffed animal w/out permission
1.      Can A sue C?  Depends
a.      If non-exclusive license, then A retains the rights and CAN sue C
b.      If an exclusive license, then A gave rights to B and CANNOT sue C
2.      If non-exclusive license, can B sue C?
a.      Probably not, only changes made were functional (take drawing and make stuffed animal); not original
b.      Otherwise he could © the idea to make a stuffed animal