Select Page

University of Mississippi School of Law
Wilkins, William Thomas

Wilkins Copyright Outline Spring 2013

Chapter 2. Copyrightable Subject Matter

1 Originality

a Article I Section 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 and discoveries.”

b Two components of originality :

i independent creation

ii Minimal degree of creativity (not a novelty requirement)

c Burrow Giles Lithographic v. Sarony

i Sarony filed a lawsuit against Burrow Lithographic because they were taking and selling a photograph that Sarony had taken of Oscar Wilde.

ii Argument 1: the scope of the copyright is too narrow

1 Sarony argues for the originality requirement. He claimed he styled the draping, helped Wilde pose, and added artistic input

iii Argument 2: It shouldn’t fall under the scope of the copyright law because the photograph itself is not original.

iv Held: ?

v This case is the case we use when new technology comes up. It helps us apply originality to new technology.

d Bleistein v. Donaldson Lithographing Co.

i Commercial art and advertising can be protected.

ii It would a dangerous undertaking for person trained only in law to constitute themselves final judges of the worth of pictorial illustrations outside the narrowest and most obvious limits.

iii Courier Lithographing (represented by Bleistein), produced a number of posters (aka chromolithographs) advertising a circus. Later, the circus needed more prints made, but instead of going back to Courier, they went to a cheaper competitor, Donaldson, who copied the posters.

iv Bleistein sued for copyright infringement.

v Donaldson argued that copyright protection should only be extended to ‘fine arts’ not to advertising or other ‘commercial arts’.The Trial Court found for Donaldson. Bleistein appealed.

vi The US Supreme Court found that illustrators are creators, even when they are drawing images of real people.

vii The Court noted that when making a reproduction of something from real life (like a person or a landscape), other artists are “free to copy the original, but they are not free to copy the copy.”

viii The Court found that illustrations used for commercial purposes are still copyrightable.

ix “A picture is nonetheless a picture.”

x The Court issued a warning that judges were not to evaluate the artist or aesthetic merit of art when determining whether or not is should be covered by copyright law–Bleistein Nondiscrimination Principle.

xi If the purpose of copyright law is to encourage people to create works of art, should it apply to advertising? Wouldn’t people make advertising anyway, even if it was copied by others?

xii Justice Harlan’s dissent is that there is no need to incentivize for this guy making this lithograph. So what is the reason the copyright should cover.

xiii Under the Locke philosophy… what I create I should have control over it.

e Meshworks v. Toyota Motor Sales

i Toyota hires a company to help make the build your own car app on their website.

ii Meshworks took these great detailed measurements and

iii They looked at the product not the process.

iv The Court said that the end product was just a copy of what Toyota built.

v Professor Wilkins thinks the plaintiff got screwed.

f Gracen v. Bradford Exchange

i The defendant Bradford Exchange(BE) invited artists to submit paintings of dorothy from the Wizard of Oz. BE planned to award the winner of the contest for the best painting a contract for a series of collectors plates.

ii The plaintiff Gracen won the contest , but after reviewing the awarded contract terms refused to sign. Gracen’s painting was then subsequently used by another artist is designing the plates.

iii Gracen sued for copyright infringement,

iv Held: Not a derivative work “a derivative work must be substantially different from the underlying work to be copyrightable.” Here the plate images were nearly identical to the movie images provided for the contest.

v Important Dicta: “Even if she was authorized to exhibit her derivative works, she may not have been authorized to copyright them.” This was rejected as mistaken dicta in Schrock v. Learning Curve, 586 F.3d 513 (7th Cir. 2009), and it had led some judges to require photographers to mistakenly ask for permission to copyright their photos as almost occurred in the Schrock case.

vi Here the court reached a decision that has been difficult for judges in the circuit to apply. By deciding this case mainly on originality grounds it would appear to require a heightened standard for originality in derivative works. If a painting of a Wizard of Oz scene that never actually occurred in the movie is not original enough for copyright protection then it would be reasonable to conclude that photos would always lack the requisite originality to qualify for protection. This heightened standard conflicts with Nimmer on Copyright, which states that the standard for a derivative work is low. The court also mentioned a permission being required by the creator of the derived work, which has also been criticized as mistaken dicta.

vii Derivative works §101: to start from one work and move to another.

viii Copyright law is a two headed pendulum and derivative works is apart of that.

2 Originality and Facts

a Minimal creativity- is there enough originality in a photograph for example… it is a low requirement.

b Original as to the author- goes back to the theories under Article I Section 8, giving the author financial incentives to create new things.

c Originality does not equal novelty

d Copyright does not have to be new, just has to be an independent creation. Two people can come up with independent creative ideas and each have copyright to their ideas.

e Facts– Are they Original?

f Ideas? Are they original?

● “Idea-Expression Dichotomy”

○ facts are not copyrightable; do not have the requisite creativity/originality

○ expressions can be copyrightable

○ compilations of fact CAN be, but are not copyrightable pro se

■ the whole thing is never copyrightable; facts have to be available for public use

○ where do facts end and expressions begin?

■ Ideas can be protected by patent law, too

g Feist Publications v. Rural Telephone Service

i Rural Telephone Service Company, Inc. (Plaintiff) provides telephone service to several communities. Due to a state regulation, it must issue an annual telephone directory, so it published a directory consisting of white and yellow pages. The yellow pages have advertisements that generate revenue.

ii Feist Publications, Inc. (Defendant) is a publishing company whose directory covers a larger range than a typical directory. Defendant distributes their telephone books free of charge, and they also generate revenue through the advertising in the yellow pages

iii Plaintiff refused to give a license to Defendant for the phone numbers in the area, so Defendant used them without Plaintiff’s consent. Rural sued for copyright infringement

iv All they did to organize the telephone book was to put it into alphabetical order. Alphabetical order did not meet creativity standard.

v Need at least some degree of originality

vi Sweat of the Brow Doctrine: even if it takes a long time to arrange factual compilations, if you don’t do it creatively, then it is not copyrightable.

vii Sweat of the brow should not be looked at in the process

viii Even when with compilations, thin copyright

ix Page 44-Copyright treats facts and factual compila

as more and more of incident is left out. The last may perhaps be no more than the most general statement of what of the play is about and at times might consist ony 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 ideas” to which, apart form their expression, his property is never extended”

4 Useful Article Doctrine

a the design of a useful article as defined in this section, shall be considered a pictorial , graphic, or sculptural work only if, and only to the extent that such a design incorporates pictorial graphic , or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article.

b Conventional test for the copyrightability of useful (utilitarian) articles is whether the useful article contains artistic features that can be identified separately from the article’s function.

c Mazer v. Stein

i Stein designed a Grecian-style sculpture of a lady and registered it with the Copyright Office as a “work of art.” Then he turned the sculpture into a lamp (with the lady holding up a bulb) and began mass producing them.

ii Mazer started making identical lamps. Stein sued for copyright infringement.

iii Mazer argued that the lamp was ineligible for copyright protection because it was not a “work of art,” it was a lamp.

iv In general, copyrights are intended to protect works of art (literature, paintings, sculptures, etc.) and not utilitarian items such as lamps and furniture.

1 the argued that the sculpture on its own would be protected

2 but the lamp is not because it is utilitarian

3 Court presents two questions:

a Can statues be protected in the United States when the copyright applicant intended primarily to use the statutes in the form of lamp bases to made and sold in quantity and carried intentions into effect?

v Stripped down to the essentials , the question presented is: Can a lamp manufacturer copyright his lamp base?

vi SC says because you use the article in a utilitarian way, does not make it wholly utilitarian.

d Kielseltein- Cord v. Accessories by Pearl

i Belt buckles, even though they had a utilitarian purpose were still ornamental and conceptually separate from their subsidiary utilitarian function.

ii P designs belt buckles out of precious metal, The D knocks them off. And P sues claiming that even though a belt serves a utilitarian function, their argument

iii “The primary ornamental aspect of the . . . buckles is conceptually separable from their subsidiary utilitarian function.”

1 The unique artistic design is wholly unnecessary to the performance of the utilitarian function

iv Wilkins: 2nd circuit is being conceptually consistent between this and Mazer (even though factually inconsistent): look to see if you can separate the u. function from the ornamental aspect

v Indiscrimination principle: court shouldn’t decide what’s art/pretty enough to be art

vi Artistic Value v. Utility