1 - Joaquin v. Drilon (1999)
49, 2, in enumerating what are subject to copyright, refers to
Facts:
BJ Productions, Inc. (BJPI) is the holder of a Certificate of Copyright of
a dating game show named Rhoda and Me. BJPI submitted to the National
Library an addendum to its certificate of copyright specifying the shows format
and style of presentation. While watching tv, Joaquin (President of BJPI) saw on
RPN Channel 9 an episode of Its a Date! which is produced by IXL Productions
(IXL). He wrote a letter to the President of IXL, Zosa, informing him that BJPI had a
copyright to Rhoda and Me and demanding that Its a Date be discontinued.
Both shows have the same substance because two matches are made between
a male and a female, both single, and the two couples are treated to a night or two of
dining and/or dancing at the expense of the show. So, the major concepts are the
same.
Zosa apologized and wanted to settle but IXL didnt stop airing the show.
Joaquin sent a second letter in which he reiterated his demand to discontinue Its a
Date. Meanwhile, Zosa registered IXLs copyright to the first episode of Its a
Date and he was given a certificate of Copyright by the National Library.
So naturally, Joaquin sued Zosa. Sec. of Justice Drilon moved for the
dismissal of the case. Joaquin is contending that BJPIs copyright covers only a
specific episode of Rhoda and Me and that the formats or concepts of dating
game shows are NOT covered by copyright protection.
Note: Joaquin claims that (just in case he asks for specifics)
1. Determination of the question whether the format or mechanics of a show
is entitled to copyright protection is for the court, and not the Secretary of
Justice, to make.
2. Secretary of Justice gravely abused his discretion in ruling that the master
videotape should have been presented in order to determine whether
there was probable cause for copyright infringement.
Issue:
1. W/N the format or mechanics of a show is entitled to copyright protection
2. W/N there is a need to present master tapes
Held/Ratio:
1. NO. The format of a show is not copyrightable. Section 2 of P.D. No. 49
(Decree on Intellectual Property), enumerate the classes of work entitled to
copyright protection. The format or mechanics of a television show is not
included in the list of protected works in 2 of P.D. No. 49. For this reason,
the protection afforded by the law cannot be extended to cover them.
Copyright, in the strict sense of the term, is purely a statutory right. It
is a new or independent right granted by the statute, and not simply a pre-
existing right regulated by the statute. Being a statutory grant, the rights are
only such as the statute confers, and may be obtained and enjoyed only with
respect to the subjects and by the persons, and on terms and conditions
specified in the statute.
P.D. No.
finished works and not to concepts. The copyright does not extend to an 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.
Mere description by words of the general format of the two dating
game shows is insufficient; the presentation of the master videotape in evidence
was indispensable to the determination of the existence of probable cause.
As aptly observed by respondent Secretary of Justice:
A television show includes more than mere words can describe because it
involves a whole spectrum of visuals and effects, video and audio, such that
no similarity or dissimilarity may be found by merely describing the
general copyright/format of both dating game shows.
2. YES present the master tape!
REMEDIES PART:
Petitioners claim that their failure to submit the copyrighted master
videotape of the television show Rhoda and Me was not raised in issue during the
preliminary investigation and, therefore, it was error for the Secretary of Justice to
reverse the investigating prosecutors finding of probable cause on this ground.
A preliminary investigation falls under the authority of the state
prosecutor who is given by law the power to direct and control criminal actions.
He is, however, subject to the control of the Secretary of Justice. In reviewing
resolutions of prosecutors, the Secretary of Justice is not precluded from considering
errors, although unassigned, for the purpose of determining whether there is probable
cause for filing cases in court. He must make his own finding of probable cause
and is not confined to the issues raised by the parties during preliminary
investigation. Moreover, his findings are not subject to review unless shown to have
been made with grave abuse.'
Presentation of Master Tape
Petitioners claim that Drilon gravely abused his discretion in ruling that the
master videotape should have been presented in order to determine whether there
was probable cause for copyright infringement.
Discussion of 20th Century Case vis--vis Columbia Pictures
In the 20th Century Fox Film Corp vs. CA, it involved raids conducted on
various videotape outlets allegedly selling or renting out pirated videotapes.
The trial court found that the affidavits of NBI agents, given in support of the
application for the search warrant, were insufficient without the master tape. The
presentation of the master tapes of the copyrighted films, from which the pirated
films were allegedly copied, was necessary for the validity of search warrants against
those who have in their possession the pirated films. The essence of a copyright
infringement is the similarity or at least substantial similarity of the purported
pirated works to the copyrighted work. Hence, the applicant must present to the
court the copyrighted films to compare them with the purchased evidence of the
video tapes allegedly pirated to determine whether the latter is an unauthorized
reproduction of the former. This linkage of the copyrighted films to the pirated
films must be established to satisfy the requirements of probable cause. Mere
allegations as to the existence of the copyrighted films cannot serve as basis for the
issuance of a search warrant.
This ruling was qualified in Columbia Pictures vs. CA:
In fine, the supposed pronunciamento in said case regarding the necessity
for the presentation of the master tapes of the copyrighted films for the validity of
search warrants should at most be understood to merely serve as a guidepost in
determining the existence of probable cause in copyright infringement cases where
there is doubt as to the true nexus between the master tape and the pirated copies.
An objective and careful reading of the decision in said case could lead to no other
conclusion than that said directive was hardly intended to be a sweeping and
inflexible requirement in all or similar copyright infringement cases.
In the case at bar, during the preliminary investigation, petitioners and
private respondents presented written descriptions of the formats of their
respective televisions shows, on the basis of which the investigating prosecutor
ruled:
The copyright does not extend to the general concept or format of its
dating game show. Accordingly, by the very nature of BJPIs copyright, the
investigating prosecutor should have the opportunity to compare the videotapes
of the two shows.
2. United Feature Syndicate, Inc., vs. Munsingwear Creation Manufacturing
Company.
Petitioners claim:
Petitioner is asking for the cancellation of the registration of trademark
CHARLIE BROWN (Registration No. SR. 4224) in the name of respondent
MUNSINGWEAR, alleging that petitioner is damaged by the registration of the
trademark CHARLIE BROWN of T-Shirts under Class 25 with the Registration No.
SR-4224 dated September 12, 1979 in the name of Munsingwear Creation
Manufacturing Co., Inc., on the following grounds:
(1) that respondent was not entitled to the registration of the mark CHARLIE
BROWN, & DEVICE at the time of application for registration;
(2) that CHARLIE BROWN is a character creation or a pictorial illustration, the
copyright to which is exclusively owned worldwide by the petitioner;
(3) that as the owner of the pictorial illustration CHARLIE BROWN, petitioner has
since 1950 and continuously up to the present, used and reproduced the same to
the exclusion of others;
(4) that the respondent-registrant has no bona fide use of the trademark in commerce
in the Philippines prior to its application for registration.
Respondents claim:
It uses, the trademark "CHARLIE BROWN" & "DEVICE" on children's
wear such as T-shirts, undershirts, sweaters, brief and sandos, in class 25; whereas
"CHARLIE BROWN" is used only by petitioner as character, in a pictorial
illustration used in a comic strip appearing in newspapers and magazines. It has no
trademark significance and therefore respondent-registrant's use of "CHARLIE
BROWN" & "DEVICE" is not in conflict with the petitioner's use of "CHARLIE
BROWN"
Relied on the ruling on October 2, 1984 in which the Director of the
Philippine Patent Office rendered a decision in this case holding that a copyright
registration like that of the name and likeness of CHARLIE BROWN may not
provide a cause of action for the cancellation of a trademark registration.
Issue: WHETHER A COPYRIGHTED CHARACTER MAY NOT BE
APPROPRIATED AS A TRADEMARK BY ANOTHER UNDER PRESIDENTIAL
DECREE NO. 49.
S.C. Ruling:
The petitioner is impressed with merit.
Since the name "CHARLIE BROWN" and its pictorial representation were
covered by a copyright registration way back in 1950 the same are entitled to
protection under PD No. 49, otherwise known as the "Decree on Intellectual
Property".
Aside from its copyright registration, petitioner is also the owner of several
trademark registrations and application for the name and likeness of "CHARLIE
BROWN" which is the duly registered trademark and copyright of petitioner United
Feature Syndicate Inc. as early as 1957 and additionally also as TV SPECIALS
featuring the "PEANUTS" characters "CHARLIE BROWN.
It is undeniable from the records that petitioner is the actual owner of said
trademark due to its prior registration with the Patent's Office.
3 - Baker v. Selden (1879)
The copyright of a book on bookkeeping cannot secure the exclusive right to make,
sell, and use account books prepared upon the system set forth in such book.
Facts: In 1859, Charles Selden took the requisite steps for obtaining the copyright of
a book, entitled Seldens Condensed Ledger, or Bookkeeping Simplified, which
explained and described a peculiar system of bookkeeping, and illustrated his method
by means of ruled lines and blank columns, with proper headings on a page or on
successive pages.
In 1867, W.C.M. Baker produced a book that uses a similar system as that
of Seldens so far as results are concerned, but makes a different arrangement of the
columns, and uses different headings.
Selden sued Baker for an alleged copyright infringement, contending that
the ruled lines and headings given to illustrate the system are a part of the book, and
as such are secured by the copyright, and that no one can make or use similar ruled
lines and headings, or ruled lines and headings made and arranged on substantially
the same system, without violating the copyright. Baker argues that the matter
alleged to be infringed is not a lawful subject of copyright.
Issue: Whether Selden, in obtaining the copyright of his book, secured the exclusive
right to the use of the system or method of bookkeeping which the book intended to
illustrate and explain.
Held/Ratio:
1. No. The copyright of his book only secures to him the exclusive right of printing
and publishing his book. While no one has a right to print or publish his book, or
any material part thereof, as a book intended to convey instruction in the art, any
person may practice and use the art itself which he has described and illustrated
therein.
The description of the art in a book, though entitled to the benefit of
copyright, lays no foundation for an exclusive claim to the art itself. The object of
the one is explanation; the object of the other is use. The former may be secured by
copyright. The latter can only be secured, if it can be secured at all, by letters patent.
(Patents are used to protect ideas and methods / useful arts. Copyrights can only be
used to protect expressions.)
The use of the art is a totally different thing from a publication of the book
explaining it. By publishing the book without getting a patent for the art, the latter is
given to the public. Seldens system was not patented, and is therefore open and free
to the use of the public. And of course, in using the art, the ruled lines and headings
of accounts must necessarily be used as incident to it.
The copyright of the book, if not pirated from other works, would be valid
without regard to the novelty, or want of novelty, of its subject matter. The novelty
of the art or thing described or explained is the province of letters patent, not of
copyright. The claim to an invention or discovery of an art or manufacture must be
subjected to the examination of the Patent Office before an exclusive right therein
can be obtained, and it can only be secured by a patent from the government.
Blank account books are not the subject of copyright, and that the mere
copyright of Seldens book did not confer upon him the exclusive right to make
and use account books, ruled and arranged as designated by him and described
and illustrated in said book.
4. - Hoehling v. Universal City Studios Inc. (1980)
Facts:
The case arises from the three separate accounts of the triumphant
introduction, last voyage, and tragic destruction of the Hindenburg (a large German
passenger airship). The Hindenburg was built during the reign of Hitler and was said
to be an indestructible carrier. However in 1937, the airship exploded in New Jersey
and 36 passengers were killed. Both American and German authorities were not able
to identify the cause of the explosion but were adamant at ruling out sabotage.
Throughout the years several news reports, articles and books were written about the
said event. One of these was Hoehlings Who Destroyed the Hindenburg? which
was based on his extensive research (read investigative reports, consulted previously
published articles and books, and conducted interviews with survivors of the crash as
well as others who possessed information about the Hindenburg ). In his book, he
talked about Spehl a crew member who according to the author was most likely the
saboteur of the airship so as to please his ladyfriend, who wanted to prove that the
Nazis were not invincible. Ten years later Mooney published his book, The
Hindenburg. Mooneys work was said to be more literary than historical in its
attempt to weave a number of symbolic themes through the actual events
surrounding the tragedy. Furthermore, Mooney acknowledges, that he consulted
Hoehlings book, and that he relied on it for some details. He asserts that he first
discovered the Spehl-as-saboteur theory when he read Titlers Wings of
Mystery. Mooneys motion picture rights were sold to Universal Studios. Initially,
his work was suppoed to be used for a television show, but it was later on used for a
final screenplay. In the movie, a certain Boerth was the one who planned to sabotage
the plane so as to embarrass the Reich and that a Luftwaffe intelligence officer
aboard the plane discovers the plan who was later on convinced that the airship
should be destroyed after the carrier has landed but due to a storm that delayed the
plane and their failure to diffuse the bomb, Hidenburg was destroyed with people
still in it.
Upon hearing of the release of the film, Hoehling filed a suit for copyright
infringement and common law unfair competition against Universal. Mooney was
later on included as a defendant in the case.
Issue: Whether Mooney and Universal committed copyright infringement
Held/Ratio: NO. It is undisputed that Hoehling has a valid copyright for his book.
However, his claim that Mooney and Universal copied the plot of his book is
untenable because the said plot is an idea and ideas are not copyrightable. Although
Hoehling admits this, he further contends that his expression of his idea is
copyrightable and in support of such, points to Sheldon case (Letty Lynton infringed
Dishonored Lady by copying its story of a woman who poisons her lover) and
Detective Comics case (exploits of Wonderman infringed the copyright held by the
creators of Superman, the original indestructible man). The court said that the
cases mentioned were about works of fiction where the distinction between idea and
expression is elusive. But in the present case, the idea at issue is an interpretation
of an historical event and thus is not copyrightable. Although the plots of the
two works were necessarily similar, there could be no infringement because of
the public benefit in encouraging the development of historical and biographical
works and their public distribution. To avoid a chilling effect on authors who
contemplate tackling an historical issue or event, broad latitude must be granted to
subsequent authors who make use of historical subject matter, including theories or
plots. Furthermore, the court said that there cannot be any such thing as copyright
in the order of presentation of the facts, nor, indeed, in their selection.
Hoehling also claimed that a number of things that he found out through his personal
research were copied by Mooney and Universal. To answer this, the court made it
clear that factual information is in the public domain. And lastly, Hoehling claimed
similarities in relation to random duplications of phrases and sequences of events (all
three works contain a scene in a German beer hall, in which the airships crew
engages in revelry prior to the voyage, common German greetings of the period,
such as Heil Hitler, or songs, such as the German National anthem). These
elements, the court said, are merely scenes a faire, that is, incidents, characters or
settings which are as a practical matter indispensable, or at least standard, in the
treatment of a given topic and that it is virtually impossible to write about a
particular historical era or fictional theme without employing certain stock or
standard literary devices and so, scenes a faire are not copyrightable as a matter of
law.
The court further said that in distinguishing between themes, facts, and
scenes a faire on the one hand, and copyrightable expression on the other,
courts may lose sight of the forest for the trees. By factoring out similarities based
on non-copyrightable elements, a court runs the risk of overlooking wholesale
usurpation of a prior authors expression. A verbatim reproduction of another
work, of course, even in the realm of nonfiction, is actionable as copyright
infringement. Thus, in granting or reviewing a grant of summary judgment, courts
should assure themselves that the works before them are not virtually identical. In
works devoted to historical subjects, it is our view that a second author may
make significant use of prior work, so long as he does not bodily appropriate the
expression of another. In this case, it is clear that all three authors relate the
story of the Hindenburg differently.
5. American Delta Association v. Delta Dental Plans Association (1997)
Facts:
The American Delta Association (ADA) published a book entitled Code on Dental
Procedures and Nomenclature (1969). It contained a taxonomy of different dental
procedures. The 1991 and 1994 versions were submitted for copyright registration,
which was granted by the Register of Copyrights.
Delta then published a book entitled Universal Coding and Nomenclature, which
contained blank forms dentists could use for their records, as well as most of the
Code that the ADA first created. The ADA sued Delta for copyright infringement.
Delta argued that taxonomy and nomenclature were not copyrightable.
DISTRICT COURT: The Code cannot be copyrighted because it catalogs a field of
knowledge in other words, that no taxonomy may be copyrighted. ADA appealed.
Issue: W/N the taxonomy may be copyrighted
Held/Ratio: YES. Any original literary work may be copyrighted. The necessary
degree of originality is low, and the work need not be aesthetically pleasing to be
literary. A taxonomy is a way of describing items in a body of knowledge or
practice; it is not a collection or compilation of bits and pieces of reality. The 1991
and 1994 versions of the Code may be recompilations of earlier editions, but the
original Code is covered by Section 102 (a) as an original work of authorship, and its
amendments by Section 106 (2) as derivative works.
Delta argues that the Code is not copyrightable because it is a system. Section 102
(b) states that a copyright protection even of an original work does not cover 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. The court ruled that the Code is not a system. The Code is a
taxonomy, which may be put to many uses. These uses may be or include systems;
the Code is not. (No other explanation was given)
The Code was a how-to for dentists. So far as the ADA is concerned, any
dentist, any insurer, anyone at all, may devise and use forms into which the Codes
descriptions may be entered. Section 102 (b) precludes ADA from suing, for
copyright infringement, a dentist whose office files record treatments using the
Codes nomenclature. No fields of practice has been or can be monopolized, given
this constraint. Section 102 (b) permits Delta Dental to disseminate forms inviting
dentists to use the ADAs Code when submitting bills to insurers. But it does not
permit Delta to copy the Code itself, or make and distribute a derivative work based
on the Code. (Ganito, parang cook book, di mo pwedeng kasuhan ung taong
magluluto based on your book, pero pwede mong kasuhan ung taong gagaya nung
book mo mismo).
NOT REALLY IMPORTANT, pero baka lang itanong ni sir. The district
court compared the Code to a lamp (or any sculpture) wherein you must first
determine whether its artistic and utilitarian aspects are separable before you can
copyright it (But the appellate court ruled that, obviously, the Code is not a form of
sculpture so this rule does not apply).
The court then continues the explanation by comparing the taxonomy to a
lamp. Congress permits works of art to be copyrighted, but does not extend the
copyright to industrial design, which in the main falls into the province of patent,
trademark, or trade dress law. When the maker of a lamp seeks to obtain a copyright
for the item as a sculpture, it is necessary to determine whether its artistic and
utilitarian aspects are separable. If yes, the artistic elements of the design may be
copyrighted; if no, the designer must look outside copyright law for protection from
imitation. The district court judge applied to the ADAs Code the same approach
court use for three-dimensional articles, and found that the Code has no expression
separable from its utilitarian aspects, and held that it therefore may not be
copyrighted.
6. L. Batlin & Son v. Snyder (1976)
Facts:
Uncle Sam mechanical banks (banks) have been on the American scene since
1886. This basic delightful design has long been in the public domain. These
banks are found in collectors books and known to the average person.
Uncle Sams description: wears a pipe hat, blue full dress coat, vest with stars and
red and white striped trousers, and leaning on his umbrella. The base is 4-5 inches
wide and his bag is placed in the base. A coin may be placed in Uncle Sams hand.
When a lever is pressed, the arm lowers, and the coin falls into the bag, while Uncle
Sams whiskers move up and down. The base has an embossed American Eagle with
the words Uncle Sam and Bank on each side.
Snyder doing business as J.S.N.Y, obtained a registration of copyright on a
plastic Uncle Sam bank in the category of Works of Art as sculpture. In his
affidavit, Snyder said that he obtained a cast metal antique Uncle Sam Bank then he
flew to Hong Kong to manufacture replicas as Bicentennial items. Snyder wanted
his bank to be made of plastic and to be shorter than the case metal sample (11
inches to 9 inches). He also changed the shape of the bag and to include the
umbrella in a one-piece mold. The plastic bank carried the legend CR Copyright
J.S.N.Y.
Batlin is also in the novelty business. He ordered 30 cartons of cast iron Uncle Sam
mechanical banks from Taiwan. When he became aware of the existence of a plastic
bank, which he considered an almost identical copy of the cast iron bank, Batlins
trading company in Hong Kong procured a manufacturer and the president of
Batlin ordered plastic copies also.
Batlin was notified by the US Customs that the plastic banks were covered by
Snyders copyright. The customs refused entry. So Batlin is instituting this case to
declare Snyders copyright void and for damages for unfair competition and
restraint of trade. The lower court granted Batlin a preliminary injunction.
Snyder claims differences not only of size but also in other very minute details.
Uncopyrighted Model Cast Iron Mechanical Bank Copyrighted Plastic Model
1. Shape of the bag: Rough Smooth Slimmer
2. Bag is fatter Eagle holding leaves
3. Eagle is holding arrows
testimony today is that if you give a man a seven-inch model and you say I want
this to come out in a five-inch model, and he copies it, the fact that he has to
have some artistic ability to make a model by reducing the seven to the five adds
something to it. That is the only issue in this case.
The plastic version reproduces the cast iron bank except that it
proportionately reduces the height from approximately eleven inches to
approximately nine inches with trivial variations. There was no level of input
which means that there was no great skill and originality.
The test of originality is concededly one with a low threshold in that (a)ll
that is needed . . . is that the author contributed something more than a
merely trivial variation, something recognizably his own.
There were no elements of difference that amounted to significant
alteration or that had any purpose other than the functional one of making a
more suitable (and probably less expensive) figure in the plastic medium.
The reproduction must contain an original contribution not present in the
underlying work of art and be more than a mere copy. The mere reproduction of
a work of art in a different medium should not constitute the required
originality for the reason that no one can claim to have independently evolved any
particular medium. Nor can the requirement of originality be satisfied simply by
the demonstration of physical skill or special training. (remember Toyota
case?)
To extend copyrightability to minuscule variations would simply put a
weapon for harassment in the hands of mischievous copiers intent on appropriating
and monopolizing public domain work.

Different also as to texture of the clothing, the hairline, shape of the bow ties and the
shirt collars. Basta mostly about shape and texture. Many of these ARE NOT
perceptible to the casual observer.

Issues: W/N there is copyright infringement

Held/Ratio:
1. NO. The court examined the copyrighted plastic model and the uncopyrighted
model cast iron model. The Snyder bank is extremely similar to the cast iron
bank, save in size and material with the only other differences, such as the shape
of the satchel and the leaves in the eagles talons being by all appearances, minor.
Similarities include, more importantly, the appearance and number of stripes on the
trousers, buttons on the coat, and stars on the vest and hat, the attire and pose of
Uncle Sam, the decor on his base and bag, the overall color scheme, the method of
carpetbag opening, to name but a few.
The judge said: I am making a finding of fact that as far as Im concerned, it
is practically an exact copy and whatever you point to in this (sic) differences
are so infinitesimal they make no difference. All you have proved here by the

7. Entertainment Research Group, Inc. v. Genesis Creative Group, Inc. (1998)
Facts:
Entertainment Research Group (ERG) designs and manufactures three-
dimensional inflatable costumes based upon the cartoon characters of the companies
which use them for advertising and promotional services. (e.g. Pillsbury - Pillsbury
Dough Boy costume, Toys-R- Us - Geoffrey the Giraffe costume, Quaker Oats -
CapN Crunch costume). ERG was allegedly the only manufacturer utilizing these
techniques.
Genesis is in the business of marketing promotional and advertising devices
to various companies and it was to sell exclusively ERGs products on a commission
basis, while Aerostar is a manufacturer of hot air balloons, cold air inflatable
products and cold air walk-around costumes.
ERG claims that Genesis secretly entered into an agreement with Aerostar
while the ERG-Genesis relationship was still alive and that Genesis supplied
Aerostar with ERG-made costumes and ERGs proprietary information so that
Aerostar could enter into the inflatable costume industry and so that Genesis could
get itself a better deal through Aerostar. ERG further claims that Genesis provided
Aerostar with examples of ERG-manufactured costumes so that Aerostar could learn
how to manufacture the complicated and intricate costumes and so that Aerostar
could copy the costumes.
ERG did not possess valid copyrights in its three-dimensional inflatable
costumes but there was a preexisting copyright on the two-dimensional cartoon
characters. ERG alleges that Aerostar copied and infringed ERGs copyrights in the
inflatable costumes that ERG designed and manufactured based on the underlying
copyrighted characters.
Issue: Whether ERGs costumes are copyrightable as derivative works.
Held/Ratio:
1. YES. The Copyright Act defines a derivative work as a work based upon one or
more pre-existing works, such as an art reproduction or any other form in which
a work may be recast, transformed, or adapted. A work consisting of editorial
revisions, annotations, adapted elaborations, or other modifications which, as a
whole, represent an original work of authorship, is a derivative work. Given
this definition, it is clear that ERGs costumes are derivative works.
Nevertheless, the copyright protection afforded to derivative works is more limited
than it is for original works of authorship. Specifically, Section 103(b) provides that
the copyright in a derivative work extends only to the material contributed by the
author of such work, as distinguished from the preexisting material employed in the
work.
According to the Doran test (which ruled that a three-dimensional, inflatable
representation of Santa Claus was original and copyrightable):
a. test of copyrightability must be the form which the author has used to
express the figure, idea, or theme.
b. if the form of the derivative work and the form of the underlying work
(three-dimensional, two- dimensional, plastic, etc.) are sufficiently
different, then the derivative work is original enough to be
copyrightable.
According to the Court, this test completely fails to take into account the
rights of the holder of the copyright for the underlying work, the Doran test should
not be applied to determine the copyrightability of a derivative work that is based on
a preexisting work that is itself copyrighted.
Indeed, the body of law regarding derivative copyrights is designed to strike
a balance between the holder of a copyright in the underlying work and the creator of
a work that is made by copying that underlying work. Courts must be concerned
about the impact such a derivative copyright will have on the copyright privileges
and rights of the owner of the underlying work. of preexisting two-dimensional
works.
Durham Test:
This test contains two prongs: First, to support a copyright the original
aspects of a derivative work must be more than trivial. Second, the original aspects
of a derivative work must reflect the degree to which it relies on preexisting material
and must not in any way affect the scope of any copyright protection in that
preexisting material.
The first prong of the Durham test is in harmony with numerous decisions
of this Circuit which establish that the original aspects of a work must be more than
trivial to warrant copyright protection (holding that [o]riginality is the sine qua non
of copyrightability).
The second prong is completely consistent with Section 103(b) of the
Copyright Act and is, in fact, necessary because of Section 103(b), which provides
that:
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. The copyright in such work is independent of, and does not
affect or enlarge the scope, duration, ownership, or subsistence of, any copyright
protection in the preexisting material.
The second prong of the Durham test is designed to ensure that copyright
protection is not given to a derivative work if doing so would necessarily affect the
scope of any copyright protection in the preexisting material.
This is so because if copyright protection were given to derivative works
that are virtually identical to the underlying works, then the owner of the underlying
copyrighted work would effectively be prevented from permitting others to copy her
work since the original derivative copyright holder would have a de facto monopoly
due to her considerable power to interfere with the creation of subsequent derivative
works from the same underlying work.
The Durham test is the proper approach
8. Pickett v. Prince (2000)
Facts:
Prince (the artist formerly known as) Rogers Nelson started calling himself an
unpronounceable symbol which looks a lot like an Egyptian hieroglyph ankh. The
symbol is his trademark but it is also a copyrighted work of visual art that licensees
of Prince have embodied in various forms, including jewelry, clothing, and musical
instruments. Prince did not register a copyright of the symbol until 1997, but Picket
admits that Prince obtained it as early as 1992 because registration is not a condition
of copyright protection.
Pickett made a guitar in the shale of Princes symbol. He admits that this is a
derivative work within the meaning of 17 USC 101 as [a] work based upon one or
more pre-existing works, such as a translation, musical arrangement, dramatization,
fictionalization, motion picuture or any other form in which a work may be recast,
transformed, or adapted. Picket claims that he had shown the guitar to Prince.
Prince appeared in public playing a guitar similar to Pickets shortly after. A suit was
brought by Picket, but Prince counter claimed.
Picket argued that it wasnt Prince that owned the copyright but that it was
Warner Brothers, and that therefore Prince had no standing to enforce the copyright.
It is Picketts position that one can copyright a work derivative from another
work when the original work is copyrighted by someone else who hasnt authorized
the maker of the derivative work to copyright it?
Issue: Does Picket own a copyright over the guitar, a derivative work?
Held/Ratio: NO.
Picket had the burden to show that his derivative work had enough
originality to entitle him to copyright. He was not able to show enough originality.
The difference in appearance was due to nothing more than the functional
difference between a two-dimensional symbol and a guitar in the shape of that
symbol.
Picket cannot make a derivative work based on the Prince symbol without
Princes authorization, even if there was any semblance of originality. A derivative
result is bound to be very similar to the original. The court made use of the analogy
of a book being translated into English from French, the two translations might be
similar and difficult to establish whether one is a copy of the other or because both
are copies of the same foreign language original.
Picket relies on Section 103(A) of the copyright act which provides that
copyright can be obtained in derivative works protection for a work employing
material pre-existing material in which copyright subsists does not extend to any part
of the work in which such material has been used unlawfully. It is Pickets
interpretation that this authoirzes a person other than the owner of the original work
to make a derivative work, but forbidding him from infringing upon the original.
However, 103(A) means only that the right to make a derivative work does not
authorize the maker to incorporate material that infringes someone elses copyright.
So if Pickett owned a copyright of, say, a picture of Prince, and Prince used that
picture in his own guitar without Pickett's consent, Pickett would have a claim of
infringement. But the only copyright that Pickett claims Prince infringed is a
copyright that Pickett had no right to obtain, namely a copyright on a derivative work
based on Prince's copyrighted symbol.
Picket could not copyright his guitar, as his guitar infringed on Princes
copyright.
9 - Feist Publications Inc. v Rural Telephone Service Co., Inc. (1991)
Facts:
Rural Telephone is a public utility that provides telephone service in several
parts of Kansas. It is subject to state regulation that mandates telephone companies to
annually issue an updated telephone directory. Accordingly, it publishes both white
(name, town and telephone number of the subscriber) and yellow (business
subscriber, category and featured classified ads) pages where the names of subscriber
and business subscriber are arranged alphabetically. Feist on the other hand publishes
an area-wide telephone directory covering a bigger geographical range. Since it is
not a service provider, who obtains information directly from the subscribers, Feist
asked 11 telephone companies for license to use their white page listings and only
Rural refused. Nevertheless, Feist still used the white page listing but in doing so,
removed those outside of their geographical range and conducted a survey on the
others; thus, some of Feists listing included street address. Still 1,309 of Feists
listing are identical with Rurals, 4 of which were fictitious to detect copying and this
prompted Rural to sue for copyright infringement stating that Feist, in compiling
its own directory, could not use the information contained in Rurals white pages.
District court ruled in favor of Rural stating that telephone directories are
copyrightable which was affirmed in the Court of Appeals (10th Circuit).
Issue: Whether Feist committed copyright infringement (were names, town and
telephone numbers in telephone directory protected by copyright)
Held/Ratio:
NO. The case distinguishes 2 things: facts and factual compilations. The
court stated that no one may claim originality as to facts. This is because facts do not
owe their origin to an act of authorship. The distinction lies between creation and
discovery and that the first person to find and report a particular fact has not created
the fact; he or she has merely discovered its existence. Thus, all facts may not be
copyrighted and are part of the public domain available to every person.
Factual compilations, on the other hand, may possess the requisite
originality. The compilation author typically chooses which facts to include, in what
order to place them, and how to arrange the collected data so that they may be used
effectively by readers. So long as choices as to selection and arrangement are
made independently by the compiler and entail a minimal degree of creativity,
sufficiently complies with originality. Thus, if the selection and arrangement are
original, these elements of the work are eligible for copyright protection.
 The court also discussed the 1909 Act which contained a provision stating
that a person seeking to register a work should indicate on the application the type of
work, and it listed 14 categories under which the work might fall. One of these
categories was books, including composite and cyclopdic works, directories,
gazetteers, and other compilations. This led some courts to believe that directories
and all other compilations are copyrightable per se even without satisfying the
creativity and originality requisites. Worse, some of the said courts developed a new
theory to justify the protection of factual compilations. Known alternatively as sweat
of the brow or industrious collection, the underlying notion was that copyright was a
reward for the hard work that went into compiling facts. Under this doctrine, the only
defense to infringement was independent creation and a subsequent compiler was not
entitled to take one word of information previously published, but rather had to
independently work out the matter for himself, so as to arrive at the same result from
the same common sources of information. Thus in the Copyright Act of 1976,
changes were made so as to clear up the confusion with regard to compilations. Sec
101 of the said act defined compilation in the copyright sense as a work formed
by the collection and assembling of preexisting materials or of data that are
selected, coordinated, or arranged in such a way that the resulting work as a
whole constitutes an original work of authorship.
There are three distinct elements and requires each to be met for a work to
qualify as a copyrightable compilation:
(1) the collection and assembly of pre-existing material, facts, or data;
(2) the selection, coordination, or arrangement of those materials; and
(3) the creation, by virtue of the particular selection, coordination, or
arrangement, of an original work of authorship.
The originality requirement can be gleaned on how the facts are presented-
whether the selection, coordination and arrangement of the facts are original to
merit protection. The copyright in a compilation 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.
In this case, the directory was in alphabetical order, which the court points as neither
creative nor original and in fact is an age old practice. It cannot be said that the
selection, coordination and arrangement of facts is original, thus Feist did not
commit copyright infringement.
10. Roth Greeting Cards v. United Card Co, (1970)
Doctrines:
The test of infringement is whether the work is recognizable by an
ordinary observer as having been taken from the copyrighted source.
Since direct evidence of copying is rarely available, copying may be
established by proof of access and substantial similarity.
Facts:
Roth Greeting Cards was engaged in the greeting card business. Roth employed a
writer to develop the textual
material for its cards, which will be reviewed by the company president. When
accepted, the artist would integrate the text into a rough layout of a greeting card,
which when approved will be developed until the card is ready to be printed and
distributed to stores. United Card Co. was also engaged in the same business. But
unlike Roth, its source of art and text were unclear. United did not have any writers
on its payroll and the texts were said to be products of the minds of the president and
vice-president, and that the VP made the pictures.
Roths claim involves the production and distribution by United of seven greeting
cards which bear a remarkable resemblance to seven of Roths cards on which
copyrights had been granted. Roth sued United to recover damages and obtain
injunctive relief for copyright infringement.
(It should be noted that the VP admitted that he had seen the cards of Roth while he
was brainstorming and that he may have copied some parts of it. Also, if sir asks,
two titles of the copied cards were mentioned in the case: I WUV YOU card and I
MISS YOU ALREADY card with an inside message reading AND YOU HAVENT
EVEN LEFT)
DISTRICT COURT DECISION: In favor of United for 2 reasons
First, the court found that Roth had not completed its registration of copyright
ownership at the time the case was filed, and therefore the court did not have
jurisdiction. According to 17 USC Sec. 13, no action for infringement of copyright
shall be maintained until the provisions of Title 17 of the United States Code with
respect to the deposit of copies and registration of such work shall have been
complied with. The court found that Roth filed this action two days before the
application for copyright registration was received by the copyright office. It held
that an action is maintained within the meaning of that statute when it is instituted.
Second, it found that while pictures could be subject to copyright, the pictures on the
cards distributed by United did not infringe on the copyright of the pictures on the
Roth cards. It ruled that although it was copied by United, the wording or textual
matter of each of the Roths cards consists of common and ordinary English words
and phrases which are not original with Roth and were in the public domain prior to
first use by it.
Issues:
1. W/N the court has jurisdiction
2. W/N the cards created by Roth are protected by copyright
3. W/N there has been an infringement
Held/Ratio:
1. YES. CA ruled that although there had been some delays in completing the
process, Roth had initiated filing for copyright well before the case was filed, so
the delays are not relevant
2. YES. CA agreed with the district court when it ruled that the words could not be
protected since they were too ordinary. However, proper analysis of the problem
 requires that all elements of each card, including text, arrangement of text, art
work, and association between art work and text be considered as a whole. In
this regard, the court concluded that Roths cards are both original and
copyrightable since the cards, as a whole, are representation of a tangible
expression of an idea and that such expression was, in totality, created by Roth.
3. YES. To constitute an infringement, there must be a substantial similarity
between the infringing work and the work copyrighted. The test of infringement
is whether the work is recognizable by an ordinary observer as having been
taken from the copyrighted source. The question which remains is whether
United did in fact copy the cards. Since direct evidence of copying is rarely
available, copying may be established by proof of access and substantial
similarity. In this case, there was a testimony establishing that United had access
to the cards (it sent employees to stores where the Roth cards were on display to
observe what the competition was doing). Also, there was testimony almost
compelling the inference that United always looks at the cards produced by
other companies and make similar cards under its label. These circumstances,
together with the marked similarity between the cards, convinced the court that
each if Uniteds cards in question, considered as combined compositions of art
and text, were in fact copied from the Roth cards.
DISSENT, Kilkenny, Circuit Judge
I cannot, however, follow the logic of the majority in holding that the
uncopyrightable words and the imitated, but not copied art work, constitutes
such total composition as to be subject to protection under the copyright laws.
The majority concludes that in the overall arrangement of the text, the art work
and the association of the art work to the text, the cards were copyrightable and
the copyright infringed. This conclusion, as I view it, results in the whole
becoming substantially greater than the sum total of its parts. With this
conclusion, of course, I cannot agree.
Cited case: Detective Comics, Inc. v. Bruns Publications, Inc.
This case involved the intimation of the Superman image by a rival company.
In finding infringement, the court emphasized that so far as the pictorial
representations and verbal descriptions of Superman are not a mere delineation
of a benevolent Hercules, but embody an arrangement of incidents and literary
expressions original with the author, they are proper subjects of copyright and
susceptible of infringement because of the monopoly afforded by the Act. The
district court in this case found that both the art work and the text materials were
copyrightable and that each was infringed.
(The judge compared the Superman case with the Roth case. In the Roth case,
though the art work and the text are not copyrightable, but when taken as a
whole it becomes a tangible expression of the author and it becomes
copyrightable. However, in the Superman case, the court ruled that there was an
infringement not because of the finished product but because both the art work
and the text, when taken separately, are copyrightable).
11. Mason v. Montgomery Data Inc. (1992)
Facts:
In 1967, the plaintiffs began creating land ownership maps for Montgomery
County, Texas based upon United States Geological Survey maps using title data
obtained from public records as well as data supplied by an agreement with Conroe
Title & Abstract Co., Inc., a defendant herein. By July 1969, 118 individual map
sheets were created and published with copyright notices. The map sheets contain
identification, location and relative position, size and shape of land grants and real
property in Montgomery County and representations of survey lines, tract
boundaries, identification of deeds, abstract numbers, and other information that the
plaintiffs claim as original work. The plaintiffs made revisions to the original map
sheets, and 115 revised map sheets were published with copyright notices during the
period from 1970 to 1980.
The plaintiffs contend that the defendants made an unauthorized derivative
edition of the original maps by cutting and pasting the plaintiffs copyrighted map
sheets into new configurations. It is also alleged that the defendants then copied the
surveys, tract boundaries, topography, and other features from the plaintiffs
copyrighted maps on transparent overlays.
Between 1980 and 1982 defendant, Landata, Inc. of Houston (Landata),
bought a set of the plaintiffs previously registered map sheets in a public store.
Landata then developed its own updated map sheets for distribution by the
defendant, Montgomery Data, Inc. (MDI), to its subscribers. The plaintiffs learned
of this activity in September 1985, when Landata sought permission to use the
copyrighted map sheets in a computer title plant to be made available to other title
companies. The plaintiffs denied Landata this use.
Registration of the plaintiffs copyright in one original map sheet was filed
in October 1968 and October 1987 while those of the revised ones were registered in
December 1987.
The District court held the maps not copyrightable under the idea/expression
merger doctrine and that the plaintiffs maps were not original that would grant
statutory damages for infringement.
Issues: W/N the District court was correct in holding that the maps were not
copyrightable under the idea/expression merger doctrine and that the plaintiffs maps
were not original that would grant statutory damages for infringement .
Held/Ratio:
No. The District court was not correct on both points. The Appellate court
held that a map can be drawn in a variety of ways and can contain various levels of
data. Therefore they are a creative expression worthy of copyright.
It based its decision on Feist Publications Inc. v. Rural Telephone Service Inc.
and found that compilations of factual data are copyrightable if the authors
selection, coordination and arrangement of the information depicted are sufficiently
creative to qualify as a creative expression.
Ruling of the District court (in case he asks about the Merger Doctrine)
 The plaintiffs principal contention is that the defendants made an
unauthorized use of its copyrighted maps to create certain reorganized map sets,
overlays and computer databases.
The Copyright Act provides that factual Compilations can be copyrighted,
however, the copyright in a compilation or derivative work extends only to the
material contributed by the author of such work, as distinguished from the pre-
existing material employed in the work, and does not imply any exclusive right in the
pre-existing material.
In other words, when the copyright lies in the arrangement of facts, only the
arrangement is protected by the copyright. Obviously, the plaintiffs could not
copyright the information in the public records but they do purport to have
copyrighted the arrangement of the information on the maps.
To establish a prima facie case of copyright infringement, the plaintiff must
prove ownership of copyrighted material, that the defendant had access to the
copyrighted material and that there is a substantial similarity between the authors
and the defendants expression of the idea in the material.
A plaintiff may establish ownership by showing that the material is
copyrightable and that he complied with the statutory requirements in securing the
copyright.
In this case, it is undisputed that the plaintiffs obtained copyright certificates
for the maps in question and that the defendants had access to them. Therefore, the
resolution of this case depends upon the copyrightability of the maps.
It is well settled in Copyright Law that a copyright protects only an authors
expression of an idea and not the idea itself. If, however, the expression of an idea is
inseparable from the idea itself, the expression and idea merge.
The Merger doctrine was developed to deal with the difficulty in
determining the difference between an idea and the expression of that idea.
When the idea and its expression are thus inseparable, copying the
expression will not be barred, since protecting the expression in such circumstances
would confer a monopoly of the idea upon the copyright owner free of the conditions
and limitations imposed by the patent law.
Similarly, the instant case which deals with factual matters such as drawing
the abstract, tract boundaries and the ownership name and tract size, the facts
themselves are not copyrightable but the expression of the facts and their
arrangement may in some instances be copyrightable.
However, the problem with the Hodge Mason maps is not a lack of
originality, but rather that the maps express the only pictorial presentation that could
result from a correct interpretation of the legal description and other factual
information relied upon by the plaintiffs in producing the maps.
To take the plaintiffs argument to its logical conclusion would mean that
anyone who desired to make a map of Montgomery County would have to dig
through and interpret the pertinent public records and transform the metes and
bounds of the legal descriptions into a pictorial presentation that, if done correctly,
would be substantially the same as the plaintiffs. Clearly, this would contradict the
policy of copyright law that allows a subsequent author to build upon and add to
prior accomplishment without unnecessary duplication of effort.
12. Lindsay v. The Wrecked and Abandoned Vessel R.M.S. TITANIC (1999)
Facts:
Lindsay is an independent documentary film maker engaged in the business
of creating, producing, directing, and filming documentaries. R.M.S. Titanic, Inc.
(RMST) is a publicly traded U.S. corporation that was awarded exclusive status as
salvor-in-possession of the Titanic wreck site and is authorized to carry on salvage
operations at the vessel's wreck site. As a condition of obtaining these rights, RMST
allegedly agreed to maintain all the artifacts it recovered during the salvage
operations for historical verification, scientific education, and public awareness. In
1994, Lindsay, under contract with a British television company, filmed and directed
the British documentary film, Explorers of the Titanic, a chronicle of RMST's third
salvage expedition of the Titanic. To film this documentary, Lindsay sailed with
RMST and the salvage expedition crew to the wreck site and remained at sea for
approximately 1 month. He alleges that during and after filming this documentary, he
conceived a new film project for the Titanic wreck using high illumination lighting
equipment. He discussed his idea with Tulloch (shareholder, president and member
of the board of directors of RMST) and, later on agreed to work together on the
venture. Lindsay developed a comprehensive business plan for the new film project
Titanic: A Memorial Tribute. Tulloch allegedly informed the plaintiff that he would
agree to the plan but that Tulloch would have to obtain approval from the RMST
Board of Directors. The contract (terms of Lindsay's compensation, including sharing
in the profits derived from any film, video and still photographs obtained from the
1996 salvage operation) between them was never executed.
Part of his pre-production efforts, the plaintiff created various storyboards for
the film, a series of drawings which incorporated images of the Titanic by identifying
specific camera angles and shooting sequences that reflected his creative inspiration
and force behind his concept for shooting the subject work. He and his film team
designed the huge underwater light towers that were later used to make the film.
Lindsay also personally constructed the light towers and thereafter directed,
produced, and acted as the cinematographer of the underwater video taping of the
Titanic wreck site. He directed the filming of the wreck site from on board the
salvage vessel Ocean Voyager. Plaintiff now alleges that he was never fully
compensated for his services, that the defendants are unlawfully profiting from the
exploitation his film project and that they are guilty of copyright infringement.
Issue: Whether Lindsay and RMST are both authors of the work Held/Ratio:
NO. Defendants argue that the plaintiff cannot have any protectable right in
the illuminated footage since he did not dive to the ship and thus did not himself
actually photograph the wreckage, and that Lindsay and RMST (through the main
photographer Petron with whom they have a work for hire agreement) are joint
authors of the work, thus there was no copyright infringement. However, court held
that this does not hold water. The Copyright Act of 1976 provides that copyright
ownership vests initially in the author or authors of the work. Generally speaking, the
author of a work is the person who actually creates the work, that is, the person
who translates an idea into a fixed, tangible expression entitled to copyright
protection. Although in the context of film footage and photography, the author of a
work is often the individual or individuals who took the pictures, the SC has also
recognized that photographs may receive copyright protection in so far as they are
representatives of original intellectual conceptions of the author. An individual
claiming to be an author for copyright purposes must show the existence of those
facts of originality, of intellectual production, of thought, and conception. Some
elements of originality in a photograph includes posing the subjects, lighting, angle,
selection of film and camera, evoking the desired expression, and almost any variant
involved. Thus in the case of Lindsay, the storyboards and the specific directions
he provided to the film crew regarding the use of the lightowers and the angles
from which to shoot the wreck all indicate that the final footage would indeed be
the product of his original intellectual conceptions. The fact that Lindsay did not
literally perform the filming, (by diving to the wreck and operating the cameras) will
not defeat his claims of having authored the illuminated footage. During the
expedition itself, Lindsay has been the director, producer and cinematographer of the
underwater footage since he provided the film crew with detailed instructions for
positioning and utilizing the light towers and screened the footage at the end of each
day to confirm that he had obtained the images he wanted. All else being equal,
where a person exercised such a high degree of control over a film operation
(including the type and amount of lighting used, the specific camera angles to be
employed, and other detail-intensive artistic elements of a film) such that the
final product duplicates his conceptions and visions of what the film should look
like, that person is said to be an author within the meaning of the Copyright
Act. Minimal contributions and inclusion of suggestions in the final product will not
merit one as an author. A joint work is prepared by two or more authors with the
intention that their contributions be merged into inseparable or independent parts of a
unitary whole. To prove co-authorship status, it must be shown by the individual
claiming co-authorship status that each of the putative co-authors fully intended
to be co-authors, and made independently copyrightable contributions to the
work. In other words, where one contributor retains a veto authority over what is
included in a work, such control is a strong indicator that he or she does not intend to
be co-authors with the other contributor. And this cannot be said in this case between
Lindsay and RMST since Lindsay exercised virtually total control over the content of
the film as the director, producer and cinematographer of the production.
13 - Erickson v. Trinity Theatre (1994)
This case is about the copyright infringement by Trinity Theatre of three plays
and two video tapes owned by Ms. Karen Erickson, a former playwright of said
theatre.The case filed by Erickson seeks a preliminary and permanent injunction
to prevent trinity theatre from performing the three plays and from using the
two videotapes. (not yet a case for copyright infringement) The district court
sustained Ms. Ericksons claims and enjoined trinity. Hence, the case.
Facts:
Ms. Erickson was one of the founders of the trinity theatre and served it in
several capacities, as playwright, artistic director, actress, play director, business
manager, and member of the board of directors. The case however, stems from her
being its playwright.
Three of her plays are at issue here: Much Ado, Time Machine, and
Prairie Voices. The first play is a compilation of different scenes and sonnets from
the works of Shakespeare and as testified by Actor Micheal Osbourne, although he,
and other actors suggested parts to be included in it, it was still Ms. Erickson who
had the final decision of whether or not to include such suggestions.
The second play, Time Machine was a work in progress of Ms. Erickson
from the time she was still in school, when she taught high school drama and until
the time she was already a playwright. However, such play involved the development
of melodrama and improvisational scenes, the latter meaning there was no exact
script. Instead, the actors were given a theme in which they would work on with their
own interpretation. Their interpretations however, were taken note of by Ms.
Erickson and compiled them into a script. In this play however, it was still Ms.
Erickson who exercised the final decision as regards the inclusion of the actors
interpretations in the script. This play was produced independently by Ms. Erickson
in 1984 together with two actors, namely, Paddy Lynn and Will Clinger. At the
outset, Ms. Lynn was credited as co-author in publicity materials, however Ms.
Erickson later on denied this claiming that she did not approve such credit of Ms.
Lynn and denies that Ms. Lynn is a joint author of such play.
The third play, Prairie Voices was intended by Ms. Erickson to be developed
as a Trinity Production. She originally intended to launch it as a collaborative effort
in which the actors would contribute a story to the play. However, none of the actors
contributed and in the end it was entirely based on tales provided by Ms. Erickson.
In 1987, Ms. Erickson was paid by Trinity royalties for the performances of
her plays, in 1988 she entered into a two-year license agreement with Trinity as
playwright and included the payment of royalties for the performance of her plays.
After the expiration of the licensing agreement, Trinity stopped paying Ms. Erickson
royalties for the performance of her plays.
When Erickson left trinity in 1991 she obtained copyright registration for her
plays and its videotapes.
Issue: Whether or not there was likelihood of success in Ericksons case for
obtaining a preliminary injunction. (the case was not yet for copyright infringement
but for preliminary injunction pending the filing of a case for copyright
infringement)
Held/Ratio:
YES, the court found the magistrate judges findings correct and that Ms.
Ericksons case is likely to succeed based on its merits.
The magistrate judge explained the different schools of thought in interpreting
what is joint-work within the meaning of 101 of the Copyright Act of 1976. (see
notes below for definitions and the discussion). Briefly, it stated that between Trinity
Theatres claim that joint work is collaboration alone based on Professor
Nimmers de minimis standard and Ms. Ericksons claim that joint work should be
subject to the copyrightable subject matter test, it is the latter which should prevail.
Discussion:
The magistrate judge briefly reviewed the elements of copyright infringement.
Because a valid copyright registration had been made within the requisite time, the
burden would be on Trinity to show the invalidity of the registration. It could either
demonstrate that the material was copied from another source or dispute the
authorship of the material itself. In this case, continued the magistrate judge, Trinity
challenged the authorship itself. Trinity claimed that several of its members were
joint authors of the three plays with Ms. Erickson, that these joint authors gave
Trinity the right to produce the plays, and therefore that Trinity and its
member joint authors share rights to the plays and videotapes.
The magistrate judges report and recommendation concluded that the district court
should enter a preliminary injunction in favor of Ms. Erickson concerning the plays.
The magistrate judge stated that [a] determination as to joint authorship involves
an examination of the putative authors intent at the time the work is
produced. The magistrate judge followed primarily the Second Circuits test in
Childress v. Taylor, which identified two elements of joint ownership: (1) the
contribution of each joint author must be copyrightable and
(2) the parties must have intended to be joint authors.
With regard to the second element, the Childress court stated that the putative joint
authors must entertain in their minds the concept of joint authorship. Using this
analysis, the magistrate judge determined that Ms. Erickson was likely to prevail on
her claims regarding the three plays. With regard to Prairie Voices, the evidence was
clear that Ms. Erickson controlled the script and that the contributions of the actors
were not copyrightable. Even if it was not necessary to show that a contribution was
independently copyrightable in order to establish joint ownership, the actors
inability to specify any particular contribution was strong evidence that they were not
authors of the play. Furthermore, Ms. Erickson never intended to share authorship
with any of the actors.
Meaning of Joint Work
In a joint work, the joint authors hold undivided interests in a work, despite any
differences in each authors contribution. Each author as co-owner has the right to
use or to license the use of the work, subject to an accounting to the other co-owners
for any profits. Thus, even a person whose contribution is relatively minor, if
accorded joint authorship status, enjoys a significant benefit.
In determining whether any of the works at issue in this case may be classified as a
joint work, our starting point must be the language of the statute. Section 101 of
the Copyright Act defines a joint work as 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.
Neither the Act nor its legislative history defines inseparable or interdependent.
The legislative history states that examples of inseparable parts are the joint
contributions of two authors to a single novel or the contributions of two painters to a
single work; an example of interdependent parts are the lyrics and music for a song.
Apart from these examples, the reports do little to clarify the criteria for determining
joint authorship. Indeed, they increase the ambiguity. The committee reports state:
[A] work is joint if the authors collaborated with each other, or if each of the
authors prepared his or her contribution with the knowledge and intention that it
would be merged with the contributions of other authors as inseparable or
interdependent parts of a unitary whole. The touchstone here is the intention, at
the time the writing is done, that the parts be absorbed or combined into an
integrated unit.
This ambiguity presents analytical problems in cases such as this one, in which the
parties have collaborated in some sense but dispute whether there was a mutual
intent to create a joint work. In resolving this ambiguity, we believe that it is
important to note, at the outset, that the statute itself requires that there be an
intent to create a joint work. Therefore, reliance on collaboration alone, as Trinity
suggests, would be incompatible with the clear statutory mandate.
Professor Nimmers de minimis standard
Professor Nimmer, the late scholar on copyright, took the position that all that should
be required to achieve joint author status is more than a de minimis contribution by
each author. De minimis requires that more than a word or line must be added by
one who claims to be a joint author.
Professor Nimmer distinguishes his de minimis standard from the standard for
copyrightability. As an example, Professor Nimmer asserts that if two authors
collaborate, with one contributing only uncopyrightable plot ideas and another
incorporating those ideas into a completed literary expression, the two authors should
be regarded as joint authors of the resulting work.
This position has not found support in the courts. The lack of support in all
likelihood stems from one of several weaknesses in Professor Nimmers approach.
First, Professor Nimmers test is not consistent with one of the Acts premises:
ideas and concepts standing alone should not receive protection. Because the creative
process necessarily involves the development of existing concepts into new forms,
any restriction on the free exchange of ideas stifles creativity to some extent.
Restrictions on an authors use of existing ideas in a work, such as the threat that
accepting suggestions from another party might jeopardize the authors sole
entitlement to a copyright, would hinder creativity. Second, contribution of an idea
is an exceedingly ambiguous concept. Professor Nimmer provides little guidance to
courts or parties regarding when a contribution rises to the level of joint authorship
except to state that the contribution must be more than a word or a line.
Professor Nimmers approach is of little pragmatic use in resolving actual cases.
Rarely will minor contributors have the presumption to claim authorship status. In
such easy cases, the parties intent as to authorship status likely will be apparent
without resort to any formal test evaluating the parties respective contributions to
discern intent. In the more complex situations, such as the case before us, in which
the improvisational process undoubtedly yielded valuable insights to the primary
author, the test gives no guidance on how we are to assess the respective
contributions of the parties to distinguish the author from the critic or advisor. For
these reasons, we, as the majority of the other courts, cannot accept Professor
Nimmers test as an adequate judicial tool to ascertain joint authorship.
Professor Goldsteins copyrightability test
The copyrightable subject matter test was formulated by Professor Paul Goldstein
and has been adopted, in some form, by a majority of courts that have considered the
issue. According to Professor Goldstein,
[a] collaborative contribution will not produce a joint work, and a contributor will
not obtain a co- ownership interest, unless the contribution represents original
expression that could stand on its own as the subject matter of copyright.
Furthermore, the parties must have intended to be joint authors at the time the work
was created. Professor Goldstein and the courts adopting his test justify this position
by noting that 101s and 302(b)s use of the word authors suggests that each
collaborators contribution must be a copyrightable work of authorship within the Issue: Can Aalmuhammed be considered as a co-author of Malcolm X?
meaning of 102(a).
The copyrightable subject matter test does not suffer from the same infirmities as
Professor Nimmers de minimis test. The copyrightability test advances creativity
in science and art by allowing for the unhindered exchange of ideas, and
protects authorship rights in a consistent and predictable manner. It excludes
contributions such as ideas which are not protected under the Copyright Act. 102(b)
(In no case does copyright protection for an original work of authorship extend to
any idea ... embodied in such work.). This test also enables parties to predict
whether their contributions to a work will entitle them to copyright protection as a
joint author. Compared to the uncertain exercise of divining whether a contribution is
more than de minimis, reliance on the copyrightability of an authors proposed
contribution yields relatively certain answers. See Feist Publications. The
copyrightability standard allows contributors to avoid post-contribution
disputes concerning authorship, and to protect themselves by contract if it
appears that they would not enjoy the benefits accorded to authors of joint
works under the Act.
14 - Aalmuhammed v. Lee (2000) (Malcolm X; co-authorship)
Facts:
In 1991, Warner Brothers contracted with Spike Lee and others to make the movie
Malcolm X, based on a book. Lee co-wrote the screenplay, directed, and co-
produced the movie, which starred Denzel Washington as Malcolm X. Denzel asked
Aalmuhammed to assist him in his preparations, as Aalmuhammed was a Malcolm X
expert, haing written, directed, and produced a Malcolm X documentary prior to the
movie.
Aalmuhammeds contributions include: reviewed the script, suggested revisions and
additions of entire scenes and dialogue, made sure the religious and historical aspects
of Islam were portrayed accurately, acted as a translator (they worked in Egypt and
he was the only one who knew Arabic), and edited parts of the movie.
Aalmuhammed never had a written contract with Warner Bros., Spike Lee, or
Lees production companies, but he expected to be paid for his services. He
ultimately received $25,000 from Lee and $100,000 from Denzel.
Before the movies release, Aalmuhammed asked for a writing credit as a co-
writer of the film, but was turned down. Instead, upon the films release, he was
credited only as an Islamic Technical Consultant. A few years later,
Aalmuhammed applied for a copyright with the US Copyright Office, which was
granted but with a reservation because it was in conflict with previous registrations.
After the grant of copyright registration, Aalmuhammed filed a complaint against all
involved in the movie for declaratory relief and accounting under the Copyright Act
(and other actions for breach of contract, quantum meruit, unjust enrichment, and
unfair competition). Aalmuhammed claimed that the movie was a joint work of
which he was an author, thus making him a co-owner of the copyright of the entire
movie.
Held/Ratio: NO, Aalmuhammed cannot be considered as a co-author.
The Copyright Act does not define Author, but defines joint work as 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. The statutory language
establishes that for a work to be considered joint, there must be (1) a copyrightable
work, (2) two or more authors, and (3) the authors must intend their contributions be
merged into inseparable or interdependent parts of a unitary whole. A joint work,
moreover, requires each author to make an independently copyrightable contribution
to the disputed work.
Aalmuhammed was able to establish all of the elements except that he was one of
the authors. Authorship is not the same thing as making a valuable and
copyrightable contribution. A contributor may be deemed the author of that
expression, but only for the purpose of determining whether it is independently
copyrightable or not.
The word author is taken from the traditional activity of one person sitting at a
desk with a pen and writing something for publication, which makes the application
of the term author easy for one writing a novel. Who, in the absence of contract,
can be considereed an author of a movie? The word is traditionally used to mean
the originator or the person who causes something to come into being. It can
refer to the producer (who raises the money), the editor, the director (under the
auteur theory), the screenplay writer, the star, or the cinematographer.
In Burrow-Giles, the problem of defining author in new media was tackled. It was
stated that author involves originating, making, producing, as the inventive or master
mind, the thing which is to be protected; the man who really represents, creates, or
gives effect to the idea, fancy, or imagination; he to whom anything owes its origin,
originator, maker, one who completes a work of science or literature. Author
requires more than a minimal creative or original contribution to the work. He is the
person to whom the work owes its origin and who superintended the whole work, the
master mind.
Many people might qualify as an author if the question were limited to whether
they made a substantial creative contribution that the test would not distinguish one
from another. Everyone from the producer, director, or casting director to the
costumer, hairstylist, and best boy gets listed in the movie credits because all of
their creative contributions really do matter. However, a creative contribution does
not suffice to establish authorship of the movie, as a contribution of independently
copyrightable material to a work intended to be an inseparable whole does not
suffice to establish authorship of a joint work. The Burrow-Giles definition of
author, in the absence of a contract to the contrary, would generally limit authoship
to someone at the top of the credits, sometimes the producer, director, star, or
screenwriter someone who has artistic control.
A person claiming to be an author of a joint work must prove that both parties
intended each other to be joint authors. In the absence of contract, several factors
may be considered, including who superintends the work by exercising control or
the inventive or master mind who gives effect to the idea, the objective
manifestations of shared intent to be co-authors, and the fact that the share of each in
the works success cannot be appraised. Control in many cases will be the most
important factor. The factors listed cannot be reduced to a rigid formula,
because the creative relationships to which they apply vary too much.
In this case, Aalmuhammed did not at any time have superintendence of the work;
Warner Bros. and Spike Lee controlled it. Aalmuhammed lacked control of the work,
and absence of control is strong evidence of the absence of co-authorship.
Neither Aalmuhammed, Spike Lee, nor Warner Bros. made any objective
manifestations of an intent to be co-authors (Warner Bros. required Spike Lee to sign
a work for hire agreement, so Lee is not even a co-author or co-owner with
Warner Bros.). No one, including Aalmuhammed, made any indication to anyone
prior to litigation that Aalmuhammed was intended to be a co-author and co- owner.
Aalmuhammed also did not offer any evidence that he was the inventive or master
mind of the movie. All that Aalmuhammed was able to show was that he made very
valuable contributions to the movie, which is not enough for co-authorship of a joint
work.
15 - Community for Creative Non-Violence v. Reid (1989) (sculpture, work-for-
hire)
Doctrines:
Section 101 of the Copyright Act of 1976: A work made for hire is
a. A work prepared by an employee within the scope of his or her
employment; or
b. 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,
afterwords, 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.
Facts:
The Community for Creative Non-Violence (CCNV) was a non-profit
organization that wanted to bring attention to the problem of homelessness. They
made an oral agreement with James Reid, a sculptor, to produce a statue that depicts
homeless people in a nativity set-up with specific wording on the sculpture. This
sculpture was to be displayed at a 1985 Washington D.C. Christmas Pageant. CCNV
agreed to make the base, suggested people to use as models and suggested changes
throughout the process. Upon completion, delivery, and joining of the work to the
base, CCNV paid Reid the final installment of the agreed-upon price. Neither party
raised the issue of copyright, nor did the parties put anything about it in writing.
Thereafter, the parties filed competing copyright claims over the sculptures
DISTRICT COURT: ruled in favor of CCNV (basis: under the Copyright
Act of 1976, the statue was a work made for hire
COURT OF APPEALS: reversed
Issue: Whether the work falls under the work-for-hire doctrine such that CCNV
can be deemed the author of the work for copyright purposes?
Held/Ratio: NO. There are two distinct categories of persons to whom the work-for-
hire doctrine applies: employees, or contractor for nine specific types of work, with
written acknowledgment. Nowhere in the act was the word employee defined,
therefore the court ruled that it should be understood to be the common law master-
and- servant definition. The court then looked to traditional factual determinations
about the relationship between the parties. It was found that Reid was hired as an
independent contractor, and this status was evident because he supplied his own
tools, worked in his own studio, in another city, was retained for less than two
months, decided his own work schedule, received salary that was contingent on the
sculptures completion, had sole discretion over hiring and paying assistants, and he
was not paid of any employee benefits.
With these findings, the sculpture in question is not a work made for hire within
the meaning of the act. However, CCNV nevertheless may be a joint author of the
sculpture and, thus, a co-owner of the copyright under Section 201 (a)
(The case was remanded to the District Court to determine if it is a joint work.)
16 - Aymes v. Bonelli (1992)
Facts:
Aymes was hired by Bonelli, the president and CEO of Island, to work as a
computer programmer. Island operated a chain of retail stores selling swimming
pools. Aymes is a graduate from Cornell Universitys school of engineering and
worked with Island for 1980 to 1982.
Aymes created a series of programs called CSALIB under the general
direction of Bonelli, who was not a professional programmer. CSALIB was used by
Island to maintain records of cash receipts, inventory, sales figures, merchandise
transfers, etc. There was no written agreement between Bonelli and Aymes assigning
ownership or copyright of CSALIB. Aymes contends that Bonelli made an oral
promise that CSALIB would only be used at one computer in one island office.
Aymes did most of his programming at the Island office. He worked alone
and enjoyed autonomy in creating CSALIB. This autonomy was restricted only by
Bonelli who directed and instructed Aymes on what he wanted from the program.
Remember Bonelli was not skilled to write the program himself.
Aymes was not always paid by the hour and he woked semi-regular hours. At
times, Aymes would be paid by the project and given bonuses for finishing the
project on time. Aymes never received and health or other insurance benefits
from Island. Island never paid an employers percentage of Aymess payroll
taxes and never withheld any of his salary for federal or state taxes. In fact,
Aymes was given an IRS-NONEMPLOYEE Compensation form instead of the
standard employee W-2 form.
Aymes left Island when Bonelli cut down his hours. Island owed him $14.5k
in wages. Aymes also requested payment for multi-site used of CSALIB. Bonelli
said that he would only pay him if he sign a release for his rights to CSALIB. Aymes
refused to sign.
Aymes then registered CSALIB in his own name with the US Copyright
office. Then he filed a complaint against Bonelli and Island for copyright
infringement. Trial court held that Aymes had no copyright over CSALIB because
the program was a work for hire which meant that the authorship belonged to
Island.
Issues:
1. W/N Aymes is entitled to copyright CSALIB - YES
2. W/N Aymes is considered an employee of Island NO. he is an independent
contractor.
Held/Ratio:
1. NO. Copyright ownership vests initially in the author or authors of the work.
However the Act provides that in the case of a work made for hire, the
employer or other person for whom the work was prepared is considered
the authorunless the parties have expressly agreed otherwise in a
written instrument signed by them.
A work made for hire as (1) a work prepared by an employee within the scope
of the employment OR (2) a work specially ordered or commissioned for useif
the parties expressly agree in a written instrument signed by them that the work
shall be considered a work made for hire.
2. YES. The court took into consideration Islands right to control the manner and
means by which the product is accomplished.
The trial court applied the Reid test. According to the Reid test, the factors
that are to be considered are the ff: (1) skill (2) source of the tools (3) location
of the work (4) duration of the relationship (5) whether the hiring party has the
right to assign additional projects to the hired party (6) extent of the hired
partys discretion over when and how long to work (7) method of payment (8)
hired partys role in hiring and paying assistants (9) whether the work is part of
the regular business (10) whether the hiring party in in business (11) provision
of employee benefits and (12) tax treatment of the hired party. Court ruled
that no single factor is determinative.
Application of the Reid
Court said the Reid test can be easily misapplied since it consists merely of a list
of possible considerations that may or may not be relevant in a given case. Reid
established that no one factor was dispositive, but gave no direction concerning how
the factors were to be weighed. It does not necessarily follow that because no one
factor is dispositive all factors are equally important, or in deed that all factors will
have relevance in every case. The factors should not merely be tallied but should be
weighed according to their significance in the case.
Some factors will often have little or no significance in determining whether a party
is an independent contractor or an employee. In contrast, there are some factors that
will he significant in virtually every situation. These include: (1) the hiring partys
right to control the manner and means of creation; (2) the skill required; (3) the
provision of employee benefits; (4) the tax treatment of the hired party; and (5)
whether the hiring party has the right to assign additional projects to the hired
party. These factors will almost always be relevant and should be given more weight
in the analysis, because they will usually be highly probative of the true nature of the
employment relationship.
The trial court gave each factor equal weight and simply counted the number of
factors for each side in determining that Aymes was an employee. The trial court
over-emphasized indeterminate and irrelevant factors having little or no bearing on
Aymes case.
Let us go over the factors one by one.
(1) The right to control - Bonelli and Island had the right to control the manner
in which CSALIB was created. Aymes disputed Bonellis purported skill at
programming, but even without such knowledge Bonelli was capable of
directing Aymes on CSALIBs necessary function. Aymes was not working
entirely alone. He received significant input from Bonelli. (EMPLOYEE)
(2) Level of Skill - Aymess work required far more than merely transcribing
Bonellis instructions. Rather, his programming demanded that he use skills
 developed while a graduate student at Cornell and through his experience
working at a family run company. (CONTRACTOR)
(3)
(4) Employee Benefits and Tax Treatment - The failure of Island to extend
Aymes any employment benefits or to pay any of his payroll taxes is highly
indicative that Aymes was considered an outside independent contractor by
Island. Island benefitted from treating Aymes like an independent contractor
when it came to providing Benefits and paying a percentage of his payroll
taxes. Island should NOT in one context be able to claim that Aymes was an
independent contractor and 10 years later deny this. (CONTRACTOR)
Factors C/D (Employee benefits and tax treatment) are given greater weight
because they are undisputed.
(5) Right to Assign other projects Bonelli DID assign Aymes other projects in
addition to the creation of CSALIB. However this factor carries LESS weight
than those evaluated above. (EMPLOYEE)
(6) Remaining Factors insignificant or negligible in weight. (but lets still
discuss cause the court discussed)
a. Method of Payment indeterminate because there is evidence to
support both sides. Sometimes Aymes was paid by the hour and at other
times he was paid a flat fee. (EMPLOYEE)
b. Whether the work is Islands regular business Island swimming is
in the business of selling swimming pools BUT Aymes programming
was not done in the companys regular business (CONTRACTOR)
c. Whether Island is in business indicates nothing about Aymess
status
d. The discretion over when and how long to work balanced for both
parties
e. Duration of the relationship Even though Aymes worked for Island
for 2 years, Aymes did occasional work for others at the same time.
f. Location of the work Aymed worked at Island but only so that he
could use the computer
g. Source of the equipment programming by necessity had to be
performed on Islands machines
h. Authority to hire assistants Aymes did not need assistants.
Examining the factors:
Island directed the creation of the program
Aymes Skill, tax and benefit factors (AYMES WIN)
On balance, application of the Reid test requires that we find Aymes to be an
independent contractor when he was creating CSALIB for Island. Consequently, we
hold that CSALIB is not a work for hire. Aymes therefore owns the copyright as
author of the program.
Case remanded to the trial court for further proceedings to determine if there was
infringement.
17 - Roeslin v. District of Columbia (1995)
Facts:
D.O.E.S. is responsible for collecting and tabulating employment statistics
for the District of Columbia and the D.C. metropolitan area. It collects the statistics
by mailing the Current Employment Service (CES) survey to area employers, and
tabulating their responses. DOES transmits these statistics and estimates based
thereon to the Federal Bureau of Labor Statistics (BLS) for its use in computing
national labor statistics. Employees manually collected the information from returned
CES surveys and recorded the information on office record cards. A data processing
staff would enter this data into the mainframe system. The estimates derived from
this data were computed manually with the aid of a computer.
Roeslin is a Labor Economist for DOES and was tasked to improve
employer response rate to the CES survey, to expand the CES sample size and to
develop industry and occupational employment projections. At the time plaintiff was
hired, he had no computer programming skills. However, after attending a CES
conference Roeslin was motivated to create the DC-790 system. Upon returning from
the conference, plaintiff informed his supervisor, Mr. Groner, that he believed a PC
based system could be created for the Districts CES surveys but was told by the
supervisor that it was neither feasible nor desirable and not to pursue the idea. And
thus plaintiff was now motivated to create the program to prove that it could be done
and to develop job opportunities for himself. He worked on creating the program at
home (bought own PC and books about computer programming) spending around
30,000 hours on it and the testing and debugging of the modules were made in the
office using actual data. Once each module worked properly, he incorporated the
modules into the PC system operating at DOES. Shortly after the DC-790 system
became operational, workers ceased using office record cards. He also created an
operating manual for the DC-790 system in response to a request by an employee of
the BLS Regional Office. Relying on Mr. Groners statement that the program would
be in the public domain, which he took to mean that the system would not be
owned by anybody, he did not assert any proprietary interest. But after learning that
the District is asserting proprietary interest, plaintiff filed for copyright registration
and placed copyright notice on the initial screen of the program.
Issue: Whether Roeslin is the author of the DC 790 system
Held/Ratio: YES. Districts contention that the system was created under a work
made for hire, must fail. In the work made for hire, the owner of the copyright is the
entity for whom the work was prepared. The copyright statute defines a work made
for hire as a work prepared by an employee within the scope of his or her
employment. Because plaintiff has received a copyright registration for the DC-790
system, the presumption is that plaintiff owns the copyright. Furthermore, the
Supreme Court has held that to determine whether an individual was an employee,
and whether he created a work within the scope of his employment, courts should
look to the general common law of agency: Conduct of a servant is within the scope
of employment if, but only if: (a) it is within the kind he is employed to perform; (b)
it occurs substantially within the authorized time and space limits; and (c) it is
actuated, at least in part, by a purpose to serve the master. The court held that the
creation of the system was not a work created for hire since developing the computer
software is not the kind of work plaintiff was employed to perform. Plaintiff was
hired as a labor economist, not as a computer programmer To be sure, work that is
incidental to the conduct authorized by the employer, even if it is not central to the
employees job duties, also falls within the scope of employment. The Court finds
that while developing the DC-790 system did help the functioning of the work place,
it was not the type of activity in which plaintiff would be reasonable expected to
engage. The court also discussed whether the development of the system occurred
substantially within the authorized time and space limits. The Court finds that it did
not because he spent 3,000 hours outside of normal working hours creating the
modules of the DC-790 system. And lastly, the program was created for two
reasons: (1) to create job opportunities for himself, and (2) to prove it could be done.
Furthermore, the court held that the District infringed his copyright. The placement
of a copyrighted program into a computer, or the loading of a copyrighted program
into a computer (which occurs every time an employee uses the program), constitutes
copying the program for purposes of the Copyright Act. Thus, every time a DOES
employee used the DC-790 system, which the employees did up until January, 1993,
the District infringed plaintiffs copyright.