1 an OVERVIEW of U.S. COPYRIGHT LAW Tyler T. Ochoa

AN OVERVIEW OF U.S. COPYRIGHT LAW

Tyler T. Ochoa High Technology Law Institute Santa Clara University School of Law

Comparative (European) Intellectual Property Santa Clara University Munich Program June 2013

Tyler T. Ochoa is a Professor with the High Tech Law Institute at Santa Clara University School of Law in California. He received an A.B. degree from Stanford University in 1983 and a J.D. degree from Stanford Law School in 1987. In 1987-88, he was a clerk for the Hon. Cecil F. Poole of the U.S. Court of Appeals for the Ninth Circuit. From 1988-1993, he was an associate with the law firm of Brown & Bain, in Palo Alto, California, where he specialized in copyright and trade secret litigation involving computer software. Prior to joining the faculty at Santa Clara, he was a Professor and Co-Director of the Center for Intellectual Property Law at Whittier Law School in Costa Mesa, California.

Professor Ochoa is a co-author (with Craig Joyce, Marshall Leaffer and Peter Jaszi) of COPYRIGHT LAW (LexisNexis 8th ed. 2010), the best-selling copyright casebook in the United States. His article, Patent and Copyright Term Extension and the Constitution: A Historical Perspective, 49 J. Copyr. Soc=y USA 19 (2001), was cited by the U.S. Supreme Court in Eldred v. Ashcroft, 537 U.S. 186 (2003). He has submitted two amicus briefs to the U.S. Supreme Court in cases involving copyright law. In recent years, he has spoken on copyright issues at programs sponsored by the U.S. Copyright Office, the State Bar of California, the Washington State Bar Association, the Orange County Patent Law Association, the San Diego Intellectual Property Law Association, the Museum Computer Network, the American Association of Museums, the Society of American Archivists, and the National Initiative for a Networked Cultural Heritage.

1 AN OVERVIEW OF U.S. COPYRIGHT LAW

I. A. U.S. Const., Art. I, '8, cl. 8: The Congress shall have 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.

B. Prerequisites for Copyright Protection

1. '102(a): Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression ...

a. Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991): Originality is a Constitutional requirement. Facts are not copyrightable because they are not original to the author, but an original selection and arrangement of facts is copyrightable.

b. AOriginal@ 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.

2. '101: A work is Afixed@ in a tangible medium of expression when its embodiment in a copy or phonorecord ... is sufficiently permanent or stable to permit it be perceived, reproduced or otherwise communicated for a period of more than transitory duration.

a. ACopies@ are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, from which the work can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device.

b. APhonorecords@ are material objects in which sounds ... are fixed by any method now known or later developed, and from which the work can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device.

3. '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.

a. Merger doctrine: When the idea and its expression are inseparable, copying the expression will not be barred, since protecting the expression would confer a monopoly over the idea free of the conditions and limitations imposed by patent law.

C. Works of Authorship ['102(a)]

1. Literary Works ['101: Aworks, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the materials objects in which they are embodied.@]

2. Musical Works

a. '115(a)(1): When phonorecords of a nondramatic musical work have been distributed to the public in the U.S. under the authority of the copyright owner, any other person ... may obtain a compul- sory license to make and distribute phonorecords of the work.

3. Dramatic Works

4. Pantomimes and Choreographic Works

5. Pictorial, Graphic and Sculptural Works

a. '101: The design of a useful article ... shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such 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. '113: [Copyright in a picture of a useful article does not include the exclusive right to manufacture the useful article. Copyright in a work lawfully reproduced in useful articles does not include the right to prohibit pictures or photographs of such articles in adver- tisements for or commentaries on such articles, or in news reports]

6. Motion Pictures and Other Audiovisual Works

7. Sound Recordings

a. '114(a): The exclusive rights of the owner of copyright in a sound recording are limited to the rights specified in '106(1),(2),(3)&(6), and do not include any right of performance under '106(4). [(6) is right of performance by means of digital audio transmission only]

b. '114(b): The exclusive rights of the owner of copyright in a sound recording ... do not extend to the making or duplication of another sound recording that consists entirely of an independent

3 fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording. 8. Architectural Works

a. '120(a): The copyright in an architectural work does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.

D. Compilations and Derivative Works

1. '101: A Acompilation@ is a work formed by the collection and assembling of preexisting materials or data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term Acompilation@ includes collective works.

a. A Acollective work@ is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.

b. '201(c): Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole.

2. '101: A Aderivative work@ is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.

3. '103(a): The subject matter of copyright ... includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.

4. '103(b): The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.

E. United States Government Works

1. '105: Copyright protection ... is not available for any work of the U.S.

4 Government, but the U.S. Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise.

F. Publication and Notice

1. 1909 Act applies to works published or registered before January 1, 1978. Under the 1909 Act, there was dual system of protection. Before a work was published or registered, it was protected by state law (common-law copyright provided a right of first publication for an unpublished work).

a. When a work was published with notice, a federal statutory copyright attached, which could be registered at any time during the initial 28-year term. If a work was published without notice, it automatically entered the public domain.

b. Publication is the distribution of copies of a work to the public by sale or other transfer of ownership, or by rental, lease or lending. To avoid the inadvertent forfeiture of copyright, courts developed the concept of Ageneral@ versus a Alimited@ publication.

c. A Alimited publication@ is the distribution of copies of a work to a select group of people, for a limited purpose, without the right of further reproduction, distribution or sale. A Alimited publication@ without notice did not place the work in the public domain.

2. The 1976 Act applies to works created in 1978 or later, and to works created but not published or registered before January 1, 1978. Under the 1976 Act, federal statutory copyright attaches automatically upon fixation, and common-law copyright is preempted except for unfixed works.

a. Between January 1, 1978 and February 28, 1989, copyright notice was required on all copies or phonorecords published in the U.S. Publication of a work without notice placed the work in the public domain, subject to a limited ability to Acure@ omission under '405.

b. As of March 1, 1989, copyright notice is not required on copies or phonorecords published in the U.S. If notice is still used, D cannot claim innocent infringement to reduce actual or statutory damages.

3. Under the 1909 Act, a copyright could be registered at any time during its initial term, and registration was required in order to get the renewal term. Under the 1976 Act, for U.S. works, a work must be registered before suit for infringement may be commenced.

5 a. '410(c): Registration before or within 5 years after first publication is prima facie evidence of the validity of the copyright. '412: No award of statutory damages or attorneys fees unless registration is made before infringement, or within 3 months of first publication.

II. Ownership and Term

A. '202: Ownership of a copyright, or of any exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied.

1. Transfer of ownership of the material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

B. Ownership of Copyright

1. '201(a): Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of the copyright.

a. '101: A Ajoint 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.

2. '201(b): In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author [under] this title, and unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

a. '101: A Awork made for hire@ is

(1) A work prepared by an employee within the scope of his or her employment; or

(2) A work specially ordered or commissioned for use as [one of the following], if the parties expressly agree in a written instrument signed by the them that the work shall be considered a work made for hire.

b. [works eligible to be a work made for hire:] a contribution to a

6 collective work; part of a motion picture or other audiovisual work; a translation; a supplementary work (such as a foreword, afterword, illustrations, bibliography, appendix, index); a compilation; an instructional text; a test, or answer material for a test; or an atlas.

3. '201(c): Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. C. Transfers of Copyright Ownership

1. '201(d)(1): The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable law of intestate succession.

2. '204: A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the right conveyed or such owner=s duly authorized agent.

3. '203 provides a five-year window within which the author or the author=s statutory heirs may terminate a transfer executed by the author on or after January 1, 1978, and reclaim the copyright. Termination requires selecting a date within the five-year window, serving advance notice on the assignee two to ten years before the effective date, and recording the notice.

a. '304(c)-(d) provide a five-year window within which the author or the author=s statutory heirs may terminate a transfer executed by the author before January 1, 1978, and reclaim the copyright. The conditions are similar, but termination applies only to the periods added to the term by the 1976 Act & the 1998 Term Extension Act.

D. Duration and Renewal [''302-304]

1. Works published [in the U.S.] before 1923 are in the public domain.

2. Works first published in 1923-1963 and properly renewed are protected for 95 years from date of first publication. If not renewed, public domain.

3. Works first published 1964-1977 are protected for 95 years from the date of first publication. [Renewal for these works is automatic.]

4. Works created before 1978 and published in 1978-2002 are protected for life of the author plus 70 years (or alternative term for works for hire), or

7 until December 31, 2047, whichever is greater.

5. Works created before 1978 but not published before 2003 are protected for life of the author plus 70 years (or alternative term for works for hire), or until December 31, 2002, whichever is greater.

6. Works created in 1978 or later are protected for life of the author(s) plus 70 years; for works made for hire, anonymous and pseudonymous works, shorter of 95 years from date of first publication or 120 yrs. from creation. III. Infringement of Copyright

A. '106: Subject to ''107-122, the owner of copyright under this title has the exclusive right to do and to authorize any of the following:

1. To reproduce the copyrighted work in copies or phonorecords;

2. To prepare derivative works based upon the copyrighted work;

3. To distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

4. In the case of [all works except PGS works, sound recordings and architectural works], to perform the copyrighted work publicly;

5. In the case of [all works except sound recordings and architectural works], to display the copyrighted work publicly; and

6. In the case of sound recordings, to perform the copyrighted work publicly by means of digital audio transmission.

B. '107: The fair use of a copyrighted work, ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in a particular case is fair, the factors to be considered shall include:

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2. the nature of the copyrighted work;

3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4. the effect of the use upon the potential market for or value of the

8 copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

C. '109(a): Notwithstanding the provisions of '106(3), the owner of a particular copy or phonorecord, lawfully made under this title, ... is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. [First-Sale Doctrine] D. Proving infringement requires three elements: ownership of a valid copyright, copying by the defendant, and substantial similarity of protected expression.

1. The plaintiff has the burden of proving originality & fixation; compliance with any formalities that are required; registration [for U.S. works only]; initial ownership by the author, & any transfer of ownership [chain of title]

a. '410(c): Registration before or within 5 years after first publication is prima facie evidence of the validity of the copyright. Plaintiff=s burden is satisfied by introducing the registration certificate; then D has the burden of challenging ownership and/or validity.

2. Copying is proved either by direct evidence (an admission or testimony) or by circumstantial evidence.

a. Copying can be presumed from proof of access plus similarity between the copyrighted work and the allegedly infringing work (Aprobative similarity@).

b. There is an inverse relationship between access and similarity. AStriking similarity@ can overcome weak evidence of access, since one can infer access if the works in question are virtually identical.

c. D may rebut the presumption of copying by introducing evidence of independent creation or common source.

d. [CAUTION: Most courts use the term Asubstantial similarity@ to refer to both the amount of similarity needed to infer copying, and the amount of similarity needed to show improper appropriation.]

3. Improper Appropriation requires proof of Asubstantial similarity@ between the defendant=s work and protected expression in the plaintiff=s work.

a. If the defendant has copied only unprotected expression (facts,

9 ideas, scènes à faire [cliches or stock elements], or material in the public domain), there is no liability for infringement.

b. Infringement may be found where there is either Afragmented literal similarity@ (verbatim copying of a portion of protected expression), or Acomprehensive non-literal similarity@ (non-literal copying of the outline or structure of a work).

c. However, if the defendant=s work has been so altered that it is not substantially similar to the plaintiff=s work, there is no liability for infringement.

E. Moral Rights

1. Berne Convention Art. 6bis: Independently of the author=s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work, and to object to any distortion, mutilation or other modification of ... said work, which would be prejudicial to his honor or reputation.

2. '101: A Awork of visual art@ is a painting, drawing, print, or sculpture, [or a still photographic image produced for exhibition purposes only,] existing in a single copy, [or] in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.

a. A work of visual art does not include any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, or electronic publication; any merchandising item or advertising, promotional, or packaging material; any work for hire; or any work not protected by copyright

3. '106A(a): Subject to '107, & independent of the exclusive rights in '106, the author of a work of visual art shall have the right to claim authorship of that work, to prevent the use of his or her name as the author of any work of visual art which he or she did not create; and to prevent the use of his or her name as the author of [a distorted or modified] work.

a. Subject to '113(d), the author of a work of visual art shall have the right to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation; and to prevent any [intentional or grossly negligent] destruction of a work of recognized stature.

10 4. '113(d): If a work of visual art has been incorporated in or made part of a building in such way that removing the work from the building will cause the destruction, distortion, mutilation or other modification of the work, the rights provided in '106A do not apply if the author consented to the installation before June 1, 1991, or in a signed written instrument after that date that specifies that removal may result in such modification.

a. If the work can be removed from the building without destruction, distortion, mutilation or other modification, '106A applies unless the owner has made a diligent, good faith attempt without success to notify the author, or after receiving notice in writing, the author failed within 90 days to remove the work or to pay for its removal.

F. Third-Party Liability

1. A third party is liable for contributory infringement if he or she has actual or constructive knowledge of direct infringement by another, and he or she induces, causes or materially contributes to the infringing conduct.

a. A third party is vicariously liable for copyright infringement if he or she has the right and ability to supervise the infringing activity and has a direct financial interest in such activity.

2. Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984): The sale of copying equipment does not constitute contributory infringement if the product is capable of substantial non-infringing uses. [The court also held that unauthorized home tape recording of broadcast television shows for time-shifting purposes was a fair use.]

a. Audio Home Recording Act of 1992 imposed a royalty on DAT recording machines and blank tapes, in exchange for '1008, which immunizes manufacturers and consumers sale of such devices and for noncommercial use of a digital or analog recording device or medium for making digital or analog musical recordings.

3. Third-Party Liability on the Internet

a. Federal case law holds that the owner of computer equipment that incidentally reproduces copyrighted works as part of an automated technical process for electronic transmission is not liable for direct infringement, and may be held liable only for contributory infringement or vicarious liability, to the extent that those doctrines apply.

b. '512 codifies four Asafe harbor@ provisions for Internet service providers engaged in transitory digital network communications,

11 system caching, storage of information for clients, and provision of information location tools, if they comply with several conditions, including controversial notice-and-take-down provisions.

c. Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd. (U.S. 2005): Providers of software that enables peer-to-peer file sharing may be held liable for infringement committed by users if they made the software available with the object of promoting its use to infringe.

G. Additional Provisions

1. '1101 prohibits the fixation, transmission or distribution of the sounds or images of a live musical performance without consent of the performer(s).

2. '1201(a)(1) prohibits the circumvention of technological measures that effectively control access to a copyrighted work (such as encryption or password protection). The Librarian of Congress is authorized to exempt classes of works for which users are likely to be adversely affected in their ability to make noninfringing uses of that class of works.

3. '1201(a)(2) prohibits manufacturing, importing, offering, providing, or trafficking in any technology, product, service, device, component or part that is primarily designed or produced for the purpose of circumvention; that has only limited commercially significant purposes other than circumvention; or that is marketed for use in circumventing such measures.

4. '1201(b) prohibits manufacturing, importing, offering, providing, or trafficking in any technology, product, service, device, component or part that is primarily designed or produced for the purpose of circumventing technological measures that effectively protect a copyright owner=s rights; that has only limited commercially significant purposes other than circumvention; or that is marketed for use in circumventing such measures.

5. '1202 prohibits providing false copyright management information (CMI), intentionally removing or altering CMI, or distributing or importing copies knowing CMI has been removed or altered, having reasonable grounds to know that it will induce, enable, facilitate or conceal infringement.

H. Remedies

1. '502: Any court having jurisdiction of a civil action arising under this title may ... grant temporary and final injunctions on such terms as it may deem reasonably necessary to prevent or restrain infringement.

2. '503: While an action is pending, the court may order the impounding of all allegedly infringing copies or phonorecords, and all articles by means of which such copies or phonorecords may be reproduced. As part of a final judgment or decree, the court may order the destruction of the same.

3. '504: The copyright owner is entitled to recover either (b) actual damages and any profits of the infringer that are attributable to the infringement and are not taken into account in computing actual damages; or (c) an award of statutory damages [in the range of $750 to $30,000] for all infringements involved in the action with respect to any one work.

4. '505: In any civil action under this title, the court in its discretion may allow the recover of full costs by or against any party other than the U.S.; and may award a reasonable attorney=s fee to the prevailing party. [Note that statutory damages and attorney=s fees are subject to '412.]