List of cases referred in Copyright Law

Faculty: Prof. Shreya Matilal

Compiled by: Rohit Jain Sathya Narayan Murthy

Table of Contents
I. ORIGINALITY ........................................................................................................................................ 2

II. FIXATION .............................................................................................................................................. 2 III. IDEAS EXPRESSION DICHOTOMY ....................................................................................................... 2 IV. LITERARY & NON LITERARY WORK ................................................................................................. 3 V. SCENES A FAIRE .................................................................................................................................. 3 VI. FIRST SALE DOCTRINE ........................................................................................................................ 3 VII. AUTHORSHIP ........................................................................................................................................ 3 VIII.COPYRIGHTABILITY OF CHARACTERS .............................................................................................. 4 IX. Peer-Peer Sharing ............................................................................................................................... 4 X. SUBSTANTIAL SIMILARITY/ACCESS................................................................................................... 4 XI. CONTRIBUTORY AND VICARIOUS INFRINGEMENT ........................................................................... 4 XII. FAIR USE .............................................................................................................................................. 5 XIII.COMPUTER SOFTWARE PATENTS ...................................................................................................... 5 XIV.BRIEF SUMMARY OF CASES .............................................................................................................. 6

I.

ORIGINALITY

1. MAC MILLAN V. K&J COOPER 2. GOVINDAN V. GOPALKRISHNA KONE 3. C. CUNNIAH & CO. V. BALRAJ & CO. 4. AGGARWALA PUBLISHING HOUSE KHURJA V. BOARD OF HIGH SCHOOL AND INTERMEDIATE EDUCATION, U.P 5. NAG BOOK HOUSE V. STATE OF WEST BENGAL, 6. EASTERN BOOK COMPANY V. D.B. MODAK & ANR 7. SHELDON V. METRO-GOLDWYN PICTURES CORP 8. FEIST PUBLICATIONS, INC. V. RURAL TELEPHONE SERVICE CO., INC. 9. BURROW-GILES LITHOGRAPHIC CO. V. SARONY 10. BLEISTEIN V. DONALDSON LITHOGRAPHING CO. 11. THE BRIDGEMAN ART LIBRARY, LTD. V. COREL CORP. 12. DONOGHUE V. ALLIED NEWSPAPERS, LIMITED 13. CCH CANADIAN LTD. V. LAW SOCIETY OF UPPER CANADA 14. R.G. ANAND V DELUXE FILMS AND ORS 15. UNIVERSITY OF LONDON PRESS LTD V. UNIVERSITY TUTORIAL PRESS LTD 16. C. CUNNIAH AND CO. V. BALRAJ AND CO.

II.

FIXATION

17. WILLIAMS ELECTRONICS, INC. V. ARCTIC INTERNATIONAL, INC. 18. MAI SYSTEMS CORP. V. PEAK COMPUTER, INC.

III.

IDEAS EXPRESSION DICHOTOMY

19. NICHOLS V. UNIVERSAL PICTURES CORPORATION 20. R G ANAND V. DELUX FILMS AND OTHERS 21. DONOGHUE V. ALLIED NEWSPAPERS LIMITED 22. BAKER V. SELDEN 23. INTERNATIONAL NEW SERVICE V. ASSOCIATED PRESS
2

24. AMERICAN DENTAL ASSOCIATION V. DELTA DENTAL PLANS ASSOCIATION 25. THOMAS WALKER V.TIME LIFE FILMS, INC. 26. JOSHUA ETS-HOKIN,V.SKYY SPIRITS INC 27. METRO-GOLDWYN-MAYER V. AMERICAN HONDA MOTOR CO.

IV.

LITERARY & NON LITERARY WORK

28. ACADEMY OF GENERAL EDUCATION V. MALINI MALLYA

V.

SCENES A FAIRE
29. A.A. HOEHLING V. UNIVERSAL STUDIOS 30. APPLE COMPUTER, INC. V. MICROSOFT CORPORATION 31. MUSIC BROADCAST PVT. LTD. V. PHONOGRAPHIC PERFORMANCE LTD. 32. MGM STUDIOS, INC. V. GROKSTER, LTD. 545 U.S. 913 (2005) 33. MUSIC BROADCAST PVT. LTD. V. SUPER CASSETTE INDUSTRIES LTD. 34. DOUGLASS V. HUSTLER MAGAZINE, INC.,

VI.

FIRST SALE DOCTRINE

35. SONY CORP. OF AMERICA V. UNIVERSAL CITY STUDIOS, INC., 464 U.S. 417 (1984) ALSO KNOWN AS THE "BETAMAX CASE" 36. QUANTA COMPUTER V. L.G. ELECTRONICS (PATENT EXHAUSTION DOCTRINE) 37. SANTOSH V. WARNER BROTHERS (DELHI HIGH COURT) 38. MUSIC BROADCAST PVT LTD. V. INDIAN PERFORMING SOCIETY, BOMBAY

VII.

AUTHORSHIP
39. ERICKSON V. TRINITY THEATRE, INC. 40. AALMUHAMMED V. LEE 41. NAJMA HEPTULLA V. ORIENT LONGMAN LTD 42. ZEE TELEFILMS V. SUNDIAL CORP.
3

VIII.

COPYRIGHTABILITY OF CHARACTERS
43. V.T. THOMAS ALIAS TOMS AND ORS. V. MALAYALA MANORAMA COMPANY 44. METRO-GOLDWYN-MAYER V. AMERICAN HONDA MOTOR CO. 45. BARBARA TAYLOR BRADFORD V. SAHARA ENTERTAINMENT 46. ZEE TELEFILMS V. SUNDIAL COMMUNICATIONS

IX.

Peer-Peer Sharing
47. MGM STUDIOS V. GROKSTER 48. SAGARIKA MUSIC CASE 49. A&M RECORDS V. NAPSTER

X.

SUBSTANTIAL SIMILARITY/ACCESS
50. THREE BOYS MUSIC CORP. V. MICHAEL BOLTON 51. BARBARA TAYLOR BRADFORD V. SAHARA ENTERTAINMENT 52. ZEE TELEFILMS V. SUNDIAL COMMUNICATIONS 53. COMPUTER ASSOCIATES INT'L, INC. V. ALTAI, INC. (ABSTRACTION-FILTRATIONCOMPARISION TEST) 54. NICHOLS V. UNIVERSAL PICTURES CORP. 55. ARNSTEIN V. PORTER 56. SID & MARTY KROFFT TELEVISION PRODUCTIONS, INC. V. MCDONALD'S CORP. 57. TOM J. FRYE V YMCA CAMP KITAKI 58. SWIRSKY V. CAREY

XI.

CONTRIBUTORY AND VICARIOUS INFRINGEMENT

59. RELIGIOUS TECHNOLOGY CENTER V. NETCOM ON-LINE COMMUNICATIONS SERVICES, INC. 60. FONOVISA INC. V. CHERRY AUCTION, INC. 61. SONY CORP. V. UNIVERSAL CITY STUDIOS, INC.
62. Shapiro , Bernstein And Co. V. H.L. Green Co 4

63. GERSHWIN PUBLISHING CORPORATION V. COLUMBIA ARTISTS MANAGEMENT 64. Mgm Studios Inc. V. Grokster

XII.

FAIR USE
65. LEIBOVITZ V. PARAMOUNT PICTURES CORP. 66. HARPER & ROW, PUBLISHERS V. NATION ENTERPRISES 67. CAMPBELL V. ACUFF-ROSE MUSIC, INC. 68. SEGA ENTERPRISES LTD. V. ACCOLADE, INC. 69. SONY COMPUTER ENTERTAINMENT, INC. V. CONNECTIX CORP. 70. FOLSOM V MARSH 71. HUBBARD AND ANOTHER V VOSPER AND ANOTHER 72. CIVIC CHANDRAN V. AMMINI AMMA 73. WARNER BROTHER V. SANTOSH

XIII.

COMPUTER SOFTWARE PATENTS

74. GOTTSCHALK V. BENSON 75. PARKER V. FLOOK 76. RE ALAPPAT 77. DIAMOND V. DIEHR 78. STATE STREET BANK V. SIGNATURE FINANCIAL GROUP 79. ATND V. EXCEL

XIV.

BRIEF SUMMARY OF CASES

CASE : Feist Publications, Inc. v. Rural Telephone Service Co., Inc. 499 U.S. 340 (1991). What happened? This case requires us to clarify the extent of copyright protection available to telephone directory white pages. Rural Telephone Service Company is a certified public utility that provides telephone service to several communities in northwest Kansas. Rural publishes a typical telephone directory, consisting of white pages and yellow pages. Rural sued for copyright infringement in the District Court for the District of Kansas taking the position that Feist, in compiling its own directory, could not use the information contained in Rural's white pages. hence this appeal.\ Summary: The most fundamental axiom of copyright law is that no author may copyright his ideas or the facts he narrates. Rural wisely concedes this point, noting in its brief that facts and discoveries, of course, are not themselves subject to copyright protection. The key to resolving the tension lies in understanding why facts are not copyrightable. The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author.who is an author? In Burrow-Giles, the Court distilled the same requirement from the Constitution's use of the word authors. The Court defined author, in a constitutional sense, to mean he to whom anything owes its origin; originator; maker. Thus, even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. Some protection may be given but This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author. A subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement. To this end, copyright

assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. This principle, known as the idea/expression or fact/expression dichotomy, applies to all works of authorship. As applied to a factual compilation, assuming the absence of original written expression, only the compiler's selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art. Sweat of the brown doctrine not applicable here because the doctrine had numerous flaws, the most glaring being that it extended copyright protection in a compilation beyond selection and arrangement-the compiler's original contributions-to the facts themselves. Court said that can Rural claim originality in its coordination and arrangement of facts. The white pages do nothing more than list Rural's subscribers in alphabetical order. But there is nothing remotely creative about arranging names alphabetically in a white pages directory .Hence not copyrightable. CASE: University of London Press Ltd v v. University Tutorial Press Ltd Examiners were appointed for a matriculation examination of the University of Londoncondition of appointment being that any copyright in the examination papers should belong to the University.The University agreed with the plaintiff company to assign the copyright, and by deed purported to assign it, to the plaintiff company. After the examination the defendant company issued a publication containing a number of the examination papers (including three which had been set by two examiners who were co-plaintiffs), with criticisms on the papers and answers to questions. The act provides for copyright in every original literary dramatic musical and artistic work, subject to certain conditions which for this purpose are immaterial, and the question is, therefore, whether these examination papers are, within the meaning of this Act, original literary works It was indicatedLiterary work' includes maps, charts, plans, tables, and compilations. It may be difficult to define literary work as used in this Act, but it seems to be plain that it is not confined to literary work in the sense in which that phrase is applied,.the court stated:In my view the words literary work cover work which is expressed in print or

writing, irrespective of the question whether the quality or style is high. The word literary seems to be used in a sense somewhat similar to the use of the word literature in political or electioneering literature and refers to written or printed matter. Papers set by examiners are, in my opinion, literary work within the meaning of the present Act. The word original does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of literary work, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work - that it should originate from the author. Author is the first owner of the copyright, subject only to the exceptions contained in the Act.Exception: But the act also says that the examiners must have been under a contract of service or apprenticeship.The examiners were no doubt employed by the University of London, and the papers were prepared by them in the course of their employment.The meaning of the words contract of service has been considered on several occasions, and it has been found difficult, if not impossible, to frame a satisfactory definition for them.Contract of service was not the same thing as a contract for service, and that the existence of direct control by the employer, the degree of independence on the part of the person who renders services, the place where the service is rendered, are all matters to be considered in determining whether there is a contract of service. Contract of service involves the existence of a servant, and imports that there exists in the person serving an obligation to obey the orders of the person served. A servant is a person who is subject to the commands of his master as to the manner in which he shall do his work. A person who is employed by a company at a fixed annual salary to supply weekly articles for a periodical is not a servant. In my judgment it is impossible to say that the examiner in such circumstances can be appropriately described as the servant of the University, or that he prepared these papers under a contract of service. The author shall be the
8

first owner of the copyright, and that every assignment of a copyright must be in writing, signed by the owner or his agent. The only exceptions from the rule that the author is the first owner are the cases mentioned in which do not cover the present case. The examiner was the first owner, and he has not assigned the copyright in writing signed by him or his agent. The copyright therefore remains in the examiners, subject to the obligation under the contract of employment to assign it to the University or as it may direct.The copyright was vested in the examiners, but the University was equitably entitled to it subject to the restrictions contained in the proviso to s. 5, sub-s. 2 . The University assigned its rights to the plaintiff company, which is now equitably entitled to the copyright. In order to sue for infringement of the copyright, the plaintiff company must either obtain a proper assignment of the copyright or join the examiners, who are the legal owners of the copyright, as parties. It has not obtained an assignment, but it has in the course of the action joined the authors as co-plaintiffs. The plaintiffs can therefore sue for infringement of the copyright in the papers prepared by Professor Lodge and Mr. Jackson(authors), but, in the absence of the other examiners, the action fails in respect of the copyright in the papers which were composed by them. Teachers in general are very glad to get copies of old questions for use in tuition It is also important that students should get the questions for purposes of instruction. Recognizing this demand, the plaintiff company published the matriculation papers. With the same object in view, the defendants published the London Matriculation Directory, which contains sixteen of the matriculation papers for January, 1916, including the papers on arithmetic and algebra, geometry, and more advanced mathematics, set by Professor Lodge and Mr. Jackson(authors and co-plaintiff). Criticism appears to be intended for the guidance of future examiners rather . It could not be contended that the mere republication of a copyright work was a fair dealing because it was intended for purposes of private study; nor, if an author produced a book of questions for the use of students, could another person with impunity republish the book with the answers to the questions

Eastern

Book

Company

and

Ors

v.

D.B

Modak

and

Anr

In this case Appellant No. 1 - Eastern Book Company is a registered partnership firm carrying on the business of publishing law books. Appellant No. 2 - EBC Publishing Pvt. Ltd. is a company incorporated and existing under the Companies Act, 1956. The said appellants are involved in the printing and publishing of various books relating to the field of law. One of the well-known publications of appellant No. 1 - Eastern Book Company is the law report "Supreme Court Cases" (hereinafter called "SCC"). The appellant publishes all reportable judgments along with non-reportable judgments of the Supreme Court of India. The name "Supreme Court Cases" has been coined by the appellants and they have been using the same continuously, exclusively and extensively in relation to the law reports published by them. After record of proceedings procured, which is the raw source, are copy-edited by a team of assistant staff and various inputs are put in the judgments and orders to make them user friendly by making an addition of cross-references, standardization or formatting of the text, paragraph numbering, verification and by putting other inputs The headnotes and putting the various inputs in the raw text of the judgments and orders received from the Supreme Court Registry require considerable amount of skill, labour and expertise and for the said work a substantial amount of capital expenditure on the infrastructure, such as office, equipment, computers and for maintaining extensive library, besides recurring expenditure on both the management of human resources and infrastructural maintenance, is made by the plaintiff-appellants. As per the appellants, SCC was a law report which carried case reports comprising of the appellants' version or presentation of those judgments and orders of' the Supreme Court after putting various inputs in the raw text and it constituted an 'original literary work' of the appellants in which copyright subsisted under Section 13 of the Copyright Act, 1957 and thus the
10

appellants alone had the exclusive right to make printed as well as electronic copies of the same under Section 14 of the Act. Any scanning or copying or reproduction done of or from the reports or pages or paragraphs or portions of any volume of SCC by any other person, was an infringement of the copyright in SCC within the meaning of . The defendant-respondent No. 2 Spectrum Business Support Ltd. (in Civil. Appeal No. 6472/2004) has brought out a software called "Grand Juriy" published on CD-ROMs and the defendant-respondent No. 2 Regent Data Tech Pvt. Ltd. (in Civil Appeal No. 6905/2004) brought out software package called "The Laws" published on CD-ROMS. As per the appellants, all the modules in the defendant-respondents' software packages had been lifted verbatim from the appellants' work; the respondents had copied the appellants' sequencing, selection and arrangement of the cases coupled with the entire text of copy-edited judgments as published in the plaintiff-appellants' law report SCC, along with and including the style and formatting, the copy-editing paragraph numbers, footnote numbers, cross-references, etc.; and such acts of the defendant-respondents constitute infringement of the plaintiff-appellants' exclusive right to the same. It was held in the case that the reports in the Supreme Court Cases (SCC) of the judgments of the Supreme Court is a derivative work in public domain. By virtue of Section 52(1) of the Act, it is expressly provided that certain acts enumerated therein shall not constitute an infringement of copyright. Sub-clause (iv) of Clause (q) of Section 52(1) excludes the reproduction or publication of any judgment or order of a Court, Tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the Court, the Tribunal or ocher judicial authority from copyright. The judicial pronouncements of the Apex Court would be in the public domain and its reproduction or publication would not infringe the copyright. That being the position, the copyedited judgments would not satisfy the copyright merely by establishing amount of skill, labor and capital put in the inputs of the copy-edited judgments and the original or innovative thoughts for the creativity are completely excluded.

11

Copyright has nothing to do with originality or literary merit. Copyrighted material is that what is created by the author by his own skill, labor and investment of capital, maybe it is a derivative work which gives a flavor of creativity. The copyright work which comes into being should be original in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author. For the reasons stated above, the appeals were partly allowed. The High Court did grant interim relief to the plaintiff-appellants by directing that though the respondent-defendants shall be entitled to sell their CD-ROMS with the text of the judgments of the Supreme Court along with their own head notes, editorial notes, if any, they should not in any way copy the head notes of the plaintiff-appellants; and that the defendant-respondents shall also not copy the footnotes and editorial notes appearing in the journal of the plaintiff-appellants. It was further directed that the defendant-respondents shall not use the paragraphs made by the appellants in their copy-edited version for internal references and their editor's judgment regarding the opinions expressed by the Judges by using phrases like concurring', 'partly dissenting', etc. on the basis of reported judgments in SCC. The judgment of the High Court was modified to the extent that in addition to the interim relief already granted by the High Court, the above-mentioned additional relief to the appellants was also granted. Case : DONOGHUE v. ALLIED NEWSPAPERS, LIMITED [1936. D. 894.] Summary: In 1931 the paper News of the World owned by the defendant company, were desirous of publishing a series of articles dealing with the racing career of the plaintiff. A contact was signed thus. Following that there were various interviews between the plaintiff and Felstead, at which Felstead made notes, as the conversations went on, of the various matters and material with which the plaintiff supplied him, and he then proceeded to write up the articles required. In 1936 Felstead (the reporter hired by the defendant company) was anxious to make some use of the articles that had appeared in the News of the World. He then endeavored to persuade the plaintiff to consent to the publication of the articles in Guide and Ideas.

12

The first article appeared in Guide and Ideas on May 23, 1936, under the heading My Racing Secrets. By Steve Donohue." The plaintiff, through his solicitors, complained, and the further publication of the articles was stopped. The plaintiff then commenced this action, in which he asked for damages for infringement of copyright and an injunction to restrain the defendants from printing, publishing, selling or otherwise circulating the articles. Justice farwell: that there is no copyright in an idea, or in ideas. A person may have a brilliant idea for a story, or for a picture, or for a play, and one which appears to him to be original; but if he communicates that idea to an author or an artist or a playwright, the production which is the result of the communication of the idea to the author or the artist or the playwright is the copyright of the person who has clothed the idea in form, whether by means of a picture, a play, or a book, and the owner of the idea has no rights in that product The court said that there can be no copyrightability to facts. Plaintiff failed to show that he was the owner or part owner of the copyright in these articles,. that in which ALLIED copyright exists is the particular form of language by which . the information which is to be conveyed is conveyed. If the idea, however original, is nothing more than an idea, and is not put into any form of words, or any form of expression such as a picture, then there is no such thing as copyright at all. the particular form of language in which those adventures or stories were conveyed to the public was the language of Mr. Felstead and not the language of the plaintiff. Hence case was dismissed. Case : Bleistein v. Donaldson Lithographing Co. 188 U.S. 239 (1903) Courier Lithographing (represented by Bleistein), produced a number of posters (i.e chromolithographs) advertising a circus. Later, the circus needed more prints made, but instead of going back to Courier, they went to a cheaper competitor, Donaldson, who copied the posters. Bleistein sued for copyright infringement. Donaldson argued that copyright protection should only be extended to 'fine arts' not to advertising or other 'commercial arts'. The Trial Court found for Donaldson. Bleistein appealed.

13

The Trial Court found that posters were not within the protection of copyright law because they were illustrations of actual people (the circus performers). Therefore they were not a 'creation' of the illustrator. The Court found that the posters were not within the protection of copyright law because they were commercial advertisements. The Appellate Court affirmed. Bleistein appealed. The US Supreme Court reversed. The US Supreme Court found that illustrators are creators, even when they are drawing images of real people. The Court noted that when making a reproduction of something from real life (like a person or a landscape), other artists are "free to copy the original, but they are not free to copy the copy." The Court found that illustrations used for commercial purposes are still copyrightable. "A picture is nonetheless a picture." The Court issued a warning that judges were not to evaluate the artist or aesthetic merit of art when determining whether or not is should be covered by copyright law. The court stated that They seem from the testimony to have been composed from hints or description, not from sight of a performance. But even if they had been drawn from the life, that fact would not deprive them of protection. The opposite proposition would mean that a portrait by Velasquez or Whistler was common property because others might try their hand on the same face. Others are free to copy the original. They are not free to copy the copy. The copy is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man's alone. That something he may copyright unless there is a restriction in the words of the act. Furthermore the court stated that These chromolithographs are "pictorial illustrations." That's now known as the Bleistein Nondiscrimination Principle. In finality the e judgment of the Circuit Court of Appeals was reversed.

14

Burrow-Giles Lithographic Co. v. Sarony 11 U.S. 53 (1884) Sarony took a photograph of Oscar Wilde. Burrow-Giles made copies of the photo. Sarony sued Burrow-Giles for copyright infringement. The Trial Court found for Sarony. Burrow-Giles appealed. Burrow-Giles argued that the photograph could not be copyrighted because it was "not a writing nor the production of an author." 17 U.S.C. 102(a) requires that a work be original. It is within the constitutional power of Congress to confer upon the author, inventor, designer, or proprietor of a photograph the rights conferred by Rev. Stat. 4952, so far as the photograph is a representation of original intellectual conceptions. The object of the requirement in the copyright act, that notice of a copyright in a photograph shall be given by inscribing upon some visible portion of it the words Copyright, the date, and the name of the proprietor, is to give notice of the copyright to the public; and a notice which gives his surname and the initial letter of his given name is sufficient inscription of the name. Whether a photograph is a mere mechanical reproduction or an original work of art is a question to be determined by proof of the facts of originality, of intellectual production, and of thought and conception on the part of the author; and when the copyright is disputed, it is important to establish those facts.

Burrow-Giles argued that Sarony didn't produce anything. He merely reproduced the exact features of a natural object (namely Oscar Wilde). The Appellate Court affirmed. The Appellate Court found that a wide variety of things are subject to copyright, not just books. Congress can authorize copyright in all forms of writing "by which the ideas of the mind of the author are given visible expression... so far as they are representative of original intellectual conceptions of the author."

15

The Court found that Sarony gave his "mental conception" form by posing Oscar Wilde, choosing the lighting, wardrobe, etc. All of that made the photograph the author's original work of art, even though the photograph was mechanically produced. the judgment against lithographic company in photographer's action for infringement of a copyright in a photograph was affirmed, because the copyright bearing plaintiff's last name and first letter of his Christian name was sufficient notice, and authorship rights could be conferred on a photograph maker such as plaintiff by Congress, under the Constitution. The Bridgeman Art Library, Ltd. v. Corel Corp. 36 F. Supp.2d 191 (S.D.N.Y. 1999) Bridgeman marketed reproductions of art owned by some museums. They sold digital images of the art on CD. The art was in the public domain and not protected by copyright. Corel started selling their own CDs of famous art, containing some of Bridgeman's digital images. Bridgeman sued for copyright infringement. Corel argued that the paintings in question were public domain, and Bridgeman couldn't get a copyright on an exact digital copy of a public domain painting. Bridgeman pointed to Alfred Bell & Co. v. Catalda Fine Arts, Inc. (191 F.2d 99 (2d Cir. 1951)), which held that reproductions of public domain images can be awarded copyright protection. The Trial Court found for Corel. The Trial Court found that a photograph could be denied copyright for a lack of originality, if it amount to nothing more than "slavish copying." the court stated that n this case, plaintiff by its own admission has labored to create "slavish copies" of public domain works of art. While it may be assumed that this required both skill and effort, there was no spark of originality -indeed, the point of the exercise was to reproduce the underlying works with absolute fidelity. Copyright is not available in these circumstances. Bridgeman admitted that they were attempting to make the digital images as identical to the original paintings as possible.
16

The

Court

found

that

there

must

be

a distinguishable

variation to

render

the

reproduction original, and just producing a copy in a different medium did not constitute a distinguishable variation. In its judgement the court stated that Plaintiff's motion for reargument and reconsideration of this Court's order granting summary judgment dismissing the complaint is granted. Nevertheless, on reargument and reconsideration, defendant Corel Corporation's motion for summary judgment dismissing the complaint is granted. Case : CCH Canadian Ltd. v. Law Society of Upper Canada (2002), 2002 FCA 187, 1. What happened?

Since 1954 the Law Society, a statutory, non-profit organization, offered request-based photocopying services to students, members, the judiciary, and authorized researchers at their Great Library of the law books .It also allowed visitors to use photocopiers. Above each photocopier, the defendant posted a notice stating that certain types of copying might infringe copyright law and disclaiming liability by the defendant for infringing copies made by library patrons. A group of publishers commenced a copyright infringement action against the Law Society for photocopying such published material copyright infringement of 11 specific works. .

Summary: The first issue held by the court was subsistence of copyright. Chief Justice Mc Lachlin takes the middle road between the approaches of minimal degree of creativity" and "sweat of the browtest. in order for a work to be original it must be the product of an authors exercise of skill and judgment. Skill was defined as the use of ones knowledge, developed aptitude or practiced ability in producing a work. Judgement is the use of ones capacity for discernment or ability to form an opinion by comparing different possible options in producing a work. The

17

exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. Importantly, it is required that the work must be more than a mere copy of another work. However, creativity is not required to make a work 'original'. The judge concluded that all eleven works were protected by copyright ,the creation of headnotes, summaries, and topical indices involves sufficient exercise of skill and judgment so as to render them "original" works. However, the judgments themselves are not copyrightable, nor are the typographical corrections done by the editors. The second issue was the issue of authorization. CJ McLachlin dismissed this argument by stating that providing access to a machine that could be used to infringe copyright does not suggest sufficient "authorization" to violate copyright. Also noted - the Law Society did not have direct control of its patrons, as with a master-servant relationship. A library does not induce copyright infringement by providing self-service photocopiers for use by its patrons. When claiming "fair dealing" the claimant must show that 1. the dealing was for the purpose of either research or private study and that 2. it was fair. Interpretation of "researchmust be given a large and liberal interpretation in order to ensure that users' rights are not unduly constrained. Fair dealing 6 factors to determine fairness: purpose of the dealing: character , amount ,Alternatives ,The nature of the work, The effect of the dealing on the work. The judge concluded: Given the restrictions put in place by the Law Society for copying the materials, the library was acting fairly. Lawyers photocopying law books for use that goes beyond academic use (ie. for profit) is fair dealing. Since library's dealings were fair, McLachlin did not need to rule on this issue. Regardless, she determined that the Great Library qualified for the library exemption. Since the Great Library was found not to have infringed on copyrighted material, no Injunctive relief was made available to the publishers.

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Case: R.G. Anand v Deluxe Films and Ors. AIR1978SC1613 Summary: Plaintiffs suit for damages against the defendants on the ground that they had violated the copyrighted work of the plaintiff which was a drama called 'Hum Hindustani'. The main theme of the play is provincialism and the prejudice of persons belonging to one State against persons belonging to other States. The play is about Madrasi boy and Punjabi girl who secretly marries against the wish of their parents. The play was allegedly copied and made into a film called New Delhi. Judgement: There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyright work. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy. One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises. Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into existence. As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying the various tests laid down by the case law discussed above. Where however the question is of the violation of the copyright of stage play by a film producer or a Director the task of the plaintiff becomes more difficult to prove piracy. It is manifest that unlike a stage play a film has a much broader prospective, a wider field and a bigger background
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where the defendants can by introducing a variety of incidents give a colour and complexion different from the manner in which the copyrighted work has expressed the idea. The Court held that after careful consideration of the essential features of the film it is clear that the plaintiff has not proved by clear and cogent evidence that the defendants committed colourable imitation of the play and defendants have committed no violation of the copyright of the plaintiff. The appeal is therefore dismissed without any order as to costs. Case: Williams Electronics, Inc. v. Arctic International, Inc.

685 F.2d 870 (3d Cir. 1982) Williams made a video game called "Defender" that featured images of spaceships and aliens .The computer program was hard-wired into a 'ROM' chip inside of the cabinet. Arctic began producing a knock-off version called "Defense Command" that used pretty much the exact same images and program.Williams sued Arctic for copyright infringement. The Trial Court found for Williams. Arctic appealed. Arctic argued that Williams could not have a copyright on the material because it was not in a fixed medium. 17 U.S.C. 102(a) requires that a work must be fixed in a tangible medium of expression. Arctic argued that since the images move around on a screen and disappear, they don't meet the definition of 'fixed'. Each time the game is played, the images are redrawn over again. In addition, the player controls the action and is in a sense a 'coauthor' of what appears on the screen. The Appellate Court affirmed. The Appellate Court found that the term fixed should be read to mean "sufficiently permanent or stable to permit it to be...reproduced or otherwise communicated." Defendant arctic argued that there can be no copyright protection for the ROMs because they are utilitarian objects or machine parts. Defendants argument in this regard is misdirected. The issue in this case is not whether plaintiff, if it sought, could protect the ROM itself under the copyright laws.

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In addition, the Court found that the audiovisual work was permanently embodied in the computer code on the ROM. See Midway Manufacturing Co. v. Arctic International Inc. (547 F.Supp. 999 (1982)). The Court found that the player's participation in the game did not withdraw the work from copyright eligibility, because a substantial portion of the images are the same, regardless of how the game is played. Case : MAI Systems Corp. v. Peak Computer, Inc. 991 F.2d 511 (9th Cir. 1993) MAI made computer software. After the software was installed on a customer's computers they often maintained the customers' computer systems for an additional cost. A few MAI employees defected to a competitor named Peak. Peak stole some of MAI's maintenance contracts.MAI sued Peak for copyright infringement. MAI argued that in order to perform maintenance, you had to run the program. That entailed making a copy of the program from the hard drive onto the computer's RAM. MAI argued that they had sold a license to the users to make copies, but that license did not allow third parties like Peak to make copies. The Trial Court found for MAI. Peak appealed Peak argued that they were not making a copy by running the software, because the image of the program on the RAM was temporary and therefore not fixed. Peak vigorously disputed the district court's conclusion that a "copying" occurred under the Copyright Act. The Copyright Act defines "copies" as: material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The Copyright Act then explained: 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
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it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. The Appellate Court affirmed the judgement because of the following evidences presented.. The Appellate Court looked to the statutory definition of the word 'copy' in 17 U.S.C. 101 and found that loading the software onto the RAM met the definition. The Court found that the image on the RAM was "sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." Therefore it was fixed for purposes of 102(a). The court stated that: it is generally accepted that the loading of software into a computer constitutes the creation of a copy under the Copyright Act. See e.g. Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 260 (5th Cir. 1988) ("the act of loading a program from a medium of storage into a computer's memory creates a copy of the program" The district court's grant of summary judgment is AFFIRMED in part and REVERSED in part. CASE : A.A. Hoehling v. Universal City Studios, Inc. 618 F.2d 972 (2d Cir. 1980). What happened? Appellant A. A. Hoehling published Who Destroyed the Hindenburg? He published this book (based on several other sources) that blamed the disaster on the work of a saboteur. Later, a fiction writer named Mooney wrote a novel about the disaster that featured a plot and characters similar to Hoehling's research. It was later turned into a movie. Upon learning of Universal's plans to release the film, Hoehling instituted this action against Universal for copyright infringement and common law unfair competition in the district court for the District of Columbia in October 1975. Judge Smith declined to issue an order restraining release of the film in December, and it was distributed throughout the nation. Summary:

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It is undisputed that Hoehling has a valid copyright in his book. To prove infringement, however, he must demonstrate that defendants "copied" his work and that they "improperly appropriated" his "expression. the court held that factual information is in the public domain because in this case the vast majority of the remainder deals with alleged copying of historical facts. The court held that because it is virtually impossible to write about a particular historical era or fictional theme without employing certain "stock" or standard literary devices, the court held that scenes a faire are not copyrightable as a matter of law. Mooney has used a lot of stock characters as a part of his film and hence this is uncopyrightable.teh court regarding us eof historical facts stated that : the protection afforded the copyright holder has never extended to history, be it documented fact or explanatory hypothesis. The rationale for this doctrine is that the cause of knowledge is best served when history is the common property of all, and each generation remains free to draw upon the discoveries and insights of the past. Accordingly, the scope of copyright in historical accounts is narrow indeed, embracing no more than the author's original expression of particular facts and theories already in the public domain The judgment of the district court was affirmed. Case : Baker v. Selden 101 U.S. 99 (1879) What happened? Charles Selden, the testator of the complainant in this case, in the year 1859 took the requisite steps for obtaining the copyright of a book, entitled 'Selden's Condensed Ledger, or Book-

keeping Simplified,' the object of which was to exhibit and explain a peculiar system of bookkeeping. Summary: The evidence of the complainant is principally directed to the object of showing that Baker uses the same system as that which is explained and illustrated in Selden's books. The main question is, whether the exclusive property in a system of book-keeping can be claimed, under the law or copyright, by means of a book in which that system is explained?

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The court said: To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public Baker argued that you can't copyright a method, only an expression of that method. Because his book didn't slavishly copy Selden's, it was not a violation of Selden's copyright. Baker didn't copy any of the text from Selden's book, he just used the same bookkeeping system. The Trial Court found for Selden. Baker appealed. The Trial Court found that Baker's books were "in large and material part identical with and infringements of the books of Selden system." The US Supreme Court reversed. The US Supreme Court found that a copyright did not give an author the right to prevent others from using the same method. "The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell, and use account books prepared upon the plan set forth in such a book." The Court found that Selden couldn't copyright the forms because the forms are necessary to the use of the bookkeeping system (i.e merger doctrine)The concept of merger is that if an idea can only be expressed in one way or a few ways, granting a copyright on that expression would effectively lock up anybody from using the idea. Therefore, since you can't copyright ideas, you can't copyright those limited ways to express the idea because the idea behind the work merges with its expression. The Court found that the forms are functional and not expressive, so Selden couldn't copyright the forms for that reason either. The Court found that what Selden was really trying to protect was a patent on his method, but he didn't have a patent. He only had a copyright. Patents are used to protect ideas and methods (i.e "useful arts"). Copyrights can only be used to protect expressions. "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." At the time, Selden's method would probably not have been eligible for patent protection, but he could probably patent it now under 35 U.S.C. 101.The decision in this case has now been codified in 17 U.S.C. 102(b)

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Case:

International

News

Service

v.

Associated

Press

248 U.S. 215 (1918) International News Service (INS) and the Associated Press (AP) were news organizations that wrote stories and sold them to newspapers. AP sued INS for getting pre-publication copies of AP's stories, and then repackaging and selling the stories to INS's client newspapers. AP claimed that INS: Bribed newspaper employees to send AP stories to the INS. Convinced newspapers to share their AP stories with INS prior to publication. Copied AP stories out of early edition newspapers on the East Coast and sent them to INS customers on the West Coast. AP actually had correspondents over in Europe covering WWI. INS did not. INS was writing their stories about WWI by reading what AP was reporting. The Trial Court found for AP and issued and injunction to INS telling them to stop the first two practices, but that they could still copy AP stories out of published newspapers. AP appealed. The Trial Court felt that the conduct was unfair but they were not sure if it were actually illegal. The Appellate Court affirmed. AP appealed. The US Supreme Court affirmed. AP argued that news stories are similar to literary properties and should be protected as such. INS argued that news does not fall with in the operation of the Copyright Act. In addition, INS argued that once AP makes the information available to the public, they don't control it anymore and can't dictate what people do with it.

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INS argued that the news is essentially abandoned property, once the paper is published. The US Supreme Court recognized the dual character of news articles. They distinguished between the substance of the information and its form. AP didn't invent the news. The US Supreme Court found that there was a quasi-property right in the news as it is "stock in trade to be gathered at the cost of enterprise, organization, skill, labor and money, and to be distributed and sold to those who will pay money for it". Basically, The Court said that while there is no copyright on the 'facts, there is an economic value to 'news', and as such a company can have limited proprietary interest in it against a competitor (but not the public) who takes advantage of the information. The US Supreme Court upheld the common law rule that there is no copyright in facts and developed the common law doctrine of misappropriation through the tort of unfair competition. If this case had gone the other way, AP would still not have lost all value of their product. People would still pay AP for their newsfeeds. In this manner, the idea of intellectual property is different from chattel such as a farmer's tomatoes. If someone takes your tomatoes, you have no value left. Here, INS's efforts only resulted in a partial decrease in the value of AP's property. On the other hand, if AP wasn't getting paid a lot, they might chose not to pay to put reporters in Europe, and then nobody would be collecting the news. Btw, all those Civil Procedure fans out there might be interested to notice that this case was decided under Federal common law. This was pre Erie Doctrine. One interesting historical fact was that most of the big stories of the day related to developments in WWI. AP's editorial staff was pro-intervention, and wanted the US to get involved. INS was anti-war and wanted the US to stay out. The British government knew this, and froze INS reporters out of their briefings. If INS couldn't get their news from AP, they wouldn't be able to get it at all.

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That could have had a propaganda effect on the American public. Case : American Dental Association v. Delta Dental Plans Association

126 F.3d 977 (7th Cir. 1997) The ADA published a book that contained a taxonomy of different dental procedures (aka the Code). Basically, they came up with a system where they gave every dental procedure (root canals, filling cavities) a different number. That made it easy to do data entry and keep computer records. Delta published a book that 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 was not copyrightable. The Trial Court found for Delta. The ADA appealed. The Trial Court found that the Code cannot be copyrighted because it just catalogs a field of knowledge. Basically, the Court found that taxonomy may not be copyrighted. See 17 U.S.C. 102(b). The Appellate Court reversed. The Appellate Court looked to Baker v. Selden (101 U.S. 99 (1879)) which found that a copyright did not give an author the right to prevent others from using the same method. Therefore, the ADA couldn't stop dentists from using the ADA Code in their forms and records, or stop Delta from distributing forms that invited dentists to use the ADA's Code.

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However, the Court found that it was a violation of the ADA's copyright for Delta to distribute a copy of the code itself. Case : Metro-Goldwyn-Mayer v. American Honda Motor Co. 900 F. Supp. 1287 (C.D. Cal. 1995). This case arises out of Plaintiffs Metro-Goldwyn-Mayer's and Danjaq's claim that Defendants American Honda Motor Co. and its advertising agency Rubin Postaer and Associates, violated Plaintiffs' "copyrights to sixteen James Bond films and the exclusive intellectual property rights to the James Bond character and the James Bond films" through Defendants' recent commercial for its Honda del Sol automobile. A claim for copyright infringement requires that the plaintiff prove (1) its ownership of the copyright in a particular work, and (2) the defendant's copying of a substantial, legally protectable unavailable, the plaintiff may demonstrate copying circumstantially by showing: (1) that the defendant had access to the plaintiff's work, and (2) that the defendant's work is substantially similar to the plaintiff's. 1) Access: The court stated that the defendants had substantial access. the casting director's desire to cast "James Bond"-type actors and actresses, are factors sufficient to establish Defendants' access to Plaintiffs' work. Moreover, the sheer worldwide popularity and distribution of the Bond films allows the Court to indulge a presumption of access. 2) Substantial Similarity Test. portion of such work. Since direct evidence of actual copying is typically

The Ninth Circuit has established a two-part process for determining "substantial similarity" by applying both the "extrinsic" and "intrinsic" tests. The "extrinsic" test compares specific,

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objective criteria of two works on the basis of an analytic dissection of the following elements of each work -- plot, theme, dialogue, mood, setting, pace, characters, and sequence of events. All the scenes in this are governed by scenes affaire. Fair use doctrine: the Court must look to whether Defendants' use is of a commercial nature and whether, and to what extent, the infringing work is transformative of the original. homas WALKER v.TIME LIFE FILMS, INC. 784 F.2d 44 Facts Appellant Walker, an officer once posted in South Bronx as a lieutenant for a year, publishes a book based on his experiences. Book is titled Fort Apache and is published in 1976, and becomes a bestseller. Walker, while narrating harrowing impressions of myriad crimes, ranging from murders to robberies, draws a social pattern of South Bronx. The Defendants company contracts one Heywood Gould to write the screenplay for the to-be-made film Fort Apache-The Bronx. Film opens with the murder of two cops by an insane prostitute. While searching for the killer prostitute, Murphy and Corelli experience the crime infested South Bronx and the myriad characters therein. Appellant contended that the defendants infringed his copyright by copying from the manuscript of the book. The New York state court dismissed the infringement claim for lack of jurisdiction. Subsequent action was brought in federal court. Defendants accepted Goulds access to Walkers manuscript, but stuck to the dissimilarity of the two media. The federal court granted the defendants motion after reading the book, viewing the movie and considering expert opinion. It was held that no reasonable observer could find the works substantially similar. Judgment at the court of Appeals

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 Copyright protection granted to appellants book extends only to its particular expression of ideas, not to the ideas themselves. Copying would be inferred only when similarities extend to protectable elements of the two works. No reasonable observer could find the two media similar beyond nonprotectable ideas. Appellants claims of specific similarities viz. death of two policemen, crime infested neighbourhood, are not specific as such. The killing of the two police officers actually occurred and was reported in the news media, which placed the historical fact of the murders in the public domain and beyond the scope of copyright protection. Elements such as drunks, prostitutes, vermin and derelict cars would appear in any realistic work about the work of policemen in the South Bronx. These similarities therefore are unprotectible as scenes a faire, that is, scenes that necessarily result from the choice of a setting or situation. Neither does copyright protection extend to copyright or stock themes. commonly linked to a particular genre. Substantial similarity should be judged by spontaneous response of the ordinary lay observer. Later it was also held that by advertising in a magazine, the defendants did not try to pass the movie off as an adaptation of the book, especially when the advertisements did not even mention Walker and his book. No reasonable observer could infer that the movie was related to the book. The appeal was accordingly dismissed Joshua ETS-HOKIN,v.SKYY SPIRITS INC Facts In 1993, photographer Ets-Hokin took a series of photographs of Skyy's iconic blue vodka bottle for use in a marketing campaign. Skyy later hired two other photographers to photograph the bottle and used these photographs in advertising and other marketing materials. In 1996, EtsHokin filed this action against Skyy alleging infringement of his copyrights in the 1993 photographs. The district court originally granted summary judgment in favor of Skyy on the ground that Ets-Hokin's photographs were not sufficiently original to merit copyright protection. Photographer appealed.
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Judgment Ets-Hokin argues that Skyy's photographs are substantially similar to those in which he holds the copyrights and that they are therefore infringing. However, his claim fails upon application of the defensive doctrines of merger and scenes a faire. Under the merger doctrine, courts will not protect a copyrighted work from infringementif the idea underlying the work can be expressed only in one way. In such an instance, it is said that the work's idea and expression merge. Under the doctrine of scenes a faire, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea. Though the Ets-Hokin and Skyy photographs are indeed similar, their similarity is inevitable, given the shared concept, or idea, of photographing the Skyy bottle. When we apply the limiting doctrines, subtracting the unoriginal elements, Ets-Hokin is left with only a thin copyright, which protects against only virtually identical copying. Skyy's photographs are not virtually identical to those of Ets-Hokin. Indeed, they differ in as many ways as possible within the constraints of the commercial product shot. The lighting differs; the angles differ; the shadows and highlighting differ, as do the reflections and background. The only constant is the bottle itself. The photographs are therefore not infringing. Case : Aalmuhammed v. Lee 202 F3d 1227 (9th Cir. 1999) Aalmuhammed was an expert on Malcolm X. He was hired by Lee to be a consultant for a movie about Malcolm x. Aalmuhammed suggested script revisions, offered direction to some actors, and helped with editing. When the movie was released, the credits listed Aalmuhammed as a technical consultant. He wanted to be considered a co-author, so he sued. Aalmuhammed argued that his contributions to the film were significant enough to make the work a joint work. He sought a declaratory judgment to that effect, and an accounting for profits.

31

He is not claiming copyright merely in what he wrote or contributed, but rather in the whole work, as a co-author of a "joint work.The Trial Court found for Lee. Aalmuhammed appealed. The Appellate Court affirmed. The Appellate Court looked to 17 U.S.C. 101 and noted that in order to be a co-author of a joint work, a person must "make an independently copyrightable contribution" to the whole work. The Court found that Aalmuhammed's contributions to the work were enough to be independently copyrightable. However, the Court found that Aalmuhammed was not an author. The court further stated that : Speaking Arabic to persons in charge of the mosque, however, does not result in a copyrightable contribution to the motion picture. Coaching of actors, to be copyrightable, must be turned into an expression in a form subject to copyright. Furthermore Aalmuhammed established that he contributed substantially to the film, but not that he was one of its "authors." We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution The Court looked to Burrow-Giles Lithographic Co. v. Sarony (111 U.S. 53 (1884)), which held that an author (of a photograph) is "the person who has superintended the arrangement, who has actually formed the picture by putting the person in position, and arranging the place where the people are to be - the man who is the effective cause of that." The Court found that Aalmuhammed was not 'superintending' anything. He was working for Lee, the movie's director. Lee controlled all aspects of the movie. In addition, there was never an intent on the part of Lee or the movie's producers to make Aalmuhammed a co-author. It was strictly work for hire. The Court noted that even Lee was under contract with the movie studio in a work for hire arrangement and so was not even an author himself. It would be absurd to find that Aalmuhammed was author when Lee was not. The Court found that it was good public policy to restrict the definition of author. Otherwise people like Lee would never consult others because they'd be worried about losing control of the rights. That would make the arts less accurate and interesting.

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Case : Erickson v. Trinity Theatre, Inc. 13 F.3d 1061 (7th Cir. 1994) Erickson worked for Trinity Theatre where she prepared three plays for the company. They had a falling out and Erickson quit. When Trinity continued to perform the plays, Erickson sued for copyright infringement. Erickson argued that she was the author, and therefore controlled the rights to the plays. Trinity argued that, since the actors made suggestions about the play to Erickson during production and rehearsals, Trinity was a co-author. Under copyright law, a joint work (aka one with multiple authors) can be licensed by any one of the authors, even over the objections of the others. The Trial Court found for Erickson. Trinity appealed. The Appellate Court affirmed. The Appellate Court considered two approaches for determining if someone was a co-author: 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. The copyrightable subject matter test, which says that a contributor is only a co-author if that person's contribution would be theoretically copyrightable by itself.- Goldstein. The Court found that the copyrightable subject matter test was the proper test to use. The Court found that the contributions of the actors was not enough to be independently copyrightable, therefore they could not be considered co-authors of the plays. .

33

The copyrightable subject matter test, which says that a contributor is only a co-author if that person's contribution would be theoretically copyrightable by itself.- Goldstein. The Court found that the copyrightable subject matter test was the proper test to use. The Court found that the contributions of the actors was not enough to be independently copyrightable, therefore they could not be considered co-authors of the plays. Najma Heptulla vs Orient Longman Ltd Maulana Azad, during his life time, wrote the book India Wins Freedom. Prof. Humayun Kabir, was associated with the writing of the book. According to his daughter the said book was composed and written by her father and he is the author thereof. Before the book could be published, Maulana Azad died. Prof. Kabir requested the National Archives, Delhi and National Library, Calcutta to act as trustees and required the book to be published after 30 years of Maulana Azad's death. Nooruddin Ahmed and Fatima Begum signed two documents, giving their consent to the arrangements which had been arrived at for the publication of the book. An agreement was entered into between Prof. Humayun Kabir and Orient Longman for the publication of the book. It was understood that the Publishers shall have the first option to publish the complete book as originally composed and now lying under sealed cover. 50% of the royalty was to be paid to Fatima Begum and Nooruddin Ahmed in equal shares. There were two issues that were raised in this case: 1. Who is the author of India Wins Freedom? 2. Did Prof. Humanyun Kabir have the right to execute an agreement with Orient Longman Ltd? Issue 1 Author is defined under Section 2(d) of the Indian Copyright Act. Section 55(2)- provides that where in a literary work a name purporting to be that of an author appears on the work as published then the person whose name so appears shall be presumed, unless the contrary is proved, to be the author of the work.

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The Court held that Sole author is not existent in the present work. The Court disagreed with the view presented in Donoghue v. Allied Newspaper and held that A literary work consists of matter or material or subject which is expressed in a language and is written down. Both the subject matter and the language are important. Surely the intention of the Copyright Act cannot be to give the status of an author only to the person in whose language the literary piece is written while completely ignoring the person who contributed the entire material which enabled the person to show his mastery over the language. In the present case, it is clear that there was active and close collaboration and cooperation between Maulana Azad and Prof. Humayun Kabir which resulted in the book India Wins Freedom. Even the conduct of Prof. Kabir belies the contention that it is he who is the sole author. He has paid 50% royalty to legal representatives of Maulana Azad. Therefore, Prof. Kabir and Maulana Azad are joint authors of the book. Issue 2 The Court held that the agreement document by the legal representatives would show that the plaintiff's grand-mother agreed to the arrangement which had been made by Prof. Kabir with Orient Longmans. It is her conduct of accepting the royalty. Having enjoyed the fruits of the said agreement for all these years the legal representatives of Maulana Azad are estopped from challenging the validity of the said agreement. When the desire, intention and direction of the author was for the publication of the book then the only interest which a legal representative of the deceased author, as a holder of the copyright can have is to adequate royalty from the publication of the work. SUBSTANTIAL SIMILARITY: Case : Nichols v. Universal Pictures Corp., 45 F.2d 119. What happened?

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Plaintiff author appealed a decree from the United States District Court for the Southern District of New York, which concluded that defendant producers motion picture did not infringe upon plaintiffs copyright in a play. Plaintiff alleged that the copyright in her play, concerning a marriage between a Jewish man and an Irish woman and the resulting difficulties between both families, was infringed by defendants movie about the marriage of an Irish man and a Jewish woman, also focusing on differences between their families. Summary: It is essential to any protection of literary property, whether at common-law or under statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations. That has never been the law, but, as soon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that prior decisions cannot help much in a new case. When plays are concerned, a plagiarist may excise a separate scene or he may appropriate part of the dialogue. Then the question is whether the part so taken is substantial, and therefore not a fair use of the copyrighted work; it is the same question as arises in the case of any other copyrighted work. But when the plagiarist does not take out a block in situ, but an abstract of the whole, decision is more troublesome. Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ideas, to which, apart from their expression, his property is never extended. As respects infringement of copyrights in plays, the controversy chiefly centers upon the characters and sequence of incident, these being the substance. The less developed a character in a play is, the less it can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.

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Though the plaintiff discovered the vein, she could not keep it to herself; so defined, the theme was too generalized an abstraction from what she wrote. The court here gave the concept of abstraction filtration comparison test. Judgement was: The copying should be substantial to amount infringement The content of any copyright material goes to public domain to some extent Stock characters cannot be copyrighted. The less developed the character, the less they can be copyrighted. Case : Arnstein v. Porter 154 F.2d 464; 1946 U.S. App What happened? The plaintiff alleged that six of Cole Porter's highly popular songs had been plagiarized from several of plaintiff's songs. Defendant denied ever having seen or heard any of plaintiff's songs. Summary: Arnstein was a songwriter who had published a number of popular songs. He claimed that another songwriter named Porter had plagiarized some of his songs. He sued for copyright infringement. Porter argued that he had never heard any of Arnstein's songs and that he came up with his songs himself (a.k.a independent creation). The Trial Court found for Porter in summary judgment. Arnstein appealed. The Trial Court found that Porter's songs were not substantially similar. The Court relied on the testimony of expert witnesses about the similarity of the songs. The Appellate Court reversed and remanded. The Appellate Court found that generally, there are two elements to establishing infringement: (1)There must be evidence that the defendant had access to the copyrighted work. (2)There must be evidence that the works are substantially similar.

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The court found out that since the defendant had access to over 1 million sold copies of the plaintiffs work he was not entitled to summary judgement. The court said proof of adequate copying not enough.but illicit copying has to be proved. If the jury and the expert testimony found the 2 songs inexcusably alike then the case of substantial similarity can be easily proved. The Court found that whether two songs were substantially similar enough to constitute copyright infringement was a matter of fact for a jury to decide. The court modified the trial court judgment in part, and otherwise reversed and remanded, because plaintiff's complaint was an action at law which included a jury demand, and sought money damages, founded on statute; thus, he was entitled to a trial by jury. Case : Three Boys Music Corp. v. Michael Bolton 212 F.3d 477 (9th Cir. 2000) The Isley Brothers recorded a song. Many years later, Bolton recorded a similar-sounding song. The Isley Brothers sued for copyright infringement. Bolton argued that he couldn't remember ever hearing the Isley Brothers song and that he came up with his song all by himself (aka independent creation). The Trial Court found for the Isley Brothers. Bolton appealed. The Appellate Court affirmed. The Appellate Court found that there are two elements to establishing infringement: There must be evidence that the defendant had access to the copyrighted work. There must be evidence that the works are substantially similar. The Court found there were two ways to establish access: A particular chain of events is established between the plaintiff's work and the defendant's access to that work (like the defendant dealt with the same publisher as the plaintiff), or The plaintiff's work was "widely disseminated." The Court found that these were very fact-dependent issues so they would trust the jury's decision. The Court noted that they personally thought that the Isley's evidence that the song had been widely disseminated was pretty weak.

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The Isley Brothers had provided testimony from dee-jays that they had played the song on the radio in the city Bolton grew up in, and that Bolton really liked music similar to the Isley Brothers. Case : Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp. 562 F.2d 1157 (9th Cir. 1977) The Kroffts made a television show that contained people dressed up in funny costumes. McDonalds was a restaurant that ran a series of commercials containing people dressed up in funny costumes similar to the ones on the Krofft's show. The Kroffts sued for copyright infringement. The Kroffts argued that the McDonald's commercials were substantially similar to their work. McDonald's admitted that they got the idea from the Kroffts' but that their characters were dissimilar enough to fall outside the scope of Kroffts' copyright protection. McDonald's didn't directly copy the costumes and had all different characters, but they had the same style and feel as the Kroffts' work. The Trial Court found for the Kroffts. McDonald's appealed. The Appellate Court affirmed. The Appellate Court noted that you can copyright an expression, but not an idea. See Nichols v. Universal Pictures Corp. (45 F.2d 119 (2d Cir. 1930)). The Court found that there were two tests that courts should apply to show if a work was substantially similar enough to be a copy of an expression, and not just of an idea. The extrinsic test, which looks at specific criteria that can be listed and analyzed (type of artwork, materials used, subject matter). This can be decided as a matter of law and with expert testimony. The intrinsic test, which considers the impressions of the average reasonable reader or spectator. This is a matter of fact and should be decided by a jury.

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The Court applied the tests and found that while under the extrinsic test, the works were not substantially similar, McDonald's characters still invoked the same "concept and feel" as the Kroffts. Therefore it was still an infringement. The Court noted that "duplication or near identity is not necessary to establish infringement." Case : Computer Associates Int'l, Inc. v. Altai, Inc. 982 F.2d 693 (2d Cir. 1992). What happened? The court had to determine whether and to what extent the "non-literal" aspects of a computer program,those aspects that are not reduced to written code ,are protected by copyright. CA wrote a computer program that would allow their scheduling software to run on different kinds of computers. Altai sold a similar kind of scheduling software, so they asked their programmers (who were kept segregated from CA's program), to write a program with the same functionality, which they did. CA sued Altai for copyright infringement. The Trial Court found for Altai. CA appealed. Summary: In a copyright infringement suit, the plaintiff must establish its ownership of a valid copyright, and that the defendant copied the copyrighted work. The appellate court proceeded with the assumption that Altai had access to the ADAPTER code when creating OSCAR 3.5. Thus, in determining whether Altai had unlawfully copied protected aspects of CA's ADAPTER, the court narrowed its focus of inquiry to ascertaining whether Altai's OSCAR 3.5 was substantially similar to ADAPTER. he literal elements of computer programs, i.e., their source and object codes, are the subject of copyright protection. Here, Altai admitted having copied approximately 30% of the OSCAR 3.4 program from CA's ADAPTER source code, and did not challenge the district court's finding of infringement. The court held that there was no infringement in the second version and applied a new test for substantial similarity, known as

the "abstraction/filtration/comparison" test, was developed that was largely based on the reasoning in Nichols v. Universal Pictures Co. In Abstraction the court breaks up the program

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into different levels, from very general to very specific. E.g. Main purpose, program structure, modules, algorithms, data structures, source code. In Filtration, the court decides what components are absolutely essential to fulfilling the abstract function of the program at the various levels. Also filter out everything that is dictated by efficiency, external factors, or in the public domain. In Comparison, the court looks at the components of the program which are not absolutely essential to fulfilling the abstract function of the program to see if they are similar. The Court performed the Abstraction - Filtration - Comparison test and found that the copyrightable elements from CA's program were not substantially similar to those elements in Altai's program. Basically, this case said that what the courts need to do is to sift out all elements of the allegedly infringed program which was ideas of dictated by efficiency or external factors, or taken from the public domain in order to find "a core of protectable expression." At that point the courts should focus on whether there are substantial similarities between any elements within this core in the two programs. The Court vacated the judgment of the district court and remand for reconsideration of those aspects of CA's trade secret claims related to Altai's alleged constructive notice of Arney's (the employee) theft of CA's trade secrets and incorporation of those secrets into OSCAR 3.4. It noted that CA may be unable to recover damages for its trade secrets which are embodied in OSCAR 3.4 since Altai had conceded copyright liability and damages for its incorporation of ADAPTER into OSCAR 3.4. Further, that CA may not obtain a double recovery where the damages for copyright infringement and trade secret misappropriation are coextensive.

Case:

Lotus

Development

Corp.

v.

Borland

Int'l,

Inc.

49 F.3d 807 (1st Cir. 1995) Lotus developed software to make spreadsheets. Borland made competing software. The Borland spreadsheet used almost identical menus and commands. Lotus sued for copyright infringement. Borland didn't copy any of Lotus' software, they wrote all the code themselves. They just used the same menus and had the same commands and macros.

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Borland argued that you couldn't copyright concepts like "cut" and "paste" and "print," you could only copyright the underlying computer code. Those were just a method or processwhich are not copyrightable under 17 U.S.C. 102(b). See Baker v. Selden (101 U.S. 99 (1879)). The Trial Court found for Lotus. Borland appealed. The Trial Court found that Lotus' menu command hierarchy was a copyrightable expression. Borland exactly copied over 400 commands. The Court found that the particular selection and arrangement were protectable as a compilation. The Appellate Court reversed. The Appellate Court found that Lotus' menu commands were uncopyrightable because they were a method of operation. The menu commands are simply the method by which the user controls and operates the program. The Court noted that you can't copyright buttons on a VCR that say 'play' and 'record', and they analogized that to Lotus' menus. In a concurrence it was argued that Lotus didn't invent the concepts of "print" and "quit" so it shouldn't maintain a monopoly over their use. The US Supreme Court affirmed. THE REPRODUCTION RIGHT: Case : Swirsky v. Carey 376 F.3d 841 (9th Cir. 2004) Swirsky wrote a song that was a minor hit. Later, Carey wrote a similar-sounding song that also became a hit. Swirsky sued for copyright infringement.

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Swirsky admitted that most of Carey's song was not similar to his song, but that the chorus was substantially similar. Swirsky had an expert witness testify about the songs' similarities. The Trial Court granted summary judgment for Carey. Swirsky appealed. The Trial Court found that there was a two-part test to determining infringement, the extrinsic test and the intrinsic test. The Court found that Swirsky had failed to present a triable issue on the first part, the extrinsic test. Basically, the Court said that they didn't think Swirsky's expert was good because he emphasized the similar parts of the works and deemphasized the dissimilar parts. The Appellate Court reversed and remanded for trial. The Appellate Court found that there is a two-part analysis for infringement: The extrinsic test considers whether two works share a similarity of ideas and expressions as measured by external, objective criteria, and The intrinsic test which is a subjective comparison that focuses on whether a reasonable audience would find the "total concept and feel" of the works to be similar. The Court found that in order to be triable, there noted to be an "indicia of a sufficient disagreement concerning the substantial similarities of the two works." The Court found that Swirsky's expert adequately defined the similarities, so the case should be heard by a jury. CONTRIBUTORY AND VICARIOUS INFRINGEMENT: Case : Religious Technology Center v. Netcom On-Line Communications Services, Inc. 907 F.Supp. 1361 (N.D.Cal. 1995) Erlich was a former Scientologist who was now critical of the group. He posted some Scientology documents in an internet newsgroup. The Scientologists informed Erlich that he was infringing on their copyright.

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In addition to sending notice to Erlich, they also notified Klemesrud, who owned the website Erlich used to post the documents, as well as Netcom, which was Klemesrud's internet service provider, and told them to block Erlich. After Klemesrud and Netcom took no action to block Erlich, the Scientologists sued everybody for copyright infringement. The Scientologists argued that when Erlich uploaded the documents, they were temporarily stored on Klemesrud's computer, then copies were made and sent by Netcom to places all over the internet. That would be a violation of the Scientologists' right to reproduce, the right to distribute, and the right to publicly display under 17 U.S.C. 106. Klemesrud and Netcom argued that they weren't responsible for what Erlich was doing, and they did not have the capability of screening their system to find every potential infringer. The Trial Court denied Klemesrud and Netcom's motion for summary judgment. The Trial Court found that the postings were definitely fixed enough to be copyrightable copies. See MAI Systems Corp. v. Peak Computer, Inc. (991 F.2d 511 (1993)). The Court found that Klemesrud and Netcom were not liable for direct infringement because the copying that occurred between the computers on the internet was incidental to Erlich's intentional copying of the documents to the internet. The Court likened the Klemesrud and Netcom to a photocopy machine where the public can make copies. The Court noted that if Klemesrud and Netcom were liable, then where would it end? Every computer connected to the internet copies data from other places on the internet, so the total number of potential infringers would be unreasonably large.

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The Court found that even thought 106 is s strict liability Statute, there should be some element of volition or causation which is lacking where a defendant's system is merely used to create a copy by a third party. The Court looked to Gershwin Publishing Corp. v. Columbia Artists Management, Inc. (443 F.2d 1159 (1971) which defined contributory copyright infringement as where "one who, with knowledge of the infringing activities, induces, causes, or materially contributes to the infringing conduct." The Court found that Klemesrud and Netcom should have had knowledge of Erlich's activities. The Court found that Klemesrud and Netcom did not relinquish control of their system to Erlich, and could have stopped him if they wanted to. Their inaction rose to the level of substantial aid, and could constitute contributory copyright infringement. The Court defined vicarious copyright infringement as where a defendant has the right and ability to control an infringer's acts, and receives direct financial benefit from the infringement. The Court found that there was evidence to show that Klemesrud and Netcom had the ability to control Erlich's postings. However, the Court found that there was no evidence that Erlich's infringement gave any financial benefit to Klemesrud or Netcom. Later Congress enacted 17 U.S.C. 512, which establishes "safe harbor" and provides immunity from infringement liability under certain circumstances for internet service providers. Case : Fonovisa Inc. v. Cherry Auction, Inc. 76 F.3d 259 (9th Cir. 1996) Cherry Auction ran a swap meet. Vendors would rent tables and sell whatever they wanted, while Cherry Auction collected an entrance fee from buyers, and provided advertising. Shockingly, some of the vendors were found to be selling bootleg music!

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Fonovisa, who owned the copyright on some of the bootleg music, sued Cherry Auction for copyright infringement. Fonovisa argued that Cherry Auction was (or should have been) aware that vendors were selling illegal music on their premises. Therefore, Cherry Auction was guilty of contributory copyright infringement, and vicarious copyright infringement. Cherry Auction argued that they only provided the space, it wasn't their job to police what the vendors sold. The Trial Court found for Cherry Auction in summary judgment. Fonovisa appealed. The Trial Court found that, as a matter of law, Cherry Auction could not be liable for sales by vendors who leased their premises. The Appellate Court reversed and remanded for trial. The Appellate Court looked to Shapiro, Bernstein and Co. v. H.L. Green Co. (316 F.2d 304 (1963)), and found that with regard to vicarious liability, there were two lines of cases: In "landlord-tenant" cases, the courts had held that a landlord who lacked knowledge of infringing acts of its tenants and who exercised no control over the leased premises was not liable for infringing sales by the tenants. In "dance hall" cases, the courts had found that a landlord can be liable for infringing performances when the landlord could control the premises, and obtained a direct financial benefit from the audience who paid to enjoy the infringing performance. The Court found that since Cherry Auction retained the right to kick any vendor out the 'controlled the premises', and since they collected admission at the door from people who came to buy bootleg music, they obtained a 'direct financial benefit', so there was evidence they were vicarious copyright infringers. The Court defined contributory copyright infringement as where "one who, with knowledge of the infringing activities, induces, causes, or materially contributes to the infringing conduct."

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The Court found that Cherry Auction knew about the bootleg music, and advertised to get more people to come to the swap meet, there was evidence that they were contributory copyright infringers. Case : Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417. What happened? Petitioners appealed a judgment of the United States Court of Appeals for the Ninth Circuit holding petitioners liable for contributory infringement in respondents suit against petitioners for copyright infringement in violation of the Copyright Act, section 101.

Summary: Petitioners manufactured and sold home video tape recorders. Respondents owned the copyrights to television programs broadcast on public airwaves. Respondents sued petitioners for copyright infringement, alleging that because consumers used petitioners recorders to record respondents copyrighted works, petitioners were liable for the copyright infringement allegedly committed by those consumers in violation of the Copyright Act. The U.S. Supreme Court held that petitioners demonstrated a significant likelihood that substantial numbers of copyright holders that licensed works for broadcast on free television would not object to having such broadcasts recorded for later viewing by private viewers. The recorders were therefore capable of substantial noninfringing uses and respondents sale of the recorders to the general public did not constitute copyright infringement. In an opinion by Stevens, J., expressing the views of Burger, Ch. J., and Brennan, White, and OConnor, JJ., it was held that the sale of home video tape recorders to the general public did not constitute contributory infringement of copyrights on television programs since there was a significant likelihood that substantial numbers of copyright holders who license their works for broadcast on free television would not object to having their broadcasts timeshifted by private viewers and the plaintiff copyright holders did not demonstrate that timeshifting would cause any likelihood of non-minimal harm to the potential market for, or the value of, their copyrighted works.

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CASE : MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913(9th cir) What happened? Petitioner copyright holders sued respondent software distributors, alleging that the distributors were liable for copyright infringement because the software of the distributors was intended to allow users to infringe copyrighted works. Upon the grant of a writ of certiorari, the holders appealed the judgment of the United States Court of Appeals for the Ninth Circuit which affirmed summary judgment in favor of the distributors. Summary: Two companies that distributed free software, which allowed computer users to share electronic files through peer-to-peer networks were sued by a group of copyright holders who: (1) Alleged that the distributors had knowingly and intentionally distributed their software to enable users to infringe copyrighted works in violation of the Copyright Act sec 101. (2) Sought damages and an injunctionwhere, although the distributors software could be used to share any type of digital file, users of the software had mostly used it for unauthorized sharing of copyrighted music and video files. Court stated that: (1) Billions of files were shared across P2P Network. (2) The distributors were aware that users of their software used it primarily to download copyrighted files. (3) distributors received no revenue from users of their software, the distributors generated income by selling advertising space (4) No evidence that the distributors had tried to filter copyrighted downloads or otherwise to impede the sharing of copyrighted files. Based on Sony Corp. of America v. Universal City Studios, Inc. (1984) 464 U.S. 417, 78 L. Ed. 2d 574 the United States Court of Appeals for the Ninth Circuit affirmed that distribution of a commercial product that was capable of substantial non-infringing uses in this case gave rise
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material from users

to infringement since the distributor had actual knowledge of specific instances of infringement and failed to act on that knowledge. In an opinion by Souter, J., expressing the unanimous view of the court, it was held that: (1) One who distributes a device with the object of promoting its use to infringe copyright .is liable, under the Copyright Act, for the resulting acts of infringement by third parties using the device, regardless of the devices lawful uses. (2) There was substantial evidence against the distributors on all elements of inducement of infringement, (3) Infringement was overwhelming source of the distributors revenue from the software.

FAIR USE: CASE : Harper & Row, Publrs. v. Nation Enters. 471 U.S. 539 What happened? Petitioners sought review of a judgment of the United States Court of Appeals for the Second Circuit which was entered in favor of respondents on a finding that respondents did not infringe petitioners copyright because use of the material was excused by the publics interest in the subject matter and by a finding that the fair use defense was established under the Copyright Act, 17 U.S.C.S. 107. Summary: The owners of the copyright on a former presidents memoirs, who had sold the exclusive right to print prepublication excerpts to a national magazine, brought suit for copyright infringement and other wrongs when another magazine acquired a copy of the manuscript and rushed into print with an article consisting of quotes, paraphrases, and facts drawn from the manuscript, leading the first magazine to cancel its contract.

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United States Court of Appeals for the Second Circuit held that the copyright protection applied only to the use of the authors particular expression rather than of the facts recorded, and that the second magazines limited use of direct quotations from the manuscript was a fair use which was protected under the Copyright Act . In an opinion by OConnor, J., joined by Burger, C.J., and Blackmun, Powell, Rehnquist, and Stevens, JJ., it was held that there was no basis in the First Amendment for a rule giving the fair use doctrine broader scope in cases involving a public figures manuscript; and that the second magazines article was not a fair use of the manuscript, in view of its intended commercial purpose of supplanting the copyright holders valuable right to control first publication, the unpublished nature of the work, the central importance of the quoted expressions in the memoirs and in the article, and the adverse impact of the article on the contract with the first magazine and on the marketability of first serialization rights in general. To negate fair use one need only show that if the challenged use should become widespread, it would adversely affect the potential market for the copyrighted work. This inquiry must take account not only of harm to the original but also of harm to the market for derivative works. The court reversed the appellate court judgment, and held that respondents unauthorized use of quotations from a public figures unpublished manuscript was not sanctioned by the Copyright Acts fair use doctrine. Case : Campbell v. Acuff -Rose Music, Inc. 510 U.S. 569 (1994) Orbison and Dees wrote a song called 'Pretty Woman', which they sold to Acuff-Rose. Campbell asked Acuff-Rose for permission to make a parody version of the song that he claimed was intended to "through comical lyrics to satirize the original work. They said no. Campbell made the song anyway. The song went on to sell over 250k records. Acuff-Rose sued for copyright infringement. Campbell argued that he was protected by the fair use provision (17 U.S.C. 107) because his song was a satire of the original. Acuff-Rose argued that fair use was not applicable because

50

Campbell appropriated the work for commercial use. The Trial Court found for Campbell. Acuff-Rose appealed. The Appellate Court reversed. Campbell appealed. The Appellate Court looked to 107 and found that Campbell's use did not qualify as fair use because: The commercial nature of the parody rendered it presumptively unfair, Campbell had taken too much of the original work by taking the "heart" of the original and making it the "heart" of a new work, and Market harm had been established by a presumption attaching to commercial uses. The US Supreme Court reversed and remanded. The US Supreme Court noted that parodies in general might be covered by fair use or they might not, depending on the specific circumstances. The Court used the four-factor test of 107. Is the purpose and character of the use commercial or non-commercial? The Court found that just because Campbell's use was commercial doesn't create a presumption that it is not fair use. It is just one factor to be considered. The nature of the copyrighted work. The Court found that this didn't really apply since the artistic value of parodies is often found in their ability to invariably copy popular works of the past. The amount of the original work used. The Court found that Campbell had used the 'heart' of the original work, but that copying the 'heart' is required in order to be a successful parody. Since Campbell substituted mostly his own lyrics, it couldn't be said that he took more of the original work than was necessary. It can only be parody if you can recognize the original material. (On the other hand, satire doesn't require recognition of the original material) The effect on the potential market. The Court found that in general parodies do not harm the marketability of the original work because the two serve different market functions. However, if Acuff-Rose could show that they lost the chance to sell the rights to another parodist because of Campbell's version, then they might have a case.

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Case : Sega Enterprises Ltd. v. Accolade, Inc.977 F.2d 1510 (9th Cir. 1992) Sega made video game consoles and licensed the rights to third-party video game developers to make games for their console. Accolade wanted to sell their games for the Sega console but didn't want to pay Sega's licensing fee. They figured out how to get their games compatible with the Sega console and started selling them. Accolade got some Sega consoles, reverse engineered how the computer chips worked, and then created a manual that had no Sega computer code in it, but explained how to modify a program so it would run on a Sega console. Sega sued for copyright infringement for copying the code on their computer chips. Accolade argued that they had never actually copied any of the computer code on Sega's chips, they just copied the specifications for how to write the software. Since those specification were not copyrightable, they did nothing wrong according to 17 U.S.C. 102(b). In addition, Accolade argued that they were protected by the fair use provision (17 U.S.C. 107). The Trial Court found for Sega. Accolade appealed. The Appellate Court reversed. The Appellate Court found that Accolade did reproduce Sega's computer code, and so they had made a copy for purposes of 17 U.S.C. 106(1). The Appellate Court found that based on 107 there is a four-factor test for determining if something counts as fair use: Is the purpose and character of the use commercial or noncommercial? The Court found that while Accolade ultimate intended to make money selling video games, the direct purpose in copying Sega's code was simply to study the functional requirements of the console's compatibility. In addition, Accolade's work helped the public because lots of companies started using their information to make exciting, creative video games. The nature of the copyrighted work. The court found out that: The Court found that there were aspects of Sega's code that were unprotected by copyright. But there was no way to examine them without also copying the copyrighted parts.
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The Court noted that if someone couldn't look at the code to see the uncopyrighted parts, then Sega would have a de facto monopoly on things they couldn't legitimate get a copyright on The amount of the original work used. The Court found that there was no other way Accolade could have learned about the functionality of the console without copying as much as they did copy. While they did copy the entire code, that didn't mean much because the final product (the video games) did not contain any infringing material. The effect on the potential market. The Court found that Accolade's work did not stop people from buying Sega's video games. Accolade's games could legitimately compete in the marketplace with Sega's games, which might reduce Sega's sales. However, this factor wasn't meant to be applied to competition like that. For example, if a company made Pac-man and another company made a Pac-man knock off, people who bought the knock off wouldn't buy the original because they already had essentially the same game. However, if one company sold Pac-man and another company sold Space Invaders, some people would buy both, and people who only bought one would pick the one they thought was more fun. No one would say, "I don't need to buy Pac-man since I already have Space Invaders." Based on their balancing of the four factors, the Court found that Accolade's copying was protected by fair use. Case: Sony Computer Entertainment, Inc. v. Connectix Corp.

203 F.3d 596 (9th Cir. 2000) Sony made video game consoles and licensed the rights to third-party video game developers to make games for their console. The video games were designed to only work with Sony's console.
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Connectix made an 'emulator' program that allowed people to play the video games on a computer. Connectix got a Sony console, reverse engineered how the code on the computer chips worked, and then wrote a computer program that would do the same thing as Sony's code. Sony sued Connectix for copyright infringement for copying the code on their computer chips. Connectix argued that reverse engineering was protected by the fair use provision (17 U.S.C. 107). The Trial Court found for Sony. Connectix appealed.The Appellate Court reversed. The Appellate Court found that based on 107 there is a four-factor test for determining if something counts as fair use: Is the purpose and character of the use commercial or non-commercial? The Court found that Connectix's work was 'moderately transformative' because it let people play games on a platform they couldn't otherwise use. The Court found that although Connectix's ultimate purpose was selling things, the direct purpose in copying Sony's code was just to understand how they worked. The nature of the copyrighted work. The Court found there were unprotectable elements within Sony's chips that could only be protected by a patent. Since Sony had no patent, Connectix could use those elements. And the only way to see those elements was to copy all of the code on the chip. The amount of the original work used. The Court found that Connectix did copy a substantial portion of Sony's copyrighted elements. However, that didn't mean much because the final product (the emulator) did not contain any infringing material. The effect on the potential market. The Court found that Connectix's emulator was a legitimate competitor to Sony. Any loss that Sony suffered as a result of this competition did not compel a finding of nofair use.

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Based on their balancing of the four factors, the Court found that Connectix's copying was protected by fair use. Shapiro, Bernstein And Co. V. H.L. Green Co., 316 F.2d 304 (2d Cir.1963) SUMMARY Landmark case dealing with secondary liability (vicarious liability) for copyright infringement by sales of counterfeit recordings. In Shapiro, the court was faced with a copyright infringement suit against the owner of a chain of department stores where a concessionaire was selling counterfeit recordings. The Shapiro court ultimately imposed liability, even though the defendant was unaware of the infringement, reasoning that the store proprietor had the power to cease the conduct of the concessionaire, and because the proprietor obtained direct financial benefit from the infringement. Laid down landlord-tenant and dance hall tests. FACTS The plaintiff in the underlying action was the proprietor of certain copyrights (Shapiro, Bernstein and Co.), and it sued two defendants: a record concessionaire (Jalen Amusement Company, Inc.), which allegedly infringed Shapiro's copyrights by selling bootleg copies, and the chain store in which the record concessionaire was based (H. L. Green Company) which allegedly engaged in contributory infringement of those copyrights by virtue of its business relationship with the record concessionaire. PROCEDURAL FACTS The lower court concluded, based on factual findings as to H.L. Green's business relationship with Jalen, that as a matter of law no contributory infringement could have occurred, and

55

dismissed the complaint as to Green. Shapiro appealed this legal conclusion. (The lower court found as a matter of fact that Jalen did in fact infringe, and Jalen declined to appeal.) HELD Landlord-tenant test - the landlord leasing his property at a fixed rental to a tenant who engages in copyright-infringing conduct on the leased premises. If the landlord lets his premises without knowledge of the impending infringement by his tenant, exercises no supervision over him, charges a fixed rental and receives no other benefit from the infringement, and contributes in no way to it, it has been held that the landlord is not liable for his tenant's wrongdoing. Dance hall test - the proprietor or manager of a dance hall or music hall leasing his premises to or hiring a dance band, which brings in customers and profits to the proprietor by performing copyrighted music but without complying with the terms of the Copyright Act. Dance hall manager financially gains from the infringing activities and holds the right and ability to stop such infringing activities but chooses not to hence would be liable vicariously. The Court of Appeals, Kaufman, Circuit Judge, held that store owner was liable for unauthorized sale of bootleg records infringing on plaintiffs' copyrights. He based this conclusion on the observation that the owner retained ultimate right of supervision over conduct of record concession and concessionaire's employees and reserved for itself a proportionate share of gross receipts from concessionaire's sale of phonograph records. Knowledge was not relevant.

Gershwin Publishing Corporation V. Columbia Artists Management American Society of Composers, Authors, and Publishers (ASCAP) brought this copyright infringement action against Columbia Artists Management, Inc. (CAMI) to determine whether CAMI is liable for and can be compelled to pay license fees when musical compositions in the ASCAP repertory are performed at concerts sponsored by local community concert associations promoted by CAMI. In this test litigation CAMI concedes that on January 9, 1965 concert artists managed by it performed 'Bess, You Is My Woman Now' publicly for profit at a concert

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sponsored by the Port Washington Community Concert Association without the permission of plaintiff Gershwin Publishing Company, the copyright proprietor, and that the performing artists and local association are, therefore, liable for infringement under the Copyright Act, 17 U.S.C. 1(e), 101 (1964). CAMI takes the position that its participation in that infringing performance did not render it jointly and severally liable for copyright infringement. The district court granted summary judgment for the plaintiff upon its finding that CAMI had caused the copyright infringement by 'organizing, supervising and controlling' the local organization and by 'knowingly participating' in its infringement. Section 1(e) of the Copyright Act bestows upon the copyright proprietor 'the exclusive right ....... to perform the copyrighted work publicly for profit,' an interest which is protected by 101 of the Act which holds accountable 'any person (who) shall infringe the copyright.' Although the Act does not specifically delineate what kind or degree of participation in an infringement is actionable, it has long been held that one may be liable for copyright infringement even though he has not himself performed the protected composition. For example, a person who has promoted or induced the infringing acts of the performer has been held jointly and severally liable as a 'vicarious' infringer, even though he has no actual knowledge that copyright monopoly is being impaired. Shapiro, Bernstein & Co. v. H. L. Green Co., 316 F.2d 304 (2 Cir. 1963); Although vicarious liability was initially predicated upon the agency doctrine of respondent superior, see, e.g., M.Witmark & Sons v. Calloway, 22 F.2d 412, 414 (E.D. Tenn. 1927), this court recently held that even in the absence of an employer-employee relationship one may be vicariously liable if he has the right and ability to supervise the infringing activity and also has a direct financial interest in such activities. Similarly, one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a 'contributory' infringer. For example, in Screen Gems-Columbia Music, Inc. v. Mark Fi Records, Inc., 256 F.Supp. 399 (S.D.N.Y.1966), the district court held that an advertising agency which placed non-infringing advertisements for the sale of infringing records, a radio station which broadcast such advertisements and a packaging agent which shipped the infringing records could each be held liable as a 'contributory' infringer if it were shown to have had knowledge, or reason to know, of
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the infringing nature of the records. Their potential liability was predicated upon 'the common law doctrine that one who knowingly participates or furthers a tortious act is jointly and severally liable with the prime tortfeasor. The district court properly held CAMI liable as a 'vicarious' and a 'contributory' infringer. With knowledge that its artists included copyrighted compositions in their performances, CAMI created the Port Washington audience as a market for those artists. CAMI's pervasive participation in the formation and direction of this association and its programming of compositions presented amply support the district court's finding that it 'caused this copyright infringement.' Although CAMI had no formal power to control either the local association or the artists for whom it served as agent, it is clear that the local association depended upon CAMI for direction in matters such as this, that CAMI was in a position to police the infringing conduct of its artists, and that it derived substantial financial benefit from the actions of the primary infringers. CAMI knew that copyrighted works were being performed at the Port Washington concert and that neither the local association nor the performing artists would secure a copyright license. It was, therefore, responsible for, and vicariously liable as the result of, the infringement by those primary infringers.

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