You are on page 1of 22

October 12, 2018

Prof. Richard L. Revesz, Director, ALI


Ms. Stephanie Middleton, Deputy Director, ALI
Profs. Christopher Jon Sprigman, Lydia Pallas Loren, R. Anthony Reese, & Molly S. Van
Houweling, Reporters of ALI Restatement of the Law, Copyright
Members of the ALI Council
The American Law Institute
4025 Chestnut Street
Philadelphia, PA 19104

Re: Music Community Comments on the Council Draft No. 2 (August 17, 2018) of the
Restatement of Law, Copyright,

Dear Prof. Revesz, Ms. Middleton, Reporters, and Members of the ALI Council,

We write to you in our roles as Advisors and as representatives of the National Music Publishers
Association (NMPA) and the Recording Industry Association of America (RIAA). The music
industry stakeholders represented by NMPA and RIAA include songwriters, recording artists,
music publishers, record labels, and a vast array of other individuals and companies working in
the music business.

Music creators in the United States have relied on copyright law to bring music to the world for
more than a century. Yet in recent years copyright law for music has faced repeated tests and
challenges, including for those who legislate and interpret the law, in large part due to the
transformation of the music industry from physical to digital. Important copyright law issues for
music are before Congress, the courts and agencies. 1 Copyright law for music is often at the
forefront of controversial debates over the scope of copyright, and many of the Reporters are
directly involved pressing for adoption of their views. 2 Under these circumstances, attempting to
“restate” copyright law for music now is a difficult, if not an odd, exercise.

1
Consider, for example, the following: new legislation, the Music Modernization Act, signed into law yesterday, will
alter the landscape in several important ways; significant cases regarding fundamental principles of copying that are
pending in court, including Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018) and Skidmore v. Led Zeppelin, 2018 U.S.
App. LEXIS 27680 (9th Cir. 2018); and a pending Copyright Office report on the DMCA – years in the making – will
be issued next year.
2
Several musical composition stakeholders submitted a letter to ALI in January, 2018 noting questions of potential
conflicts of interest with lead reporter, Prof. Sprigman, and have not received a substantive response from ALI. In

1
That said, we have many thoughts that are important to convey in advance of the ALI Council vote
on the Council Draft No. 2 of the Restatement of Law, Copyright dated August 17, 2018 (Council
Draft No. 2), at its next meeting on October 18-19, 2018. We set forth below comments on the
issues in Council Draft No. 2, followed by additional concerns with sections of this project that
are not before the Council at this time. These comments, on behalf of a significant copyright
industry, and comments filed by other advisors, counsel in favor of delaying the vote until
appropriate corrections are made and broader issues are fully considered.

A. COMMENTS ON COUNCIL DRAFT NO. 2

1. General Problems with Council Draft No. 2.

Bias still exists in Council Draft No. 2. While the Reporters removed the unnecessary and
misleading references to “monopoly” in Section 2.01,3 Council Draft No. 2 continues to exhibit
a nuanced, and at times even an overt, bias in favor of a narrow, limited view of copyright that
does not reflect the state of copyright law. 4 These sections should be revised to eliminate such
inaccuracy before the Council votes or the Council should vote no. We further encourage the
Council and Reporters to continue to review and revise all sections of the Restatement with an
eye toward reducing such bias in the explanation of the law. Ensuring there is a neutral,
accurate explanation of the law will help judges, clerks, attorneys, and academics, as well as
those owning and using musical works and sound recordings, to better understand the rights,
restrictions and limitations that implicate creation and use of those works. If that is not
possible, this project should be abandoned.

Partial Use of Statutory Language Creates Confusion or Misinterpretation; Instead, The


Reporters Should Reconsider Including the Text of the Full Statutory Language Prior to the
Black Letter. We are discouraged that the ALI and the Reporters did not fully adopt the
recommendations of Professors Balganesh et al5 to include the full, relevant statutory language
from copyright law at the beginning of each section. Instead, the draft cherry picks only
selected portions of the statute in the proposed black letter. For example, in Section 1.02, the
proposed black letter quotes parts of 17 USC §102 that uses the term “including” but then fails
to use in the proposed black letter the statutory definition of the term “including” set forth in
17 USC §101.6 Furthermore, and as noted in more detail below, the Reporters’ adopted

addition, while we do not address any additional specific claims of conflict of interest here, we remain very concerned
about the apparent adoption of an approach by the ALI that results in the ALI applying its own conflict of interest
rules very narrowly and selectively. We hope the ALI recognizes that buy-in from the copyright community is
dependent on the perception that the Reporters are working on behalf of the entire legal community as a whole, and
not on behalf of any client or constituency. The objectivity of the Reporters is possibly the most important factor
informing the entire copyright community that the Restatement is, in fact, a product of dispassionate and bias free
deliberations.
3
See Council Draft 2, p. 41-49.
4
See, e.g., our comments below to Sections 1.01, 1.02, 2.01, and 2.07 of Council Draft 2.
5
See Letter from Shyamkrishna Balganesh et. al to ALI Council Members (Jan. 11, 2018); See also follow up letter
from Shyramkrishna Balganesh et. al to ALI Council Members (Oct. 8, 2018).
6
See Council Draft 2, p6, lines 1-8.

2
practice of only providing portions of the statute creates further confusion and potential bias,
rather than clarity, by omitting important language from the statute in the black letter. As the
Acting Register of Copyrights previously warned, this has created a “pseudo-version of the
Copyright Act that does not mirror the law precisely as Congress intended. 7” Indeed, recently
both the United States Patent and Trademark Office 8 and the American Bar Association
Section of Intellectual Property Law 9 have expressed similar concerns with the failure to use
the full statutory text in the Restatement, and with the utility of this Restatement in its entirety.

Expected Changes in Law this Year and Anticipated Supreme Court and Appeals Court
Decisions May Make Several Portions of the Council Draft Incorrect or Misleading if Voted
Upon at this Time.

Music Modernization Act/Classics Act. As part of the Music Modernization Act (MMA),10
Congress also passed the Classics Act, which expands and fundamentally changes the
relationship and division between state and federal protection for pre-1972 recordings. Given
this, the statements in the draft regarding pre-1972 recordings being subject solely to state law,
including those in Sections 1.01 and 1.02,11 are outdated and inapt. For this reason alone, the
vote on the Council Draft No. 2 should be postponed at least until the Reporters assess the
critical impact of the MMA and revise the Restatement accordingly. 12

Active Cases that Could Impact Restatement. We understand Google has announced it will
seek certiorari in the Oracle v. Google case to the U.S. Supreme Court. If the Supreme Court
takes the case, it is likely that the scenes a faire discussion in Section 2.07 will need to be
revised to reflect the Supreme Court’s ultimate decision. Given this, Council Draft No. 2
should not be voted on until it is either clear that the Supreme Court will or will not take the
case (in addition to incorporating the other comments to Section 2.07 described below). It
would be improper for Council Draft No. 2 to be made public before then and for it to affect,
one way or another, the determination of this case, given the concerns raised about this section
in our comments below.

7
See Letter from the Acting Registrar to the U.S. Copyright Office to Prof. Levi (Jan. 16, 2018)
8
See Letter from the Director of the U.S. Patent and Trademark Office to Prof. Revesz et al (Oct. 1, 2018)
9
See Letter from the Chair, ABA Section of Intellectual Property Law to Prof. Levi et al (Oct. 3, 2018)
10
See H.R. 1551, signed into law yesterday.
11
See Council Draft 2, p4, lines 23-25; p13, line 30 – p14, line 4.
12
In addition to the MMA and other copyright legislation passed this year, Congress and the Copyright Office are
considering numerous copyright reform initiatives that would, if any were adopted, require significant revision to the
Restatement. For example, Congress is now considering legislation to create a Copyright Small Claims Court and a
terrestrial radio right for sound recordings. The Copyright Office has been studying and is expected to issue shortly
reports with its recommendations about reformation of the Digital Millennium Copyright Act, enactment of an Orphan
Works bill, and guidance on adopting more overt Moral Rights in the United States. And relating to music, the
Department of Justice is considering reformation or elimination of the consent decrees governing ASCAP and BMI.
All of this serious consideration for copyright reform makes a compelling argument in favor of ceasing or postponing
the entire Copyright Restatement project until the law is more settled. And certainly, the ALI does not want the
Restatement process itself to become part of the political copyright reform battleground, but it certainly will if it opines
on issues earmarked for change by Congress and/or the Copyright Office.

3
We also note recent cases have called into question the proper treatment of the scenes a faire
doctrine to music13 and the proper analysis to determine what parts of a piece of music’s
selection and arrangement are copyrightable.14 These cases suggest that the law on these
issues, at least with respect to music, is not at a sufficiently normative state for a Restatement
to be warranted at this time.

Council Draft No. 2 fails to address the ongoing debate inherent in all copyright legislative
reform and judicial decisions concerning the underpinnings of copyright. In legislative
discussions and in the courts, there has been an ongoing philosophical debate about the
foundational underpinnings of copyright. Does copyright law embody an inherent property
or natural right, per James Madison in Federalist 43 and in the Universal Declaration of Human
Rights, or is it simply a legislative grant designed to incentivize productive activity? The
answer is not merely academic or philosophical – it is one of Constitutional interpretation.
Adoption of the utilitarian view is generally accompanied by calls for limiting the scope of
copyright, while adoption of the property or natural rights view calls for a more balanced
approach. Council Draft 2 appears to take the utilitarian view that copyright as a legislative
burden to incentivize productive activity, without any discussion of alternative points of view.
That this work product focuses much more on what is not copyrightable rather than what is
copyrightable is evidence of adoption of a more legislative grant approach of the Reporters.
This fuels the concerns that the work product is biased. At minimum, the draft should address
this debate, and discuss the opposing view, to provide greater understanding to the courts. The
Reporters must address this omission before the project proceeds.

Furthermore, the Reporters consistently rationalize their approach to copyright by claiming it


comports with the constitutional mandate that copyright law must “promote progress.” They
pose this view without providing any definition of “progress” or full references to various
Supreme Court decisions that have addressed the issue in the past.15 One can surmise, without
more evidence provided by the Reporters, that they view “progress” as requiring limitations
on the scope of copyright protections and greater access by users. There is just as strong an
argument that, in fact, “progress” equates with providing greater incentive to authors to create
by providing greater and more effective protection for their works for limited times. The
failure of the Reporters to provide historical background on the point, along with an even-
handed description of the constitutional views and counter-views, is intellectually
disingenuous.16 A reader of the Restatement will not know the context of the use of the term
“progress” without even-handed historical analysis and commentary.

Council Draft No. 2 Exhibits Questionable Selection of Illustrations. Council Draft 2


occasionally relies on either quite old district court cases or quite new, novel or controversial
cases (or no cases at all) for the illustrations. In the case of the former, the cases for illustrations

13
See Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018).
14
See Skidmore v. Led Zeppelin, 2018 U.S. App. LEXIS 27680 (9th Cir. 2018).
15
See also our comments to Section 2.01 below on this issue.
16
Unfortunately, this failure to clearly explain competing perspectives in the draft is not an isolated incident. Other
commenters have noted the Reporters’ failure to clearly explain competing perspectives and reasoning behind those
perspectives in other, more detailed aspects of copyright law. See, e.g., Letter from the Chair, ABA Section of
Intellectual Property Law to Prof. Levy (Oct. 3, 2018). See also, our comments on Section 2.07 re: the debate on
scenes a faire.

4
2, 3, and 4 in Section 1.02 are all district court cases, the newest of which was decided over 50
years ago. Where appropriate it would be better to rely on appellate court cases for settled
areas of the law for illustrations, rather than older, district court cases. Where, on the other
hand, Council Draft 2 relies on new appellate cases concerning areas that are either novel,
controversial or outliers in copyright law, such as in illustration 4 of Section 1.07, or no cases
or statutory language addressing the issue whatsoever, such as in illustration 6 of Section 1.07,
the Council should consider whether it appropriate to include the illustration, or even the
concept the in a Restatement at all.

2. Selected Sections of Chapter 1.

a. Section 1.01 – Basic Requirements for Copyright Protection.

Black letter should use “subsist” as that term expresses the general rule as to when
copyright attaches to a work, and not use the pre-conditional approach advocated for by
the Reporters.17 The draft continues to use the phrase “to qualify for copyright protection,
a work must” in the black letter, rather than using the statutory language that “copyright
protection subsists, in accordance with this title, in original works of authorship. . .” as set
forth in 17 USC §1.02(a). This effectively turns an automatic operation into a condition
precedent, which was not the intent of Congress. Several commenters have repeatedly
suggested this change, yet the Reporters refuse to use the language of the statute.

The Reporters justify their use of the pre-conditional phrase “to qualify . . . a work must”
rather than the automatic phrase “copyright protection subsists” by arguing that works may
have “expired,” been “dedicated” to the public domain, or failed to “comply with
formalities” if those works were created during the period where such formalities are
required (i.e. prior to 1978, over 40 years ago). The fact that perpetual protection is not
guaranteed does not justify the fundamental shift away from the rule copyright subsists
when the original work of authorship is fixed in a tangible medium. In short, using the end
of copyright term as the basis for when and how copyright protection begins is false logic.18

For these reasons, the introduction to 1.01(a) of the proposed black letter should use the
statutory language “copyright protection subsists” and the rest of Section 1.01(a) should be
modified as appropriate to be consistent with this concept.19

17
See Council Draft 2, p1, lines 1-16.
18
Moreover, for works created in the last 40 years, no formalities have been required for copyright protection to attach
the work if the other elements are satisfied. While there are certainly older works that continue to have significant
value (such as music from the 1950s through the mid-1970s), many of the works of commercial value today have been
created in the last 40 years where no formalities are required, including the music created after January 1, 1978. The
fact that some significantly older works require formalities should not be used to justify a change to the rule that
protects a large swath of commercially valuable works today. Please also see the Comments from the Copyright
Alliance (October 9, 2018) on the lack of evidence that the term “subsists” is misleading.
19
This includes using the full description from the statute on the fixation component and not merely referencing
Section 1.05 of the restatement, which incorrectly describes the fixation requirement. Please see our comments to
Section 1.05 in Attachment A and the Letter from the Chair, ABA Section of Intellectual Property Law to Prof. Levi
(Oct. 3, 2018).

5
Items in 1.01(a)(4)-(5) should be excluded from the proposed black letter as these also
relate to limited exceptions to the general rule, and not basic concepts of when copyright
attaches generally. Instead, they could be addressed as an exception in a new 1.01(d) that
clarifies that copyright does not subsist in works of the US government, edicts of law, etc.

Comment a20 should be scrapped entirely or modified to express the general rule that, per
the statute, copyright protection subsists at the moment of creation, provided that the basic
provisions for copyright to exist are present – i.e., that it is an original work of authorship
fixed in a tangible medium of expression. Comment c21 should also be revised to follow
the general rule described above.

Scope of Copyright Should Be Covered in Section 2, Not Section 1. In addition, we would


consider deleting the second paragraph of comment c22 in its entirety as it addresses issues
concerning the scope of copyright, not whether it exists in general, and those subjects are
more fully covered in Chapter 2. Comment f already notes that questions regarding the
scope of copyright protection are covered in Chapter 2. That should be sufficient.

Pre-72 Sound Recordings. Please see the general comment above regarding the need to
change references to how pre-72 sound recordings in the Reporters’ Notes23 are protected
in light of the Classics Act.

b. Section 1.02 Types of Works Protected.

The Black Letter and Accompanying Comments and Reporters Notes Should Be
Modified to Follow the General Rule that the Enumerated Categories of Works are
Illustrative, not Limiting. Section 1.02(b) should be excluded from the proposed black
letter as it is not expressly listed in the category of works in the statute. Also, the proposed
black letter should have an item (b) stating that the enumerated list of categories of works
is not exhaustive and that the statute provides that the “terms ‘including’ and ‘such as’ are
illustrative and not meant to be limiting.24 This is a more faithful rendition of the statutory
rule about the categories listed25 and does not highlight one form of a modern work –
computer programs – over any other form of a modern work.

Rather than expressly listing computer programs as a category of work in the black letter,
we would include in the comments that computer programs do qualify for protection
generally and have been considered to qualify as literary works.26

The comments generally, and specifically comments a, b, m, o and p,27 should be revised
to acknowledge the general rule noted above that the category of works enumerated is

20
See Council Draft 2, p1, line 20 – p2, line 12.
21
See Council Draft 2, p2, line 17 – p3, line 9.
22
See Council Draft 2, p2, line 27 – p3, line 9.
23
See Council Draft 2, p4, lines 23-25.
24
See Council Draft 2, p6, lines 1-8.
25
See also, Comments from Judge McKeown (Oct. 5,2018) addressing this concern.
26
See Council Draft 2, p6, lines 7-8.
27
See Council Draft 2, p6, lines 11-27; p6, line 28 – p7, line 9; p15, line 28 – p17, line 2, and p17, lines 8-15.

6
meant to be illustrative and not limiting. We appreciate that courts have often tried to shoe-
horn works that are worthy of protection into the enumerated classes of works, but this is
not a sufficient rationale to argue against the general rule, as the comments do in comment
a, b, m, and o. The comments should clarify that a work is not automatically disqualified
from protection if it doesn’t clearly fit within an enumerated category, as that is not what
the statute says, and it is not a correct interpretation of the law. The statements in the
comments that the “statutory identification of categories of works of authorship determine
which types of ‘Writings’ are and are not eligible for copyright protection under the current
statute,”28 “a contribution must itself qualify as a work of authorship within copyrights
subject matter categories,”29 and that “a derivative work or compilation must come within
at least one of the categories of ‘works of authorship’ ”30 are simply a false and unduly
restrictive description of the law.

Comment m Mischaracterizes Policy Reasons for Excluding the Noted Classes of Works
from Protection. Comment m31 suggests that sports games are excluded from protection
because they are not within an enumerated category of works of authorship. That is not
accurate; rather, sports games are excluded from protection because of policy reasons not
wanting to foreclose or limit styles or methods of game play that might be included in the
game, and that such games are often not “authored” in the traditional sense. The case cited
in the Reporters’ notes,32 National Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 846
(2d Cir. 1997), acknowledges that sports games per se are not within the categories, but
then goes on to identify the policy justifications noted above for the exclusion of sports
games from copyright, and not the fact that sports games are not an enumerated category.

Music-Specific Areas Should be Further Clarified.

Comment d on musical works suggests there is ambiguity concerning what is a musical


work. If courts have identified an ambiguity, the Restatement should identify it.
Otherwise, this comment should be clarified to avoid misinterpretation.

Comment i33 on sound recordings notes that sounds accompanying a motion picture or
other audiovisual work are excluded from sound recordings. In order to clarify this, it
should be noted that an existing sound recording that is incorporated into the soundtrack
of a motion picture does not, because of that incorporation, cease to be a sound recording.
This principle is noncontroversial, although its application is not always straightforward.
For example, while the sounds in a motion picture are elements of the motion picture, if
the sounds are released as a stand-alone soundtrack album, they should be viewed as a
sound recording.

28
See Council Draft 2, p7, lines 4-6.
29
See Council Draft 2, p17, lines 9-10.
30
See Council Draft 2, p17, lines 29-30.
31
See Council Draft 2, p15, line28 – p17, line 2.
32
See Council Draft 2, p19, lines 16-36.
33
See Council Draft 2, p13, line 24 – p14, line 4.

7
It would be helpful to explain that use of a pre-existing sound recording in a motion picture
requires the user to obtain a master use license (or an appropriate defense to an
infringement action). Similarly, it would be helpful to provide clear commentary regarding
the need to secure synchronization licenses for pre-existing musical works used in a motion
picture or other audiovisual production. For original musical works (e.g., a movie
soundtrack score), rights to use a new score must still be secured through a contractual
arrangement, which in most instances is structured as a work made for hire arrangement.

Comment i also states that the “current” statute offers certain other protections for unfixed
live musical performances (under the anti-bootlegging statute). The use of the word
“current” is unwarranted as it suggests that the statute is under review, which it is not. We
understand that the Restatement purports to restate the current statute, and this reference to
the anti-bootlegging statute is not part of any effort to draw a juxtaposition to earlier
versions of the Copyright Act. Given this, there is no need to refer to the “current” statute
for purposes of exposition.

To better explain the interplay between musical works and sound recordings, it would be
useful in comment j34 to include the concept that in order for a third party to commercially
exploit a sound recording that is based on a musical work, the user must have licenses to
use both the sound recording and the underlying musical work. For example, in the case
of sales of sound recordings, rights to the underlying musical work must be secured from
the musical work copyright owner, even if secured through a Section 115 compulsory
license.

Illustration 1335 should clarify that the fixation of the sound recording is also another
fixation of the musical work, as the initial notation of the musical work is presumably the
initial fixation of that work.

Please also see the comment above regarding the need to change references to how pre-72
sound recordings are protected in light of the Classics Act.

c. Section 1.06 Originality; in General.

Description of “Originality” Should Conform to the Traditional Contours of this


Doctrine. The comments to Section 1.0636 seem to suggest a higher requirement for
originality than what has been required by the Supreme Court. As Judge McKeown has
noted, the cleanest description of originality from Feist simply states that “Original, as the
term is used in copyright, means only that the work was independently created by the author
(as opposed to copied from other works) and that it possesses at least some minimal degree
of creativity.”37 Given this, the description in the second paragraph of comment a38 is

34
See Council Draft 2, p14, lines 5-22.
35
See Council Draft 2, p14, lines 13-18.
36
See Council Draft 2, p22, line 11 – p24, line 8.
37
See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).
38
See Council Draft 2, p22, lines 14-23.

8
confusing, appears to require something more than what is necessary for originality, and
mixes in the idea/expression dichotomy, which is appropriately covered elsewhere in the
Restatement. The second paragraph of comment a should be deleted.

In comment c,39 the draft attempts to describe how the originality requirement applies to
works that copy to some extent from pre-existing works. In the first sentence, the comment
should clearly state that a work that copies from preexisting works “does” satisfy, not “can”
satisfy the originality requirement so long as the it includes original contribution from the
new works author that is independently created and minimally creative.

In the discussion in comment c about derivative works,40 the description of what is a


derivative work should be deleted, as this is not a fulsome definition of a derivative work.
It excludes several examples and description included in the statutory definition, which
provide clarification. Alternatively, the full definition of derivative work should be
included here. The same is true for the description used here for collective works. 41 Either
it should be excluded from the text or the statutory definition should be included here. This
is another example where failure to use the full statutory language reduces clarity.

This Section Inappropriately Mixes the Idea/Expression Dichotomy with the Originality
Standard. In this section, as well as Section 1.07 and 1.08, the draft uses the term
“expression” rather than “work.”42 Although we appreciate the need to be mindful of the
expression/idea dichotomy, in these sections the use of the term “expression” appears
strained, adds complexity to a test that isn’t required in order to properly apply it, and is
not compliant with the standard language of the Supreme Court and the statutory text of
“work.” Simply put, the expression/idea dichotomy is a separate test that goes to the scope
of copyright protection, not whether the work meets the certain aspects of the originality
standard. In discussing originality in both the proposed black letter and the comments, use
of the term “work” instead of “expression” would be more faithful to copyright law.

d. Section 1.07- Originality; Independent Creation.

This Section Inappropriately Mixes the Idea/Expression Dichotomy with Independent


Creation Standard. Again, the use of the term “expression” in the proposed black letter
and comments,43 where “work” is typically used in the statute or copyright law generally,
adds confusion, not clarity. The point of independent creation is that at least some portion
of the work is the creation of the author and not copied from another source. There is no
requirement that one identify what is “expression” in the work first before determining
whether the work was wholly copied from another work or not.

39
See Council Draft 2, p23, lines 1-10.
40
See Council Draft 2, p23, lines 5-9.
41
See Council Draft 2, p23, lines 17-21.
42
See Council Draft 2, p22, lines 2-8, and p22, line 14 – p23, line 22.
43
See Council Draft 2, p25, line 1 – p27, line 13.

9
This Section Creates Ambiguity by Mixing Concepts of Creativity with Independent
Creation.44 The draft also mixes the concept of creativity with independent creation in this
section, suggesting that something more than not copying from someone else’s work is
required to satisfy the independent creation element. Although this point is made to some
extent in comment b,45 Section 1.07, when the proposed black letter and comments are read
as a whole, suggests that there is a creativity requirement to the independent creation
component of originality, which is not accurate. The concept of creativity is covered in
the “minimum creativity” prong of the originality test, not the independent creation prong.
The proposed black letter and the comments in this section should be revised accordingly.

e. Section 1.08 - Originality; Minimum Creativity Requirement. 46

The minimum creativity principle, as set forth in Feist, is whether the “work expresses at
least some modicum of originality.” The Reporters’ efforts to clarify this are useful to the
extent they identify that this standard has been interpreted to mean that the work must be
at least minimally creative. However, introducing “expression” in the proposed black
letter, as the draft does, adds confusion rather than clarity, and seems somewhat circular.
In addition, as noted by Judge McKeown and Copyright Alliance, the Reporters may want
to reconsider section c of the black letter and comment c in light of Experian Information
Solutions v. Nationwide Marketing Services, Inc. 883 F.3d 1176 (9th Cir. 2018).

3. Selected Sections of Chapter 2.

a. Section 2.01 – Copyright Protects Expression but Not Ideas or Other Excluded
Elements

The Proposed Black Letter Mischaracterizes the General Rule by Using Language Not
in the Statute that Expresses Undue Limitations on the Scope of Protection Afforded. As
drafted, the proposed black letter in Section 2.01(a)47 is misleading in how to consider the
standard for what is protected. The black letter should clearly state that copyright
protection subsists in the work, including both its literal and non-literal elements of
expression, but does not extend to the areas noted in Section 2.01(b). Please see our
comments to Section 1.01 for further discussion of why “subsist” is the proper term to use
in discussing the basic protection.

Section 2.01(a) is presumably intended to explain the broad scope of what is covered by
copyright in the initial instance (subject to the limits in Section 2.01(b)). To capture that
broad coverage, Section 2.01(a) should use language that expresses it (i.e., subsists or
protects, etc.). The black letter should not suggest, as the current draft does, that the
protection is unduly limited in the first instance by saying it only “extends to” certain
elements of the work. Rather, it should clarify that protection applies to the work as a
whole (i.e. exact copying of the work) and possibly also various elements of the work.

44
See Council Draft 2, p25, line 1- p26, line 6.
45
See Council Draft 2, p25, lines 16-20.
46
See Council Draft 2, p30, line 1 – p37, line 2.
47
See Council Draft 2, p41, lines 2-4.

10
In addition, the formulation we suggest (i.e., using “subsist” language) tracks the language
of the statute, which in 17 USC §102(a) states that “copyright protection subsists, in
accordance with [the statute], in original works of authorship fixed in a tangible medium
of expression” and does not use the limiting “extends to” language in discussing the basic
protection afforded. Instead, the term “extend to” should be properly limited to the
description of the exceptions and limitations, such as its use in Section 2.01(b) of the
proposed black letter and its use in 17 USC §102(b) to clarify that that the protection does
not “extend to” any idea, procedure, process, etc.

The Reporters’ suggested approach inappropriately limits in the first instance what is
covered by copyright protection before one even starts considering the generally accepted
limitations and exceptions.

The Proposed Black Letter Inappropriately Places Affirmative Defenses into the Realm
of what is Copyrightable in the First Instance. Section 2.01(c)-(d),48 which discusses
merger and scenes a faire, should be excluded in their entirety from the black letter on the
scope of copyright protection, as the doctrines of merger and scenes a faire are more
properly characterized as defenses to claims of infringement, and not to the question of
copyrightability in the first instance. We recognize that there is a split among the circuits,
and some courts describe scenes a faire in terms of a question of copyrightability.
However, the proper and majority view is to treat the doctrine as an affirmative defense.
Please see Judge McKeown’s excellent comments from November 2016 on why the
merger and scenes a faire doctrines are improper for considerations of copyrightability in
the first instance and are better construed as defenses in an infringement analysis.

If it is important to note merger and scenes a faire in this section, it should do so only as
set forth in comment d,49 and not in the black letter. In addition, for the same reasons,
comment i50 should be removed in its entirety from this section.

Google v. Oracle Case May Impact this Area and May Make any Vote on this Section
Premature. As noted above, a possible upcoming Supreme Court decision on Google v.
Oracle may provide further guidance on how to treat the scenes a faire doctrine, as might
the other music related cases cited above. Given this, it is premature to vote on this Section
until it is clear whether Google will file for cert and, if it does, whether the Supreme Court
will accept or deny cert.

Further Clarifications are Needed to the Comments to this Section to Avoid


Mischaracterization, Inaccuracies, and Bias. In comment a,51 the draft should clarify that
the basic rule is that a work’s expression, including literal and non-literal expression, are
presumed to be protected by copyright. It should also clarify here and elsewhere that even
though ideas, facts, etc. are not copyrightable, the expression of those ideas, facts, etc. may

48
See Council Draft 2, p41, lines 12-15.
49
See Council Draft 2, p44, lines 7-15.
50
See Council Draft 2, p45, line 25 – p46, line 3.
51
See Council Draft 2, p41, line 22 – p42, line 15.

11
be. The concept used throughout that it “can be protected” again suggests that there are
multiple hurdles to jump before protection attaches, which is not the general rule.

The first paragraph of comment b52 should be limited to the first two sentences. The
remainder of that paragraph introduces unnecessary ambiguity and uncertainty into what
other undescribed elements are also excluded from basic copyrightability. This vague
description of more unprotectible elements detracts from the main principles of the
idea/expression dichotomy.

Similarly, the second sentence of the second paragraph of comment b53 should be clarified
to state that Congress made clear that it was adopting the longstanding judicial approach
to the “idea/expression dichotomy” rather than adopting the approach to distinguish
between vague, undefined concepts of “protected and unprotected elements.” As shown
in the quote from the House Report following this sentence in comment b, what Congress
intended was to “restate . . . that the basic dichotomy between expression remained
unchanged,” not to expand what was unprotectible. This mischaracterization of
Congressional intent should be corrected.

In comment c,54 the second full paragraph should be deleted. The first paragraph already
adequately explains how the idea/expression dichotomy is important to permit subsequent
expression and use of ideas to promote the progress of science and art.

The third paragraph of comment c55 mischaracterizes the policy foundations for the idea/
expression dichotomy enshrined in Harper & Row Publishers by omitting key aspects of
that foundation. The full quote form Harper & Row Publishers states:

In our haste to disseminate news, it should not be forgotten that the Framers
intended copyright itself to be the engine of free expression. By establishing a
marketable right to the use of one's expression, copyright supplies the economic
incentive to create and disseminate ideas. This Court stated in Mazer v. Stein, 347
U.S. 201, 209 (1954):

"The economic philosophy behind the clause empowering Congress to grant


patents and copyrights is the conviction that encouragement of individual
effort by personal gain is the best way to advance public welfare through
the talents of authors and inventors in 'Science and useful Arts.'"

And again, in Twentieth Century Music Corp. v. Aiken:

52
See Council Draft 2, p42, lines 16-24.
53
See Council Draft 2, p42, line 29 – p43, line 2.
54
See Council Draft 2, p43, lines 3-26.
55
See Council Draft 2, p43, line 27 – p44, line 6.

12
"The immediate effect of our copyright law is to secure a fair return for an
'author's' creative labor. But the ultimate aim is, by this incentive, to
stimulate [the creation of useful works] for the general public good."56

This concept – that by “establishing a marketable right to the use of one’s expression,
copyright supplies the economic incentive to create and disseminate ideas” – is
fundamental to the idea/expression dichotomy. It should be fully addressed in the
comments to Section 2.01 on the foundations of the idea/expression dichotomy, and why
expression is protected. It should not be merely used, and this section should not merely
address, the idea prong of the idea/expression dichotomy.

Comments f and g57 should be collapsed into one comment that clarifies though the
author’s particular expression of the idea is protected, the idea itself is not, regardless of
whether the idea is first expressed by the author or the form in which the idea is expressed.
This provides a more neutral explanation of the idea/expression dichotomy in this general
section and does not bury in the text of the comment that the expression itself remains
protectable, though the idea is not.

b. Section 2.02 – Copyright Protects Expression.

Vote is Premature as This Is the First Version of this New Section Provided to the
Advisors for Review.58 We appreciate that the Reporters have recognized (after three prior
preliminary drafts and one prior council draft) that the Restatement should include a
positive section on what is copyrightable, and not only discuss in Section 2 what is outside
the scope of copyright. However, to our knowledge, this is the first time this section (as a
new section that discusses what is copyrightable versus what is not copyrightable) has been
provided to the Advisors for review. For this reason alone, any vote should be delayed so
as to give the Reporters and Advisors adequate time to comment, reflect on the comments,
and revise the section to make a better work product.

The Standard Used to Describe What Is Covered (and by Implication Not Covered) Is
Misleading and Doesn’t Follow the Doctrine Laid Out in the Statute. As drafted, the
proposed black letter in Section 2.02 59 is confusing and misleading in how to consider the
standard for what is protected. The black letter should clearly state that copyright
protection subsists in the work, including both its literal and non-literal elements of
expression, subject to the limitations discussed elsewhere. As this section is presumably
intended to explain the broad scope of what is covered by copyright, it should use language
that does so without saying it only “extends to” certain elements of the work. The
alternative formulation we suggest (i.e., using “subsist” language) tracks the language of
the statute, which in 17 USC §102(a) states that copyright subsists in original works of
authorship fixed in a tangible medium of expression without using the limiting “extends

56
471 U.S. at 558.
57
See Council Draft 2, p44, line 24 p45, line 5.
58
See Council Draft 2, p49, line 1 – p51, line 40.
59
See Council Draft 2, p49, lines 2-4.

13
to” language to positively describe what is covered.60 Also, please see our comments to
Section 1.01 and 2.01 on why the better, more accurate formulation is to use the term
“subsists” in describing the basic rule of copyright.

The Black Letter Should Address that Protection May Be Afforded to Literal and Non-
Literal Expression.61 The black letter should make clear that copyright protection covers
literal and not literal expression, and that it covers the entire work (i.e. protects against
exact copying), as well as portions of the work (samples, non-literal elements, etc.). By
merely using the term expression, it can be misleading in that readers may think copyright
protects less than what is actually protectable.

The Comments Should be Revised to Better Clarify the Broad Protection Afforded by
Copyright in the Initial Instance, with References as Necessary to Other Sections of the
Restatement that Explain the Limitations/Exceptions to the General Rule.62 In order to
bring home the fact that the protection afforded by copyright is generally broad for works
of authorship fixed in a tangible medium of expression, the comments should start with the
general concept of the broad protection, citing the legislative history as applicable re:
“Wide departures or variations from the copyrighted works would still be an infringement
so long as the author’s ‘expression’ rather than merely the author’s ‘ideas’ are taken.”63 It
should also clarify that protection even applies to an author’s expression of ideas though
not the ideas in and of themselves. This last point is noted in comment g to Section 2.01,
but it should also be addressed and fleshed out in the comments to Section 2.02 in a positive
form as well.

The comments should then go on to discuss, flesh out, and provide examples of literal
expression in the whole work (i.e., the full sound recording), literal portions of the work
(e.g., 30-second samples of a sound recording, the melody of a musical composition, the
lyrics of a musical compositions, etc.), and nonliteral portions of the work (e.g., potentially
a story line in the lyrics of a musical composition), etc. The draft only provides 2
illustrations in Section 2.01 of what expression is copyrightable, but 11 illustrations of what
cannot be protected under just the scenes a faire doctrine in Section 2.07.

It is further disturbing to note that Council Draft 2 devotes eight pages in Section 2.01 to
discussion what is excluded from protection, but only three pages to what is included in
protection in Section 2.02. This short shrift to what is protected vs. what is excluded is
even more stark when one considers that, in the last full draft of Chapter 2 that was provided
to the Advisors in Preliminary Draft 3, which includes sections of Chapter 2 not up for vote
in Council Draft 2, an additional 11 pages of text are devoted to explaining what is excluded
from protection under the idea/expression dichotomy as it relates to ideas, methods and

60
In the statute, the “extend to” language is used to refer to what is not protected (i.e. does not “extend to any idea,
procedure,” etc.)
61
See Council Draft 2, p49, lines 2-4.
62
See Council Draft 2, p49, line 8 – p51, line 40.
63
This quote about broad protection in Council Draft 2 is relegated to Reporters’ Note a, p. 51, lines 12-15, and instead
should be raised to one of the first comments.

14
facts. In order to provide a more neutral, balanced view of copyright, care should be taken
to fully discuss when and how copyright applies, and not just when and how it doesn’t.

c. Section 2.07 – Scenes a Faire

Scenes a Faire is More Properly Viewed as an Affirmative Defense and Should Be


Discussed in the Context of Defense to a Claim of Infringement, Not as a Question of
Prima Facia Copyrightability. Please see our comments above to Section 2.01 on why it
is inappropriate to discuss scenes a faire with respect to an initial discussion on the scope
of protection, and that instead, the better view is that it should be properly fleshed out as a
defense to infringement in the infringement section of the Restatement, with an appropriate
discussion there of the different perspectives on this issue.

The Descriptions of the Music Cases Cited to Here Are Either Incorrect or
Mischaracterize the Cases, and, in Any Event, Care Should Be Taken to Note the Unique
Challenges of and Uncertainty Surrounding a Scenes a Faire Defense to Music. The
Reporters go to great lengths to offer detailed illustrations and commentary on scenes a
faire as applicable to movies and television. However, they offer absolutely no illustrations
or commentary for music. They simply identify two music cases64 that might be subject to
scenes a faire, but offer no case description, explanation, or commentary whatsoever to
place the references in proper context. No reader would ever be able to understand scenes
a faire as it applies to music at a time when the courts are actively wrestling with the
meaning of the scenes a faire doctrine. There is no commentary provided about those two
music cases that are identified in this section or their progeny, and in fact, a reading of
those two cases shows that the court refused to apply a scene a faire defense in those two
cases. A reader is forced to analogize commentary on movie scenes a faire offered in the
draft, and that simply does not work. The draft should either delete all references to music
in this section and note that a reader should not apply the black letter law and commentary
to music or provide a complete and accurate explanation and treatment of scenes a faire as
applied to music.

The Reporters inaccurately describe the normative status of case law on scenes a faire.
In Section 2.07(b) and comment d, the Reporters claim that the black letter law should
reflect a view that protection does not extend to an element in a work that flows “naturally”
from unprotectible elements in the work, and then in the Reporters’ notes, take pains to
note that the “flows naturally” standard is a lower bar to finding scenes a faire than the
“flows necessarily” standard. To the extent there is a difference, declaring that the more
expansive approach is the norm is simply not accurate and consistent with the circuit
decisions when read in context.65 To suggest otherwise could be seen as introducing a bias
in favor of less copyright protection when the case law doesn’t support such a view.
64
The music cases cited are Swirsky v. Carey, 376 F.3d 841 (9th. Cir. 2004) and Smith v. Jackson, 84 F.3d 1213 (9th
Cir. 1996).
65
See Comments of Copyright Alliance (October 9, 2018). See also Nobile v. Watts, 2018 U.S. App. LEXIS 27068,
3-4 (2nd Cir. 2018) (“also unprotectible are scenes a faire, which we have described as sequences of events which
necessarily follow from a common theme” . . . “Most of the remaining similarities flow naturally from this
unprotectible premise and are therefore scenes a faire”); Basile v. Sony Pictures Entm’t Inc., 678 Fed. Appx. 473, 473

15
Furthermore, in comment f, the drafts again misstate the majority opinions relating to the
issue of whether elements of scenes a faire can be developed over time. The draft expresses
a preference for that point of view arguing that it fits within the logic of scenes a faire,
even though the courts and the Copyright Office have held otherwise. In fact, the Reporters
cite to no decision directly on point to support the Reporters’ view. This appears to be
another area of potential bias in favor of less copyright protection without adequate
justification.

Scenes a Faire is Intrinsically Tied with the Merger Defense and Should Not Be
Considered or Voted on Without a Simultaneous Review/Consideration of the Scenes a
Faire Defense. The affirmative defenses of merger and scenes a faire are intrinsically tied
together. One doctrine should not be considered for a vote without review of the other,
and in any case, as discussed above, both should be discussed in connection with defenses
to infringement, and not as initial matters concerning the scope of copyright protection.
See the comments of Professors Ginsburg and Besek, as well as Judge McKeown, for a
more complete description of these concerns.

Implications of the Active Oracle v. Google Case. Please see our comments above
regarding the general approach of Council Draft No. 2. Any vote of a section involving
scene a faire should be delayed until after the Oracle v. Google case is resolved.

B. CONTINUING CONCERNS WITH THE PROJECT

In addition to the issues noted above, we continue to have similar concerns with other draft sections
of the Restatement that have been provided to the Advisors but not included in Council Draft No.
2. See Attachment A for a subset of those concerns arising from the proposed text in Preliminary
Draft No. 3 (Oct. 24, 2017) and Counsel Draft No. 1 (Nov. 17, 2017) (Collectively the “Draft(s)”).

(9th Cir. 2017) (“scenes-a-faire, or situations and incidents that flow necessarily of naturally from a basic plot premise,
cannot sustain a finding of infringement” (citations omitted)); Silas v. HBO, 2016 U.S. Dist. LEXIS 107944, 49 (C.D.
Cal. 2016) (“However, it is important to recognize that a pace that ‘flow[s] necessarily or naturally from a basic plot
premise, cannot sustain a finding of infringement.’, quoting Cavalier v. Random House, Inc. 297 F.3d 815, 823 (9th
Cir. 2002). These cases, and others, suggest that the difference articulated by the reporters between naturally and
necessarily is minimal at best. We also note that other recent appellate cases have used the term “necessarily” rather
than “naturally” in defining the scenes a faire standard, such as Effie Film, LLC v. Murphy, 564 Fed. Appx. 631, 632
(2nd Cir. 2014) (“In evaluating substantial similarity, we note that ‘scenes a faire’ or ‘scenes that necessarily result
from the choice of a setting or situation’ are not protectible”); Nobile v. Watts, 2018 U.S. App. LEXIS 27068, 3 (2nd
Cir. 2018) (“also unprotectible are scenes a faire, which we have described as sequences of events which necessarily
follow from a common theme”);

16
C. CONCLUSION

For the reasons stated above and in other filings, we believe that copyright law is ill suited for
restatement by ALI at this time, especially as envisioned by the Reporters.66 We therefore request
that the Council postpone voting on Council Draft No. 2 or to vote no on Council Draft No. 2 and
reconsider the project in its entirety.

Respectfully,

s/Jay Rosenthal s/Steven Marks


Jay Rosenthal Steven Marks
On behalf of the On behalf of the
National Music Publishers’ Association Recording Industry Association of America
(“NMPA”) (“RIAA”)

66
In addition to the Copyright Office, Patent and Trademark Office and the ABA Section on Intellectual Property
Law, we note that the following entities or persons, among others, have offered similar comments urging the ALI to
either abandon this project in its entirety or to reformulate it into a principles project: Simon Barsky, June Besek,
Jacqueline Charlesworth, Jeffrey Cunard, Michael Fricklas, Janet Fries, June Ginsburg, Dean Marks, Mickey
Osterreicher, Mary Rosenberger, Ben Sheffner, AAP, Copyright Alliance, and the Copyright & Literary Property
Committee of the New York City Bar Association.

17
Attachment A - General Comments on Selected Sections in Council Draft No. 1 (for
sections in chapter 1) and Preliminary Draft 3 (for sections in chapters 2 and 3)

Chapter 1, Section 1.05 – Fixation

It is simply not the law, and certainly not black letter law, that the phrase a “period of more than
transitory duration”, which is used in the statute, means “a period that is long enough to allow
enjoyment or exploitation of the work’s expressive content after its creation”, as suggested by the
Reporters. The Reporters’ formulation finds no support in case law, the statute, or the legislative
history. Indeed, the draft tacitly admits this when it actually advocates for acceptance of this novel
formulation rather than recounting the underlying authority (there is none) on which it should be
based.

The fixation requirement of Section 102 of the Copyright Act could not be clearer that copyright
protection subsists in works of authorship fixed in any tangible medium of expression “now known
or later developed, from which they can be perceived, reproduced, or otherwise communicated,
either directly or through the aid of a machine of device.” (Emphasis added.) This language is at
the same time both very precise and quite broad. It does not contain the limitations that appear in
the draft’s black letter formulation.

The same is true of the definition of “fixed” in Section 101: “A work is “fixed” in a tangible
medium of expression when its embodiment in a copy or phonorecord, by or under the authority
of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or
otherwise communicated for a period of more than transitory duration.”

In fact, as comment d correctly notes, neither Congress nor the courts have articulated how long
the work must be able to be perceived, reproduced, or otherwise communicated, and few courts
have expressly considered what minimum duration is required for fixation. The House Report
cited in this comment states that “fixation” excludes “purely evanescent or transient
reproductions,” referencing certain examples. This notion is similar to that articulated by the
Copyright Office in its DMCA Section 104 Report 111 (Aug. 2001) (an embodiment is fixed
“[u]nless a reproduction manifests itself so fleetingly that it cannot be copied.”). It is self-evident
that “purely evanescent” or “transient” are notions that are far removed from “a period that is long
enough to allow enjoyment or exploitation of the work’s expressive content after its creation.”

Nor does Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2008), cited in the draft,
support the Reporter’s attempt to impose a standard that simply does not exist. There was no
discussion by the court, let alone a determination, as to what duration was necessary before data
are sufficiently fixed not to be of transitory duration for copyrightability purposes. And there
certainly was no statement that the duration of fixation must be “long enough to allow enjoyment
or exploitation of the work’s expressive content after its creation.”

Another case cited in the draft, Advanced Computer Services of Michigan, Inc. v. MAI Systems
Corp., 845 F.Supp. 356 (E.D. Va. 1994), simply hypothesized in dictum that if a computer were
turned off within seconds or fractions of seconds of software being loaded, “the resulting RAM

18
representation of the program arguably would be too ephemeral to be considered ‘fixed’ or a
‘copy’ under the [Copyright] Act” for infringement purposes. Id. at 363 (emphasis added). We
can agree that turning off a computer almost immediately after software is loaded is arguably
transient and not fixed for infringement purposes. But that hypothetical, describing what may not
be fixed for infringement purposes provides no support whatsoever for the formulation proposed
by the Reporters, which seeks to establish what is at the other end of the continuum – of significant
duration to be fixed.

The analogies in the Reporters’ notes involving a garden (Kelly v. Chicago Park Dist., 633 F.3d
290 (7th Cir. 2011)) and a bowl of food (Kim Seng Co. v. J & A Importers, 810 F.Supp.2d (C.D.
Cal 2011)) are entirely inapplicable to the fixation issues raised in the digital world. In fact, the
comparisons are pointless.

The Reporters acknowledge in the “Reporters’ Memorandum, Restatement of the Law, Copyright,
Council Draft No. 1 (November 13, 2017) (the “Reporters’ Memorandum”) that advisors have
strongly objected to the formulation of fixation set forth in the Section 1.05 of Draft,
acknowledging the advisors’ comments that neither the cases nor the legislative history support
the standard advocated the Reporters, and that it is not the role of the Restatement to invent a
standard. Despite this, the Reporters attempt to justify their novel, unsupported approach to
fixation by claiming in the Reporters’ Memorandum that their articulation of the standard:

“represents a fair articulation of the principle underlying the fixation cases, that it is
consistent with the broader purposes of the Copyright Act, that it is likely to provide both
guidance to courts and predictability around which parties may order their affairs, and that
it is likely to provide both guidance to courts and predictability around which parties may
order their affairs, and that it is unlikely to lead to undesirable consequences.”

They acknowledge the outright opposition to the formulation, but with a wave of the hand with
this Memorandum, dismiss the views of some of the top copyright experts in the country in favor
of a new, higher standard for copyrightability that they claim will lead to less undesirable
consequences. This to us sounds like they prefer their formulation because it leads to less
copyright protection, which they call ‘undesirable” instead of the formulation set forth by
Congress.

The purpose of a Restatement is to restate, not create, the law. Given the lack of clear guidance
and specificity from the courts and Congress on the issues raised in this section, it is inappropriate
for the drafters to create a normative notion entirely out of whole cloth and pass that notion off as
the law.67

67
Furthermore, the discussion regarding the “anti-bootlegging” statutes in Reporters’ Note c does not add any
clarification or support to what is considered fixation for copyrightability, and instead seems to be a gratuitous
inclusion to criticize the anti-bootlegging statutes. We recommend either removing the entire discussion on the anti-
bootlegging statute in its entirety in this note as irrelevant.

19
Chapter 2 – Scope of Copyright

To avoid duplication and inconsistency within the Restatement, care should be taken to treat
various aspects concerning ideas, methods or facts, respectively in one place, rather than
describing those concepts to some extent in Section 2.01, and then in more detail in other sections
of Chapter 2.

We agree with the comments submitted by Ms. Cendale, the Copyright Office, AAP, Copyright
Alliance and others and believe that any explanation of methods should be revised to reflect those
comments.

Further, as discussed to some extent in our comments to Council Draft 2 and by other commenters,
we believe the better view is to treat merger, as well as scenes a faire, as a defense to infringement
rather than as an issue of copyrightability in the first instance. Any substantive discussion of these
topics should be included with the chapter concerning defenses to infringement and not as initial
questions of copyrightability.

Chapter 3, Sec. 3.03 – Joint Work

The Copyright Law 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.”68 However, Section 3.03 of the Draft arguably adds a new requirement that to be a co-
author of a joint work, an author must contribute “more than merely de minimis” expression and
that it is “significant enough” to qualify the co-author as an “intellectual originator” of the work
as a whole.

This view of joint author jurisprudence promoted as black letter law by the Reporters ignores the
ever evolving nature of collaborative authorship in all forms of creative expression, but particularly
with music. The Reporters comments also mischaracterizes the view of courts relating to the
importance of contractual arrangements entered into by songwriters and even sound recording
artists (i.e., bands) in determining whether a work is a joint work. These issues are important to
the question of copyright term, and the dispositive nature of agreements entered into between co-
authors and other contractual parties. Improper disqualification of a joint author might
significantly limit the term of copyright if one of the co-authors has already died. A top line
example of this is John Lennon (dead for decades) and Paul McCartney (still alive).

Opening the door for courts to even consider changing the joint authorship status of their songs is
tremendously disruptive, and antithetical to the purpose of copyright law. This option should not
even be considered as a viable option by the Reporters, except in extraordinary circumstances.

The black letter and the Reporters’ comments on what constitutes authorship, opens the door for
revisiting the issue of non de minimis authorship when a work is created by two or more authors.
In real life, it just isn’t that simple, and there are differences of opinion on this point, yet the
Reporters make no such distinction nor explain the differing perspectives on this issue. In the

68
17 USC §101.

20
marketplace, the legal rules addressing issues of intent and actual authorial interaction between
co-authors of musical works (like Lennon and McCartney) have not been resolved by courts or
even the Copyright Office to a level that merits inclusion of this issue in the Restatement.
Providing a line of demarcation regarding “more than de minimis authorship” requiring something
“significant enough” to qualify as an “intellectual originator” based on inference from cases not
directly on point actually is providing erroneous direction to courts trying to address the issue.
Clearly, the black letter, and the commentary do not give enough guidance on the fundamental
issue of what constitutes authorship of music when it makes the ultimate factor turn on a rigid view
of what is or is not considered de minimis. Creation of musical works cannot simply be thrown
into the normal bucket of de minimis analysis, and this should be reflected in the black letter and
commentary. If the Reporters do not have the requisite experience to address this issue, then the
entire topic should be removed from the Restatement.

As a second matter, the Reporters’ notes and commentary should be revised to reflect a more
balanced approach to the question whether or not a contract is dispositive of determining the
existence of a joint work. The Reporters reference the case Aalmuhammed v. Lee, 202 F.3d 1227
(9th Cir. 2000), which stands for the proposition that “a contract evidencing intent to be or not to
be co-authors is dispositive.” They try to limit the impact of this case by claiming it only applies
to the issue of intent, and not to whether or not a joint work has been created pursuant to the
understandings set forth in the agreement. The Reporters should not draw a strong line regarding
de minimis authorship, and then couple that with a rule directing courts and lawyers to ignore the
otherwise clear understanding of the parties relating to their authorship contribution as set forth in
a contract that should be considered dispositive. This double mischaracterization will inevitably
lead to opening the door to non-meritorious claims by parties wishing to have otherwise
protectable property prematurely entering the public domain, which is not and should not be the
intent or the province of the Reporters.

Nevertheless, by way of custom or contract, many joint authors, at least in the music world,
recognize and intend that their contributions should be merged, even if the contribution does not
easily fit into pre-conceptions regarding individual contributions to joint authorship set forth in
Section 3.03. There are not enough cases to treat the issue as if it is normalized and a proper
subject for a restatement, and the views expressed in one of the leading cases is not accurately
reflected in the Reporters’ notes. And more to the point, music is oftentimes created
collaboratively and is not a standard “intellectual” exercise that can easily fit into the silos
identified by the Reporters. Black letter law, and accompanying commentary on these points
relating to music, should be removed from the Restatement draft or revised to reflect that there is
no normative answer yet deserving of Restatement treatment.

Chapter 3, Sec. 3.04 - Ownership of a Joint Work.

The term “fractional interest” is used throughout this section, including in the statement of black
letter law and also in the comments. This term is not present anywhere in the statute nor is it
mentioned in any of the major copyright treatises. There are only a few recent cases involving
copyright that include the term “fractional.” The frequent use of the term in this section is
therefore a concern.

21
In the black letter law, the term is expanded to state that each co-author owns “an equal undivided
fractional interest in the copyright in the entire joint work.”
In contrast, the statute, i.e., the second sentence of 17 U.S.C. § 201(a), states simply that:

“The authors of a joint work are co-owners of copyright in the work.”

As with the black letter law in other sections, the Reporters have once again provided an
unnecessarily complicated and therefore confusing version of the statute.

To their credit, the Reporters quote the legislative history in comment a, including the explanation
that co-owners of copyright would be treated generally as “tenants in common.” But then they
twist that principle, which historically recognizes a unity of possession, by inserting the word
“fractional.” This term is not only a recent addition to the legal vocabulary used to discuss
copyright, but a recent addition to any legal vocabulary. It appears to have been introduced in
connection with valuable tangible property such as executive jets and yachts. We are not sure how
the term migrated from tangible property to intellectual property.

As mentioned above, the term “fractional” has been recently in connection with copyright issues.
It appears in the ruling of the court resolving the declaratory judgment action filed by the
Department of Justice regarding the construction of the consent decree governing Broadcast
Music, Inc. (BMI). United States v. Broadcast Music, Inc., 207 F. Supp.3d 374 (S.D.N.Y. 2016).
The court discusses “fractional licensing” as distinguished from “full-work licensing” and finds
that the consent decree “neither bars fractional licensing nor requires full-work licensing.”

Aside from this one court opinion, we are not aware of the use of the term “fractional” in
connection with copyright by any Court or tribunal. One wonders why a document that purports
to be restating the law is attempting to popularize seldom used terminology not used in copyright
jurisprudence.

The pervasive use of the term “fractional interest” in Chapter 3 appears to add mathematical
complexity where it does not exist in statutes or case law. Collaboration is and has always been
common in music. Composers and lyricists have been sitting on piano benches together for
centuries; some of the key cases of the 20th century that defined joint works were the result of
such collaboration. Similarly, musicians have been co-authoring songs in recording studios for
many decades, all without the need to reference or define their interests as “fractional.”

The use of this new term in the restatement appears to imply a new need for mathematical
specificity as to the division of interests between and among coauthors and co-owners of
copyrightable works. This flies in the face of traditional agreements entered into by band members
and other collaborators, which generally take a more holistic and individual approach to
authorship.

22