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Intellectual Property
University of Kansas School of Law
Torrance, Andrew W.

Torrance Fall 2012
United States Constitution: Art. I, § 8, cl. 8  (IP CLAUSE)
“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.”
The Copyright Act of 1976: 17 U.S.C. §§ 101 et seq.
17 U.S.C. § 102(a)
Two prongs: (1) Independent creation by an author and (2) Low modicum of creativity
Feist Publications v. Rural Telephone Service (1991)
Facts: Rural provided telephone service to several communities and published an annual telephone directory.  Feist was a publishing company specializing in area-wide telephone directories, and it needed the names/numbers of Rural’s subscribers in order to complete the book.  Rural refused Feist’s offer, but Feist used the information anyways.
Supreme Court held that Rural’s telephone directory was not copyrightable.  A factual compilation is only eligible for protection if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement.  In no event may copyright extend to the facts themselves.
Facts are NOT copyrightable!!!
Rejection of the “sweat of the brow” argument: copyright protection is not awarded to those who “work hard”; rather, the court rewards creativity
Rural may have worked hard to compile all the #’s, BUT they had no creativity in putting them together.
Compilations of Facts: 17 U.S.C. § 103
Copyright protection only extends to the material contributed to the author, not to the pre-existing material
“Thin” copyright: protection does not extend to the facts themselves, but only how the facts were selected and arranged
Examples of compilations:
Yellow pages, a collection of poetry, etc.
Categories (non-exclusive):
Literary works
Musical works (and accompanying words)
Dramatic works (and accompanying music)
Pantomimes and choreographic works
Pictorial, graphic, and sculptural works (PGS)
Motion pictures and other audiovisual works
Sound recordings
Architectural works
Burrow-Giles Lithographic Co. v. Sarony (1884)
Facts: Involved a photograph of Oscar Wilde; Sarony posed Wilde, selected/arranged the costume, draperies, other accessories, light and shade
Supreme Court held that the photograph was a copyrightable “writing,” because although it was a mechanical reproduction of a person’s physical features, it included elements of original expression and the author’s intellect
Bleistein v. Donaldson Lithographing Co. (1903)
Facts: Blestein created three advertisements for a circus, which included images of the circus owner, decorative lettering, a scene from the ballet, men and women performing on bicycles, and a group of men and women as whitened statutes
Supreme Court held that the original expression was copyrightable, regardless of whether it was good or bad quality of the eyes of the beholder
The courts do not “pre-judge” works of authorship because it would be a form of censorship, which is harmful to a society based on free circulation of ideas and expression
In other words, copyright applies w/o regard to artistic merit.
Fixation: sufficiently permanent or stable to be perceived, reproduced, or otherwise communicated for more than a transitory period (more than a short time)
Copies: the material/actual object in which a work is first fixedàthe original itemàAKA creative work is “fixed” when there is an original copy of it produced.
Phonorecords: the material object in which sounds (other than those accompanying a motion picture or other audiovisual work) are fixed
Policy behind fixation
·         Encourages authors to easily and cheaply distribute creative works to consumers
·         Evidentiary purpose: confirms that author has produced a creative work
·         Sets boundaries as to what the author’s claimed rights are.
Williams Electronics, Inc. v. Artic International, Inc. (1982)
Facts: Williams manufactures and sells coin-operated video games and designed the “Defender” video game, which incorporated many unique and original audiovisual features.  Artic began to sell a circuit board and memory device with a similar video game, “Defense Command”
The images and audiovisual features of the “Defender” video game were fixed, in the sense that they repeated themselves over and over again while playing the game
The idea/expression dichotomy: 17 U.S.C. § 102(b)
Copyright protection does NOT extend to an original work of authorship that is an idea, procedure, process, system, method of operation, concept, principle, or discovery
Baker v. Selden (1880)
·         Facts: Selden published a book that explained a method of bookkeeping and included blank forms for use in the method.
·         Supreme Court held that if use of an idea requires copying a plaintiff’s expression of that idea, then the expression cannot be copyrighted
o   If Selden could copyright the forms, and the forms were the only way of implementing the bookkeeping method, then he would have a monopoly in the bookkeeping method itself – this is not fair!
In other words, you can’t give Selden a monopoly on the entire bookkeeping method.
o   Selden can have a copyright in the book itself, but not the art (i.e. the forms) intended to illustrate
Lotus Dev. Corp. v. Borland International, Inc. (1995)
·         Facts: Borland wanted to create a superior spreadsheet program compared to Lotus, but included a virtually identical copy of Lotus’ command menu.  Although Borland did not copy any of the underlying code, the words and the structure of the menu were copied.  Borland did so to make its program compatible with Lotus, so spreadsheet users could switch to Borland’s program fairly easily.
·         Court held that the Lotus menu command hierarchy is not copyrightable because it is a “method of operation.”
o   Looks at protecting the public, as to encourage a free flow of ideas and superior products, as well as making sure we don’t have to “re-learn” menu commands
o   Analogous to buttons on a VCR: it would be impossible to operate Lotus without the menu command, just as it is impossible to operate a VCR without pushing the buttons
The Abstractions Test:
·         Copying just the basic idea behind another work is OK, and NOT infringement. 
o   Examples:
§  Copying the premise of a movie, OR the big idea in a novel.
§  Literary works:
·         The less developed characters are within a literary work, the less copyrightability you have

or the RIBBON Rack because the aesthetic (artistic) elements were not conceptually separable from the utilitarian aspects.
Applied the Prof. Denicola test
(1) Look at the creator’s aesthetic/functional choices
(2) If the design elements represent artistic judgment that is independent of (and not in furtherance of) the functional aspects, there is conceptual separability and copyright protection
The court stated that had Brandir adopted one of the existing sculptures as a bike rack, he wouldn’t have forfeited copyright protection, because it could be looked at as not only a bike rack, but a piece of art as well.
Instead, Brandir’s final design was essentially a product of industrial design, and the designer clearly adapted the original artistic elements to accommodate and further the utilitarian purpose.
The dissent though that a “reasonable observer” test should be applied: although aesthetic choices may simultaneously perform utilitarian functions, if the ordinary and reasonable observer can perceive an aesthetic concept not related to the article’s use, then it should be entitled to copyright protection
Derivative works: work based upon preexisting works that can be recast, transformed, or adapted
Categories of preexisting works:
Musical arrangement
Motion picture version
Sound recording
Art reproduction
(1) Used lawfully
(2) Contribution must be made to the underlying work
(3) Copyright only extends to the new contributions by the derivative author
Derivative authors should get rights from the original author, or else even the new additions may not be recognized.
Copyright owners are reluctant to award protection to derivative works because it may prevent them or others from making their own derivative
A derivative work MUST be SUBSTANTIALLY different from the underlying work to be copyrightable.
Gracen v. Bradford Exchange (1983)
Facts: MGM licensed Bradford to use the characters and scenes from “The Wizard of Oz” in a series of collector’s plates.  Gracen won the art contest and she was contracted to design the plates.  However, she did not like the terms of the contract, so Auckland was contracted to do the paintings.  Auckland used Gracen’s paintings as a guide.
The court did not copyright Gracen’s painting of Dorothy because it was not substantially different from the underlying (original author’s) work to be copyrightable as a derivative work.  Therefore, even if Aukland used Gracen’s pictures as a guide, she didn’t have copyright protection in them anyway.