EXTENDED READINGS ON COPYRIGHT
BY MATTHEW SAG
© Matthew Sag (2018–2019). No copyright claimed in United States government works or the works of other authors specifically credited herein. This work is released under a Creative Commons (Attribution-NonCommercial-ShareAlike 4.0 International) license. Email the author at [email protected] subject “EROC” for additional permissions, suggestions, and corrections. Note: (1) All case extracts are edited for concision and readability; (2) Placeholders included for topics to be addressed in future versions (3) cite as MATTHEW SAG,EXTENDED READINGS ON COPYRIGHT, [Chapter Heading], [Version], [page].
2019 Edition (August 5, 2019)
E XTENDED R EADINGS ON
C O P Y R I G H T
EXTENDED READINGS ON COPYRIGHT
BY MATTHEW SAG
© Matthew Sag (2018–2019). No copyright claimed in United States government works or the works of other authors specifically credited herein. This work is released under a Creative Commons (Attribution-NonCommercial-ShareAlike 4.0 International) license. Email the author at [email protected] subject “EROC” for additional permissions, suggestions, and corrections. Note: (1) All case extracts are edited for concision and readability; (2) Placeholders included for topics to be addressed in future versions (3) cite as MATTHEW SAG,EXTENDED READINGS ON COPYRIGHT, [Chapter Heading], [Version], [page].
2019 Edition (August 5, 2019)
ABOUT THIS BOOK
Origins. This book is a collection of materials that I have developed for my Copyright Law class at Loyola University Chicago over the past few years. The title, Extended Readings on Copyright, indicates the origins of this project. Early on, my aim was simply to supplement existing casebooks in those areas where I found them to be unhelpful or out of date. Soon enough, the project expanded to the book you are reading now. This book contains several placeholders for further development that I have left in place so that the reader has a sense of what they might be missing. Extended Readings on Copyright will probably always be something of a work in progress because the law of copyright changes so rapidly.
Nevertheless, I think that the book has progressed far enough to be useful.
This book is what you make of it. This book is subject to a non-commercial Create Commons license that allows you to add, subtract, and amend as you see fit, provided you extend those terms to any derivative work based on these materials and provided your provide appropriate attribution. I encourage you to share your edits and additions with me, but it is not obligatory. Extended Readings on Copyright can be used as a stand alone textbook on United States copyright law. The individual chapters are available on the website (matthewsag.com/eroc), and these can be used to supplement other materials. Individual chapters are likely to be more up to date than this consolidated build of the book.
Taking accessibility seriously. Readers might find some of the formatting, editorial, and layout decisions in this book unusual. I have cleaned up internal citations in the cases and expanded most of the abbreviations to make the text flow more smoothly for those using assistive technologies. The traditional Blue Book conventions used in law are incredibly hostile to the visually disabled and I see no reason to perpetuate the conventional practice of that exclusion by design. I have compromised slightly on the issue of footnotes. In my own material I have tried to use footnotes sparingly. Where a footnote in a case is worth reading, I have promoted it to the main text. This book is available as a .docx file and a .ppt file.
Those who require larger print sound be able to achieve this simply by changing the style definitions and updating the table of contents. If there are ways in which this book can be more accessible, please let me know.
Other reasons to use this book. Although Extended Readings on Copyright is primarily a book about copyright law in the United States, I have tried to situate American law in an international and comparative context where possible. Seeing how the law works in other jurisdictions provides an insight into how the law in the United States could be different. Furthermore, every copyright specialist should have some basic understanding of how the international intellectual property system works, if only to be able to evaluate appeals to the authority of the Berne Convention, the TRIPs agreement, and other international copyright agreements.
ACKNOWLEDGMENTS
I have sought and received permission to include extracts from several notable academics, for which I am grateful. Other copyright material is included in reliance on the fair use doctrine.
EXTENDED READINGS ON COPYRIGHT
Subject Oriented Table of Contents
1. Introduction to Copyright Law 17
An Overview of Copyright 17
The historical development of copyright law 18
The Expansion of Copyright Rights and Subject Matter 28
Jurisprudential changes 28
The “why” of copyright law 28
Key economic concepts in copyright law 32
Copyright’s International Framework 35
A quick look at the rights of the copyright owner 37
2. Copyright Subject Matter and Questions of Creativity, Originality, and
Intellectual Creation 40
The significance of Creativity, originality, and authorship 40
International Context 40
Creativity, originality and copyright subject matter in the United States 42 3. The Exclusion of Facts, Ideas, Functions, and Processes from Copyright
Protection 68
The idea-expression distinction and levels of generality 69
The exclusion of facts, ideas, functions, and processes in the United States 75
Section 102(b) of the Copyright Act 83
Merger and scènes à faire 94
The law itself is not copyrightable 107
Other exclusions from copyright 114
4. The Historical Development of the Concepts of Reproduction, Adaptation, and
Fair Use 118
Reproduction and Adaptation—Current International Framework 118 Reproduction, Adaptation, and Fair Use—United States Framework 119
The Historical Context of the Reproduction Right 120
Reproduction in the Modern Era 130
The right to prepare a derivative work based upon the copyrighted work 138
The Scope of Copyright in Derivative Works 151
5. The Reproduction Right 153
The meaning of reproduction 153
Different tests and approaches 155
The confusing role of similarity in copyright infringement 185
The ordinary observer test(s) 189
“Total Concept and Feel” 191
The abstraction, filtration, and comparison test 201
6. An Overview of Copyright Limitations and Exceptions 203
How to think about copyright limitations and exceptions 203
Copyright limitations and exceptions required by international agreements 204 Significant limitations and exceptions to copyright in the United States 204 International constraints on copyright limitations and exceptions 206
7. Expressive Fair Use 209
The modern era of fair use in the United States 209
Transformative use and appropriation art 228
Untransformative Copying and New Markets 241
Recent fair use cases 266
8. Fair use and non-expressive use 267
Non-Expressive Use 267
The relationship between transformative use and non-expressive use 312
Text data mining in the European Union 314
9. Copyright subject matter and the boundaries of the work 317
Locating the threshold of copyrightability 317
Challenging cases 320
10. Ownership, Authorship and Transfer 339
Initial ownership of copyright interests: International framework 339 Initial ownership of copyright interests under United States copyright law 339
Ownership of employee works and commissioned works 359
Non-employee works made for hire 361
Transfer of copyright interests 362
Fractured ownership – copyright divisability 364
United States rules on the termination of transfers 369
11. Moral Rights 380
What are moral rights? 380
The international legal framework for moral rights protection 380 Moral rights in the United States outside the Copyright Act 381
Moral rights in the United States under VARA 392
12. Formalities and Duration 421
International Context—The Berne Convention Prohibition on Formalities 421
The significance of formalities in the United States 422
Copyright Duration 433
International Norms and Agreements Concerning Copyright Duration 435
Copyright Duration in the United States 436
The constitutionality and wisdom of copyright term extension 440
Orphan works 451
Does the fair use doctrine justify the use of orphan works? 452
Legislative responses to the orphan works problem in the European Union 455 The effect of long copyright terms on the availability of older works 458
13. Copyright and Industrial Design 461
Different Approaches to Functional Art 461
Protecting industrial designs and other PGS works through copyright 463 What is “conceptual separability” after Star Athletica v. Varsity Brands? 467 Copyright and design in the wake of Star Athletica, L.L.C. v. Varsity Brands 481
14. Copyright in Computer Software 486
Copyright in Computer Programs under Berne and TRIPs 486
An overview of copyright protection for computer software in the United States 486 The history of software copyright litigation in the United States 488
The Oracle v. Google Cases 494
15. Distribution & First Sale 520
International framework 520
The Distribution Right in the United States 521
The First Sale Doctrine in the United States 527
Limits to the First Sale Doctrine in a Digital World 553
Rental Rights and Lending Rights 563
The “Droit De Suite” and Resale Royalties 564
16. Public Performance, Display & Transmission 567 The international framework for performance, display and transmission rights 567
Performance and display in the United States 569
The display right 569
The performance right 571
Transmission rights 574
The “Homestyle” and Other Exceptions to the public performance right 588
Cable & Satellite Licenses 589
17. Secondary Liability for Copyright Infringement 590
International framework 590
Secondary Liability for Copyright Infringement in the United States 590
Liability of Device Manufacturers and Service Providers 594
Significant Post-Grokster Secondary Liability Cases 600
Tertiary Liability? 625
18. Internet Safe Harbors From Claims of Copyright Infringement 629 The Digital Millennium Copyright Act and the Origins of the Section 512 Safe Harbors 629
The Section 512 Safe Harbors 632
Extended commentary on Section 512(i)(A) and what it means to reasonably implement a
repeat infringer policy 637
Section 512(c) “storage at the direction of a user” 646
Designating an agent to receive notifications of claimed infringement 653 What activities are at the direction of the user for the purposes of Section 512(c)? 654
Liability for misrepresentation under 512(f) 658
European Union Internet safe harbors 669
19. Digital Rights Management and Copyright Management Information 676 The Circumvention of Technological Protection Measures (aka Digital Rights Management)
— International 676
The Circumvention of Technological Protection Measures (aka Digital Rights
Management)—United States 676
Copyright Management Information 694
20. Volitional Conduct, Linking and Ancillary Copyright 707
Volitional Conduct 707
The Copyright Implications of Linking and Embedding on the Internet 737
Linking in the European Union 751
Ancillary Copyright in the European Union 759
21. Remedies for Copyright Infringement 765
The International Framework on Remedies for Copyright Infringement 765 Remedies for Copyright Infringement in the United States 765
Actual Damages and Undue Profits 766
Injunctions 767
Statutory damages 768
Attorney’s fees 777
The significance of copyright formalities in copyright litigation 781
22. Procedural Issues in Copyright Litigation 788
Standing 788
Registration and jurisdiction 800
Choice of law 808
Class Actions 808
Statute of Limitations 808
Sovereign Immunity 818
Copyright and the preemption of state law causes of action 823 [Placeholder for procedural issues in practice before the U.S. Copyright Office] 834
EXTENDED READINGS ON COPYRIGHT
Complete Table of Contents
1. Introduction to Copyright Law 17
An Overview of Copyright 17
The historical development of copyright law 18
Monopoly and censorship as a response to the printing press 18
The First Copyright Act: the Statute of Anne 19
The Battle of the Booksellers, or the Question of Literary Property 20
Millar v Taylor 98 Eng. Rep. 201 (K.B. 1769) 21
Donaldson v. Becket (1774) 1 Eng. Rep. 837 21
The Battle of the Booksellers 2.0, or the Question of Literary Property in United States 22
Wheaton v. Peters, 33 U.S. 591 (1834) 23
The Expansion of Copyright Rights and Subject Matter 28
Jurisprudential changes 28
The “why” of copyright law 28
Utilitarian versus natural rights perspectives 28
Is copyright property? 31
Key economic concepts in copyright law 32
The standard model 32
Copyright and Creativity: Evidence from Italian Operas 34
Less money, more music? 34
Sequential innovation 35
How do people respond to copyright incentives? 35
Copyright’s International Framework 35
Why and to what extent is the law of intellectual property international? 35
Copyright’s International Framework 36
A quick look at the rights of the copyright owner 37
2. Copyright Subject Matter and Questions of Creativity, Originality, and
Intellectual Creation 40
The significance of Creativity, originality, and authorship 40
International Context 40
Creativity, originality and copyright subject matter in the United States 42
Pre-Feist 42
Burrow-Giles Lithographic Co. v. Sarony, 111 US 53 (1884) 42
Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) 46 Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir.1951) 50
Feist 53
Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) 54
The Monkey Selfie and Computer Generated Works 67
Originality and Derivative Works 67
3. The Exclusion of Facts, Ideas, Functions, and Processes from Copyright
Protection 68
The idea-expression distinction and levels of generality 69
Nichols v. Universal Pictures 45 F.2d 119 (2d Cir. 1930) 69
The exclusion of facts, ideas, functions, and processes in the United States 75
Baker v. Selden, 101 US 99 (1880) 75
Rationales for the idea-expression distinction 81
Rationales for the Exclusion of Functionality from Copyright Protection 82
Section 102(b) of the Copyright Act 83
How to Read Section 102(b) 84
How to Apply Section 102(b) 85
Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir. 2015) 85
Merger and scènes à faire 94
The Merger Doctrine 94
Scènes à Faire 95
Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004) 96
The law itself is not copyrightable 107
Banks v. Manchester, 128 U.S. 244 (1888) 107
Recent cases: Code Revision Commission v. Public Resource 109
Code Revision Commission v. Public.Resource.Org, Inc., 906 F. 3d 1229 (11th Cir. 2018) 109
Recent cases: ASTM v. Public Resource 111
American Society for Testing & Materials v. Pub.Resource.Org, Inc., 896 F.3d 437 (D.C. Cir. 2018)113
Other exclusions from copyright 114
4. The Historical Development of the Concepts of Reproduction, Adaptation, and
Fair Use 118
Reproduction and Adaptation—Current International Framework 118
Berne Convention 118
The Information Society Directive 119
Reproduction, Adaptation, and Fair Use—United States Framework 119
The Historical Context of the Reproduction Right 120
Gyles v. Wilcox (1740) 26 ER 489 121
Folsom v. Marsh, 9 F. Cas. 342, 349 (C.C.D. Mass. 1841) (No. 4901) 124
Reproduction in the Modern Era 130
White-Smith Music Publishing Co. v. Apollo Co 209 U.S. 1 (1908) 130
Kalem Co. v. Harper Brothers, 222 U.S. 55 (1911) 135
The right to prepare a derivative work based upon the copyrighted work 138
Earlier Copyright Acts 138
The Copyright Act of 1976 138
Limiting principles 139
The Harry Potter Lexicon Case as an illustration of the relationship between the concepts of
reproduction, adaptation, and fair use 140
Warner Brothers Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008) 141 Penguin Random House LLC v. Colting, 270 F. Supp. 3d 736 (S.D.N.Y. 2017) 146
The Scope of Copyright in Derivative Works 151
5. The Reproduction Right 153
The meaning of reproduction 153
Different tests and approaches 155
Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946) 156
The extrinsic/intrinsic test for infringement of the reproduction right 162
Williams v. Gaye, 885 F. 3d 1150 (9th Cir. 2018) 162
The confusing role of similarity in copyright infringement 185
Probative similarity versus substantial similarity 185
There is no simple relationship between probative and substantial similarity 186
The Inverse Ratio Rule—“how is this still a thing?” 188
The ordinary observer test(s) 189
Problems with the ordinary observer test 189
“Total Concept and Feel” 191
Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003) 192
The abstraction, filtration, and comparison test 201
6. An Overview of Copyright Limitations and Exceptions 203
How to think about copyright limitations and exceptions 203
“True limitations and exceptions” versus “inherent limitations” 203
Rules v. Standards 203
Copyright limitations and exceptions required by international agreements 204 Significant limitations and exceptions to copyright in the United States 204
Statutory licenses 204
Codifying inherent limitations 204
True limitations and exceptions 204
Where does fair use fit in? 205
International constraints on copyright limitations and exceptions 206
The Three Step Test 206
World Trade Organization Panel Decision re: US – SECTION 110(5) COPYRIGHT ACT
(DS160) 206
How Restrictive is the Three-Step Test? 207
7. Expressive Fair Use 209
The modern era of fair use in the United States 209
The state of fair use prior to Campbell v. Acuff-Rose Music 209
Campbell v. Acuff-Rose and its legacy 210
Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994) 210
How far does the concept of transformative use extend? 224
Mattel Inc. v. Walking Mountain Products, 353 F.3d 792 (9th Cir. 2003) 225 Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270 (11th Cir. 2001) 226
Transformative use and appropriation art 228
Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013) 228
Untransformative Copying and New Markets 241
Sony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984) 242 [Placeholder] American Geophysical Union v. Texaco Inc., 60 F. 3d 913 (2d Cir. 1994) 246 A & M Records, Inc. v. Napster, Inc., 239 F. 3d 1004 (9th Cir. 2001) 246 Non-transformative, but preferred uses – Providing access to the print-disabled 252
Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014) 253
Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991). 257 Princeton University Press v. Michigan Document Services, Inc., 99 F.3d 1381, 1383 (6th Cir.
1996) (en banc) 257
The GSU Copyright Case 258
Cambridge University Press v. Albert, 906 F.3d 1290 (11th Cir. 2018) 258
Recent fair use cases 266
8. Fair use and non-expressive use 267
Non-Expressive Use 267
Reverse Engineering 267 Sega Enter. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) 267
Anti-plagiarism software 273
A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009) 273
Text Data Mining & Search Engine Cases 282
The image search cases: Kelly and Perfect 10 282
Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014) 283
Authors Guild v. Google, Inc., 804 F. 3d 202 (2d Cir. 2015) 293 The relationship between transformative use and non-expressive use 312
Matthew Sag, The New Legal Landscape for Text Mining and Machine Learning, (Available at
https://ssrn.com/abstract=3331606) 312
Text data mining in the European Union 314
Article 3 of the European Union Digital Single Market Directive 314 9. Copyright subject matter and the boundaries of the work 317
Locating the threshold of copyrightability 317
Categories of work recognized by the Copyright Act. 317
Originality 317
Fixation 319
Challenging cases 320
Garcia v. Google, Inc., 786 F. 3d 733 (9th Circuit 2015) (en banc) 320 16 Casa Duse, LLC v. Merkin, 791 F. 3d 247 (2nd Cir. 2015) 331
10. Ownership, Authorship and Transfer 339
Initial ownership of copyright interests: International framework 339 Initial ownership of copyright interests under United States copyright law 339 Ownership of the physical embodiment of the work has no bearing on copyright ownership 339
Pope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.) 339
Authorship and ownership are inextricably entwined 340
Coauthors are joint owners of the work 341
Who qualifies as a joint author? 341
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000) 342
Joint works and derivative works 350
Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989) 350
Ownership of employee works and commissioned works 359
Who is an employee? 360
Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) 360
What is within the scope of employment? 361
Non-employee works made for hire 361
Transfer of copyright interests 362
Requirements for transfer 362
Failed transfers and implied licenses 363
Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990) 363
Fractured ownership – copyright divisability 364
Gardner v. Nike 279 F.3d 774, 780 (9th Cir. 2002) 364
United States rules on the termination of transfers 369
Post-1978 Grants 369
Pre-1978 Grants 370
Terminated derivatives 371
Stewart v. Abend 495 U.S. 207 (1990) 371
11. Moral Rights 380
What are moral rights? 380
The international legal framework for moral rights protection 380 Moral rights in the United States outside the Copyright Act 381
The patchwork approach 381
The Dastar Decision and its aftermath 382
Dastar v. Twentieth Century Fox 539 U.S. 23 (2003) 382
Defined Space, Inc. v. Lakeshore East, LLC 797 F.Supp.2d 896 (N.D. Ill. 2011) 389
Moral rights in the United States under VARA 392
The rights of attribution and integrity and their limits 398
The duration rights under VARA 399
A case study of VARA in action 400
Cohen v. G&M Realty LP, 320 F.Supp.3d 421 (EDNY 2018) (February 12, 2018) 400
12. Formalities and Duration 421
International Context—The Berne Convention Prohibition on Formalities 421
The significance of formalities in the United States 422
Notice 422
Registration & Deposit 423
What is publication? 423
Estate of Martin Luther King v. CBS, INC., 194 F. 3d 1211 (11th Cir. 1999) 423
The effect of publication of derivative works 433
Copyright Duration 433
International Norms and Agreements Concerning Copyright Duration 435
The Berne Formula: life of the author plus 50 years 435
Beyond Berne 435
Copyright Duration in the United States 436
Overview 436
Complexity 436
Copyright Duration for unpublished works 438
Special rules apply to sound recordings 438
The constitutionality and wisdom of copyright term extension 440
Eldred v. Ashcroft, 537 U.S. 186 (2003) 441
Golan v. Holder, 565 U.S. 302 (2012) 441
Orphan works 451
Does the fair use doctrine justify the use of orphan works? 452 Orphan works example 1: the Civil Rights Movement Veterans Website 452 Orphan works example 2: Trove, The National Library of Australia’s Digital Archive 453 Legislative responses to the orphan works problem in the European Union 455 The effect of long copyright terms on the availability of older works 458
Notes and questions: 459
13. Copyright and Industrial Design 461
Different Approaches to Functional Art 461
Design Patents in the United States 462
Protecting industrial designs and other PGS works through copyright 463
PGS works 463
Useful Articles and Conceptual Severability 463
Mazer v. Stein, 347 U.S. 201 (1954) 463
Distinguishing Between Useful and Useless Articles 466
What is “conceptual separability” after Star Athletica v. Varsity Brands? 467
Before Star Athletica 467
Star Athletica LLC v. Varsity Brands Inc. 137 S.Ct. 1002 (2017) 468 Copyright and design in the wake of Star Athletica, L.L.C. v. Varsity Brands 481
Yeezy Boost 482
14. Copyright in Computer Software 486
Copyright in Computer Programs under Berne and TRIPs 486
An overview of copyright protection for computer software in the United States 486 The history of software copyright litigation in the United States 488
Peter S. Menell, API Copyrightability Bleak House: Unraveling and Repairing the Oracle v. Google Jurisdictional Mess, 31 Berkeley Technology Law Journal, 1515 (2016) 488
The Oracle v. Google Cases 494
Oracle America, Inc. v. Google LLC 886 F.3d 1179 (Fed. Cir. 2018) 496
15. Distribution & First Sale 520
International framework 520
The Distribution Right in the United States 521
Distribution by digital transmission? 521
Distribution versus “Making Available” 523
Extended Discussion: The Copyright Office’s 2016 Making Available Report 524
The First Sale Doctrine in the United States 527
Bobbs-Merrill Co. v. Straus 210 U.S. 339 (1908) 527
Statutory recognition of distribution right and first sale doctrine 530
Copyright Exhaustion and Parallel Importation 530
Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013) 530
Copyright Misuse 540
Omega SA v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir. 2015) 540
Contractual Restraints on the First Sale Doctrine 548
Sale versus license 548
Adobe Sys. Inc. v. Christenson, 809 F.3d 1071 (9th Cir. 2015) 548
Limits to the First Sale Doctrine in a Digital World 553
Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018) 553
Rental Rights and Lending Rights 563
Rental Rights in the United States 563
Library Lending, Printed Books vs. eBooks 563
Public Lending Rights in Other Jurisdictions 564
The “Droit De Suite” and Resale Royalties 564
Close v. Sotheby’s 894 F.3d 1061 (9th Cir. 2018) 564
16. Public Performance, Display & Transmission 567 The international framework for performance, display and transmission rights 567
Performance and display in the United States 569
The display right 569
The performance right 571 Performance rights for sound recordings and musical works are different 571
Kristelia A. García, Facilitating Competition by Remedial Regulation, 31 Berkeley Technology Law
Journal, 183, 192–93 (2016) 571
The Digital Performance Right in Sound Recordings Act 572
Performance Rights Organizations (PROs) 573
Transmission rights 574
Transmission and public performance under the 1909 Act 574
Public Performance and the “Transmit Clause” Under the 1976 Act 575
Cablevision 576
American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498 (2014) 576 The “Homestyle” and Other Exceptions to the public performance right 588
Cable & Satellite Licenses 589
17. Secondary Liability for Copyright Infringement 590
International framework 590
Secondary Liability for Copyright Infringement in the United States 590
Justifications for secondary liability 590
Statutory Basis 590
Types of secondary liability 591
Shapiro, Bernstein & Co. v. H. L. Green Co., 316 F.2d 304 (2 Cir. 1963) 591 Gershwin Pub. Corp. v. Columbia Artist Management, Inc., 443 F.2d 1159 (2d Cir. 1971) 592
Liability of Device Manufacturers and Service Providers 594
The Sony Safe Harbor 594
Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417 (1984) 594
Napster and Grokster 598
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) 599
Significant Post-Grokster Secondary Liability Cases 600
Perfect 10, Inc. v. Visa International Service Association, 494 F.3d 788 (9th Cir. 2007) 600
Secondary liability for Internet Service Providers 613
BMG Rights Management (US) LLC v. Cox Communications, Inc., 881 F.3d 293 (4th Cir. 2018) 613 Cobbler Nevada, LLC v. Gonzales, 901 F. 3d 1142 (9th Cir. 2018) 618
Tertiary Liability? 625
UMG Recordings, Inc. v. Shelter Capital Partners, 718 F.3d 1006, (9th Cir. 2013) 625 18. Internet Safe Harbors From Claims of Copyright Infringement 629 The Digital Millennium Copyright Act and the Origins of the Section 512 Safe Harbors 629
Matthew Sag, Internet Safe Harbors and the Transformation of Copyright Law 629
The Section 512 Safe Harbors 632
Overview 632
Service Provider 632
Conditions for Eligibility–In General 633
Conditions for eligibility–repeat infringer policies 633
A case study in how not to implement a repeat infringer policy: BMG Rights Management v.
Cox Communications. 634
Extended commentary on Section 512(i)(A) and what it means to reasonably implement a
repeat infringer policy 637
What counts as a repeat infringer policy under Section 512(i)(A) 637 What does it mean to have “reasonably implemented” a repeat infringer policy? 644
Section 512(c) “storage at the direction of a user” 646 What counts as knowledge of infringement under the DMCA safe harbors? 646 Viacom International, Inc. v. YouTube, Inc., 676 F. 3d 19 (2d Cir. 2012) 647
Actual knowledge and “red flag” knowledge 647
Willful blindness 649
Control and Benefit: § 512(c)(1)(B) 650
The status of pre-1972 sound recordings under the DMCA. 652
Designating an agent to receive notifications of claimed infringement 653 What activities are at the direction of the user for the purposes of Section 512(c)? 654 Mavrix Photographs, LLC v. Livejournal, Inc., 873 F.3d 1045 (9th Cir. 2017) 654
Liability for misrepresentation under 512(f) 658
The case of the dancing baby 659
Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2015) 660
European Union Internet safe harbors 669
The E-Commerce Directive & the Information Society Directive 669
Digital Single Market Directive 671
19. Digital Rights Management and Copyright Management Information 676 The Circumvention of Technological Protection Measures (aka Digital Rights Management)
— International 676
The Circumvention of Technological Protection Measures (aka Digital Rights
Management)—United States 676
An overview of the DMCA 676
DMCA exceptions and limitations 678
Administrative Exemptions 679
MDY Industries, LLC v. Blizzard Entertainment, Inc., 629 F. 3d 928 (9th Cir. 2010) 679
Copyright Management Information 694
Leveyfilm, Inc. v. Fox Sports Interactive Media, 999 F. Supp. 2d 1098 (ND Il. 2014) 695 Stevens v. Corelogic, Inc., 899 F. 3d 666 (9th Cir. 2018) 699
Some notes on the interpretation of Section 1202 705
20. Volitional Conduct, Linking and Ancillary Copyright 707
Volitional Conduct 707
Introduction 707
New technologies expose latent ambiguities in copyright law 707 Religious Tech. Ctr. v. Netcom On-Line Communication Services, Inc., 907 F. Supp. 1361 (N.D. Cal.
1995) 709
CoStar 711
CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544 (4th Cir. 2004) 711
Cablevision 713
Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) 713 Fox Broadcast Corporation, Inc. v. Dish Network L.L.C., 747 F.3d 1060 (9th Cir. 2013) 718
Volition as proximate cause? 720
Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017) 721 BWP Media USA Inc. v. Polyvore, Inc. (2d Cir. 2019) (April 17, 2019) 722 The Copyright Implications of Linking and Embedding on the Internet 737
The Server Test 737
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) 737 Goldman v. Breitbart News Network, LLC, 302 F.Supp.3d 585 (SDNY 2018) 741
Linking in the European Union 751 Svensson v. Retriever Sverige AB, Case C 466/12 (13 February 2014) 751 GS Media BV v. Sanoma Media Netherlands BV and Others (Case C-160/15) CJEU (2015) 752
Ancillary Copyright in the European Union 759
Article 15 of the Digital Single Market Directive (Ancillary Copyright) 760
21. Remedies for Copyright Infringement 765
The International Framework on Remedies for Copyright Infringement 765 Remedies for Copyright Infringement in the United States 765
Actual Damages and Undue Profits 766
Injunctions 767
The effect of eBay v. MercExchange 767
Statutory damages 768
Who should decide on the amount of statutory damages? 769
Feltner v. Columbia Pictures Television, Inc., 523 US 340 (1998) 769
Other issues in calculating statutory damages 772
Friedman v. Live Nation Merchandise, Inc., 833 F. 3d 1180 (9th Cir. 2016) 772
Attorney’s fees 777
Factors vs. discretion 777
No dual standard for prevailing plaintiffs and defendants 778
Special considerations for prevailing defendants 779
Who is the “prevailing party” when a case is dismissed? 779
Other questions about prevailing party 780
The significance of copyright formalities in copyright litigation 781 Remedies and attorney’s fees depend on timely registration 781
When does infringement commence? 783
Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008) 783
22. Procedural Issues in Copyright Litigation 788
Standing 788
John Wiley & Sons, Inc. v. DRK Photo, 882 F.3d 394 (2d Cir. 2018) 788
Registration and jurisdiction 800
Registration vs. filing of a registration application 801
Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019) 801
Different rules for some foreign works 807
Choice of law 808
Class Actions 808
Statute of Limitations 808
Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) 809
Sovereign Immunity 818
Cambridge University Press v. Becker, 863 F. Supp. 2d 1190 (N.D. Ga. 2012) 819 Copyright and the preemption of state law causes of action 823
Maloney v. T3Media, Inc., 853 F. 3d 1004 (9th Cir. 2017) 823
[Placeholder for procedural issues in practice before the U.S. Copyright Office] 834
1. INTRODUCTION TO COPYRIGHT LAW
An Overview of Copyright
The subject of copyright law is human creativity. Like its subject matter, copyright law is fascinating, complicated, and contested. Copyright law as we know it today began over 300 years ago with the enactment of the Statute of Anne in England in 1710. The Statute of Anne was a delayed response to the disruptive technology of the printing press that had swept across Europe in late 15th and 16th Centuries. Copyright has continued to respond to technological and social change ever since.
The next few paragraphs sketch out a very basic overview of copyright as a preview of the material that lies ahead. The aim of this overview is to describe the law as it is now in the United States, and to gloss over important questions of history and alternative interpretations of the law—these will come later.
Authors & Works. Copyright is a set of exclusive rights that belong, initially at least, to the author or authors of “a work” such as novel, a movie, or a piece of music. Copyright begins when the work is created and typically lasts for the life of the author plus 50 or 70 years.
Copyright protects a wide variety of cultural objects, including books, drawings, paintings, sculpture, music, and movies. More recently that list has expanded to include computer software and architecture.
Rights. Broadly speaking, the copyright owner has the exclusive right to reproduce the work, to make adaptations based on the work that are reasonably close to the original, to distribute the work, and to communicate the work to the public through performance and display.
Rights in relation to distribution and display can seem very broad, but in practice they are quite narrow because they only apply to any given copy of a work up until the first sale of that copy.
Copyright rights are broad, but they are not as broad as the equivalent rights in patent law.
Patent owners have the exclusive right to “make, use, or sell” the patented invention. The concepts of “make” and “sell” have their analogs in copyright law, but there is nothing so broad as a right to “use” the copyrighted work. This is significant: you don’t need permission to read a book or listen to music on a compact disc, you don’t need permission to lend the book or the disc to a friend, or to tell people about the things you have learned from the book or your reaction to the music.
Expression. Even though copyright law gives the author the exclusive right to make reproductions of her works, that right only goes so far: Copyright does not protect every aspect work, it only protects original expression.
Copyright does not protect facts, ideas or functional product features. To illustrate, I would infringe the copyright in Martha Stewart’s cookbook if I copied the entire work and made it available for free on the Internet. However, I could follow one of the recipes in that book to make a cake, and I could sell that cake for profit, all with no duty to account to Martha Stewart. Indeed, I could reduce Martha Stewart’s cake recipe down to a simple set of
instructions and then describe those instructions in my own words and compete with Martha Stewart in the market for cake recipes.1
Rights can fragment and overlap. Copyright rights can be fragmented and overlapping.
Suppose that A writes a poem. B adapts the poem into song lyrics. C adds an original musical composition. D performs the song and it is recorded by E to create a sound recording. Further suppose that F then plays that recording in public, and G records that performance along with images of the reaction of the audience to create an audiovisual work.
If Harriet were to copy G’s movie without obtaining permission from anyone, she might be infringing the rights of A, B, C, E and G. It is possible that D and E would be joint authors of the sound recording. Also, some jurisdictions outside the United States would also recognize that D has an intrinsic right to the performance such that D’s permission would be required for certain downstream uses whether she is an author of the sound recording or not.
Limitations & Exceptions. The rights of copyright owners are subject to a number of important limitations. The copyright laws of most countries contain a hodgepodge of limitations and exceptions that reflect the influence of particular interest groups at particular times. Some copyright limitations are required to meet its overall purpose of encouraging the diffusion of knowledge, promoting authorship and enabling creativity; some are required because without them copyright law might unduly constrain freedom of expression; and some limitations are required because without them copyright would confer overly broad exclusive rights in related and downstream activities. But we must also concede that some copyright limitations or exceptions are really just a result of special interest pleading and can’t be fully justified as fulfilling the essential purpose of copyright or maximizing general welfare. The copyright system would be self-defeating without some limits on the broad rights of copyright owners, but exactly what limits are required, how should they be structured, and who is best placed to make these decisions are all highly controversial questions in modern copyright law.
The historical development of copyright law Monopoly and censorship as a response to the printing press
Copyright law is constantly evolving. Prior to Gutenberg’s invention of the movable type printing press in the early 15th century, the predominant technology of copying was the monastic scribe. At a time when very few people could read and copying was highly labor- intensive, copying was essentially unregulated. But then came Gutenberg and the diffusion of printing press technology throughout Europe catalyzed enormous social and political changes. In the early days of this new technological era, regulation of the printing press focused on the need to maintain religious and political orthodoxy. In England, this need was met by a licensing system that ensured that only the Stationers’ Guild was permitted to print books. In turn, the Guild ensured that only approved books were printed. The Licensing Act
1 See Publications Int’l, Ltd. v. Meredith Corp., 88 F.3d 473, 481 (7th Cir. 1996) (explaining that recipe books can show originality and obtain copyright protection if “the authors lace their directions for producing dishes with musings about the spiritual nature of cooking or reminiscences they associate with the wafting odors of certain dishes in various stages of preparation.”)
of 1662 explained its objective in terms of guarding against the publication of “heretical schismatical blasphemous seditious and treasonable” books.
By convention, the members of the Stationers Guild agreed that the first member to enter a literary title in the Stationers’ Register would have exclusive and perpetual rights to publish it.
This practice explains some of the terminology of copyright law. “The registered title and the rights associated with it were known as the “copy” of the publication, and the acquisition of a copy (or the “right of copy”) was limited to guild members.”2 The Stationers Guild was essentially a cartel of London publishers and booksellers. Within this group it was common to view the ‘copy’ as a form of property, it was treated as an exclusive right and was a thing to be owned, traded, and used as collateral for loans.3 But it is important to understand that although the booksellers thought of the “copy” as their property, this concept of property was very different from the idea of “literary property”—a term that came into vogue only much later—and our modern concept of copyright.
The Licensing Acts lasted until almost the end 17th century in England but they were eventually allowed to expire, thus bringing the de jure printing monopoly of the Stationers Guild to an end. The demise of the Licensing Acts has been attributed to a growing distaste for pre-publication censorship, and to dissatisfaction with the inflated prices and monopolistic practices of the Stationers Guild.4
The transition from monopoly and censorship to statutory copyright did not occur in a vacuum. England in the 17th Century witnessed regicide, civil war, dictatorship, the restoration of the monarchy, and a “Glorious Revolution” which cemented Protestantism as the official state religion. Underlying most of these events was a power struggle between the crown and parliament in which parliament eventually prevailed.
The First Copyright Act: the Statute of Anne
In 1710, the British Parliament passed “An Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors, or Purchasers, of such Copies, during the Times therein mentioned”, or as it is usually simply called, The Statute of Anne.
Historians have debated whether the Statute of Anne should be seen as displacing, regulating, or merely entrenching the pre-existing monopoly of London booksellers in the seventeenth century. On the surface, the Statute of Anne was a significant departure from previous customs of the book trade because it placed control of new works of authorship into the hands of authors themselves. Also, unlike the Stationers Guild’s monopoly privileges, the
2 Simon Stern, Towards a Pre-History of the Public Domain: Copyright Law and Its Limits in Eighteenth-Century England, OXFORD LITERATURE HANDBOOK (Draft on file with the author).
3 John Feather, From Rights in Copies to Copyright: The Recognition of Authors’ Rights in English Law and Practice in the Sixteenth and Seventeenth Centuries, 10 CARDOZO ARTS AND ENTERTAINMENT LAW JOURNAL 461-62 (1992).
4 See for example, Letter from Locke to Edward Clarke (Jan. 2, 1693), in The Correspondence of John Locke, ed. E.S.
De Beer, 8 vols. (Oxford: Clarendon Press, 1976-1989), 4: 614-15. “[T]he Company of Stationers . . . haveing got a Patent for all or most of the Ancient Latin Authors (by what right or pretence I know not) claime the text to be theirs and soe will not suffer [others to supply] fairer and more correct Editions. . . . [Thus] a monopoly is put into the hands of the company of ignorant and lazy stationers . . . By this monopoly also of these ancient authors noe body here, that would publish any of them a new with comments or any other advantage can doe it without the leave of the learned judicious stationers.” As cited in Simon Stern, Towards a Pre-History of the Public Domain: Copyright Law and Its Limits in Eighteenth-Century England
author’s rights under the Statute of Anne were for a limited duration. Books published before the Statute were granted twenty-one years of protection under the new law. The authors of books published after the Statute of Anne took effect were entitled to an initial term of 14 years, renewable for a second term of the same length if the author was still alive when the first term ended.
Why 14 years and not some other period? Why two terms for that matter? In Authors and Owners: The Invention of Copyright, Mark Rose, argues that the bifurcated term was an attempt to bring the new author’s right within the scope of the 1624 Statute of Monopolies. The Statute of Monopolies limited the powers of the Crown to grant monopolies, but created an exception relating to any “manner of new manufacture” as long as the monopoly did not exceed a specified limited term: twenty-one years for extant grants; fourteen years for future grants.5
The scope of protection under the Statute of Anne was much narrower than modern copyright. The statute did not explicitly address translations, incomplete copying or the unauthorized creation of sequels. The Statute of Anne also contained a provision whereby booksellers who charged “high and unreasonable” prices could be called into account and potentially fined. The statute did not reach the import of foreign books in languages other than English.
The Battle of the Booksellers, or the Question of Literary Property
Following the enactment of the Statute of Anne, members of the Stationers’ Guild argued that, regardless of the limited times referred to in the statute, they held perpetual common law exclusive printing rights. It is worth noting that members of the Stationers’ Guild never sought to establish such a common law right in the period between the end of the Licensing Acts in 1695 and the enactment of the Statute of Anne in 1710.6
In support of this contention, these London booksellers noted that members of the Guild had a longstanding practice of respecting such claims and would not reprint any text first claimed by another member. The Guild members based in London came into increasing competition with provincial and Scottish publishers who failed to respect their comfortable cartel and the ensuing litigation led to two pivotal cases in the history of copyright, Millar v Taylor and Donaldson v. Becket.
An important part of the context in which this litigation took place is the difference between courts of law and courts of equity. In the 18th century, the English common law courts have jurisdiction to address questions of common-law and could make awards of money damages.
Injunctions on the other hand were the exclusive province of courts of equity. The booksellers pursued their claims in courts of equity because they preferred the remedy of preliminary and permanent injunctions. In addition, by avoiding the common law courts they reduced the risk of facing a serious challenge to the existence of their supposed common-law right.7
5 See MARK ROSE, AUTHORS AND OWNERS: THE INVENTION OF COPYRIGHT, 45-47 (1993); Statute of Monopolies, 1624, 21 Jac., c. 3 (Eng.)
6 Simon Stern, Towards a Pre-History of the Public Domain, supra.
7 Id. “Courts of equity would grant an ex parte injunction that would remain in effect until the defendant appeared to answer the plaintiff’s charges. If the charges proved valid after both sides had been heard, the
Millar v Taylor 98 Eng. Rep. 201 (K.B. 1769)
The argument for perpetual copyright was initially successful. In Millar v. Taylor 98 Eng. Rep.
201 (K.B. 1769) the majority of Court of King’s Bench held that copyright existed as both a statutory and a common-law right. The majority held that when statutory copyright ended, the booksellers’ common law copyright assigned from the author would continue, forever.
In this view, the Statute of Anne merely vested copyright owners with additional remedies over and above those available at common law and in equity. Justice Yates, dissenting, agreed that authors had a right to control the first publication of their manuscripts, but no more. Millar died not long after the ruling and it was never appealed.
Not being bound by decisions of the Court of the King’s Bench, the Scottish Court of Session reached a different position in Hinton v Donaldson (1773, 5 Brn 508)
Donaldson v. Becket (1774) 1 Eng. Rep. 837
This summary relies heavily on Ronan Deazley, Commentary on Donaldson v. Becket (1774), in Primary Sources on Copyright (1450-1900), eds L. Bently & M. Kretschmer, (2008) (original at www.copyrighthistory.org).
In 1771 a London bookseller and publisher by the name of Thomas Becket sought an injunction from the court of Chancery to prevent the Scottish bookseller Alexander Donaldson from printing the The Seasons by the poet James Thomson who had died in 1748.
The rights conferred on The Seasons by the Statute of Anne had long since expired, thus the basis of the publisher’s claim was a right at common law beyond the mere right of first publication.
Donaldson v. Becket has confused generations of judges, commentators and students because the procedural issues are somewhat baroque and because the early reports of the case were entirely inadequate. The case was heard before Lord Chancellor Apsley who considered himself bound by Millar v. Taylor to grant the plaintiff a perpetual injunction.
Lord Chancellor Apsley’s decree was appealed to House of Lords. The twelve common law judges of the House of Lords heard the arguments of counsel for both sides and gave their answers to five questions. The fourth and fifth questions overlap with the first three. The questions were:
1. Whether, at common law, an author of any book or literary composition, had the sole right of first printing and publishing the same for sale, and might bring an action against any person who printed, published, and sold the same, without his consent?
2. If the author had such right originally, did the law take it away upon his printing and publishing such book or literary composition, and might any person afterward reprint and sell, for his own benefit, such book or literary composition, against the will of the author?
court could grant a permanent injunction. However, a preliminary injunction was usually sufficient for the plaintiff’s needs and the dispute rarely proceeded any further. This approach proved especially attractive to the booksellers once they saw that the Chancery court would not ask whether the statutory term of protection had expired. The equity courts were willing to entertain the hypothetical premise that the plaintiff had a valid claim, and to proceed from there. Thus by avoiding the common-law courts, the booksellers kept alive their claims about common-law copyright for more than six decades, using a form of pleading that required them to presuppose the existence, at common law, of the very right whose dubious status had led them to Chancery in the first place.”
3. If such action would have lain at common law, is it taken away by the Statute of 8th Anne: and is an author, by the said statute, precluded from every remedy except on the foundation of the said statute, and on the terms and conditions prescribed thereby?
4. Whether the author of any literary composition, and his assigns, had the sole right of printing and publishing the same, in perpetuity, by the common law?
5. Whether this right is any way impeached, restrained, or taken away, by the statute 8th Anne?
The traditional interpretation of Donaldson v. Becket, reflected in the U.S. Supreme Court’s first copyright case, Wheaton v. Peters 33 U.S. 591 (1834), is that “a majority of the judges were in favor of the common law right of authors [beyond a right of first publication], but that the same had been taken away by the statute.” However, this traditional view is not correct, nor was it followed in the United States, as we will see shortly.
The confusion begins with the fact that the votes of the common law judges were misreported. Ronan Deazley explains this misreporting in detail in his illuminating Commentary on Donaldson v. Becket. Deazley also shows how the significance of the votes of the common law judges of the House of Lords is often misunderstood. The House of Lords consisted of both peers who were common law judges and peers who were not. Although the full House of Lords (the common law judges and the other peers combined) almost always followed the opinion of the majority of its common law judges, it was not bound to do so and in this case it did not. Five peers also spoke to the issue and of these, only one favored a common law right.
In addition, whereas the judges had answered five distinct questions raised by the case, the only question put to the peers was whether the perpetual injunction should be overturned.
When the House of Lords voted to reverse the decision below, it did not clearly indicate whether it was because there was no common law copyright, no common law copyright beyond a right of first publication, or whether the Statute of Anne abrogated a pre-existing common law copyright. Looking to the opinions of the peers on the question of common law copyright yields a tied vote: seven judges and one peer found such a right, but four judges and four peers and found against it. This tied vote does not mean that the issue was unresolved, however. There were 84 Lords are listed as in attendance the day the House of Lords finally voted to reverse the decree, although their individual opinions are unknown.
What matters, however, is that in stating the law of the case in Donaldson v. Becket, Lord Chancellor Apsley explicitly denied the existence of any common law right, and it was thus this position that carried the day.
[Placeholder: A future version of these materials may contain a more detailed summary of the argument in Donaldson v. Becket]
The Battle of the Booksellers 2.0, or the Question of Literary Property in United States
Wheaton v. Peters was a dispute between an early Supreme Court reporter, Wheaton, and his successor, Peters. Wheaton had compiled the opinions of the Supreme Court from his
