U.S. COPYRIGHT LAW DIGEST REVISER · CRIMINAL LIABILITIES ... [set out in upper and lower case ... works are in public domain if published prior to Jan. 1, 1978. For purpose of this

U.S. COPYRIGHT LAW DIGEST REVISERBaker Botts L.L.P.

30 Rockefeller PlazaNew York, New York 10112-4498

Telephone: 212-408-2500Fax: 212-408-2501

E-mail: [email protected] Address: http://www.bakerbotts.com

Other Offıces: Dallas, Houston, Austin, Washington, London, Moscow, Baku, Riyadh

Reviser Profile

Baker Botts L.L.P. currently has approximately 700 lawyers and offices in New York, Austin, Baku, Dallas, Houston, London, Moscow,Riyadh, and Washington and, as a Lex Mundi member firm, has an established network of relationships with leading law firms around theworld. Baker Botts lawyers focus on a broad range of legal practices including trial, corporate and securities, international, oil and gas, realestate, finance, business reorganizations, government contracts, tax, employee benefits, business and estate planning, legislation and publicpolicy, environmental, energy, intellectual property and technology law.

In November of 1997, the New York intellectual property law firm Brumbaugh, Graves, Donohue & Raymond, merged into Baker & Botts,L.L.P. Joined by 45 Brumbaugh, Graves intellectual property lawyers, Baker Botts is the first general practice law firm to offer more than 100attorneys dedicated to the procurement and litigation of patents, copyrights, trademarks and other intellectual property matters.

Specialties: The firm’s intellectual property specialties include patent, trademark, copyright, trade secret, unfair competition, false ad-vertising, entertainment, media, sports and computer law, and patent antitrust matters, as well as licensing and technology transfer andEnvironmental Protection Agency-related matters. The firm’s lawyers have experience at all levels of trial and appellate work and have beenparticularly successful in jury trials involving intellectual property issues. They have resolved patent, trademark, copyright, trade secret andunfair competition disputes in virtually all major areas of technology, giving attention to counseling and dispute avoidance.

The firm’s 120 lawyers in its Intellectual Property Group bring together the diverse experience and expertise of lawyers with degrees inall important areas of technology, including medical degrees, Ph.D.s in biotechnology and chemistry; and masters degrees in physics,immunology, computer science, and mechanical and electrical engineering. Some have worked as educators or as scientists and engineers formajor corporations.

Clients: The firm’s clients in both the patent and trademark areas come from the United States, the European Community, the Pacific Rim,Mexico and Canada and from many diverse industries, including chemical, tires, rubber, pharmaceutical, biotechnology, telecommunications,nuclear, computers, computer graphics, paper, textiles, cosmetics, shoes, clothing, toys, food, banking, airlines, restaurants, hotels, electronics,elevator control systems and equipment, building materials and construction techniques, automotive, marketing and merchandising, as well asuniversities, hospitals and other nonprofit groups.

Interests: The firm’s lawyers traditionally have been actively involved in numerous bar association activities including, among others,American Bar Association, American Intellectual Property Law Association, Licensing Executives Society, and International TrademarkAssociation as well as major technical societies such as Institute of Electrical and Electronics Engineers, American Society of MechanicalEngineers, American Chemical Society, and American Academy for the Advancement of Science. Several of the firm’s partners have servedas officers and board members of these associations and have participated in and chaired major committees of all of these associations. Inaddition, several of the firm’s lawyers are adjunct professors at law schools and many have been panelists or speakers at a large number ofindustry conferences.

UNITED STATES COPYRIGHTLAW DIGEST

(The following is a list of all Topics, including cross-references, covered in this Digest.)

Topic Page

INTRODUCTION—THE STATUTORY COPYRIGHT SYSTEM . . . . . . . . 1ABANDONMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2ABRIDGEMENTS, ADAPTATIONS, TRANSLATIONS, DRAMATIZATIONS,

OTHER VERSIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2ACCESS TO WORK . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2ACCOUNTING . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2ADVERTISEMENTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2ALIENS (Protection in U.S.A.) . . . . . . . . . . . . . . . . . . . . . . . . 2ANONYMOUS WORK . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2ANTI-CIRCUMVENTION . . . . . . . . . . . . . . . . . . . . . . . . . . . 2ANTI-TRUST . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2APPEALS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3APPLICATION FOR REGISTRATION . . . . . . . . . . . . . . . . . . . . 3APPLICATION FOR RENEWAL . . . . . . . . . . . . . . . . . . . . . . . 3ARCHITECTURAL PLANS AND WORKS . . . . . . . . . . . . . . . . . . 3ARCHITECTURE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3ART . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3ASSIGNMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3ATTORNEYS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4ATTORNEY’S FEES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4ATTRIBUTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4AUDIOVISUAL WORKS . . . . . . . . . . . . . . . . . . . . . . . . . . . 4AUTHOR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4AUTHORSHIP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4BANKRUPTCY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4BERNE CONVENTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4BLIND . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5BOAT HULL . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5BUENOS AIRES CONVENTION . . . . . . . . . . . . . . . . . . . . . . . 5BUILDINGS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5BURLESQUES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5CABLE TELEVISION SYSTEMS . . . . . . . . . . . . . . . . . . . . . . . 5CATALOGS (TRADE) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5CERTIFICATE OF REGISTRATION . . . . . . . . . . . . . . . . . . . . . 5CHARACTERS, NAMES AND TITLES . . . . . . . . . . . . . . . . . . . . 5CHILDREN . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5CHOREOGRAPHY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5CLASSIFICATION OF WORKS FOR REGISTRATION . . . . . . . . . . . . 5CO-AUTHORS AND CO-OWNERS . . . . . . . . . . . . . . . . . . . . . . 5COLLECTIVE WORK . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5COMMISSIONED WORKS . . . . . . . . . . . . . . . . . . . . . . . . . . 5COMMON LAW RIGHTS . . . . . . . . . . . . . . . . . . . . . . . . . . 5COMMUNITY ANTENNA TELEVISION (CATV) . . . . . . . . . . . . . . . 6COMMUNITY PROPERTY . . . . . . . . . . . . . . . . . . . . . . . . . . 6COMPENDIUM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6COMPILATION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6COMPULSORY LICENSES UNDER MUSICAL MECHANICAL RIGHTS . . . 6COMPUTER MAINTENANCE . . . . . . . . . . . . . . . . . . . . . . . . 6COMPUTER PROGRAMS . . . . . . . . . . . . . . . . . . . . . . . . . . 6CONTESTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6CONVENTIONS, PROCLAMATIONS AND TREATIES . . . . . . . . . . . . 6COPIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6COPY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6COPYRIGHT CERTIFICATE . . . . . . . . . . . . . . . . . . . . . . . . . 6COPYRIGHT OFFICE . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6COPYRIGHT MANAGEMENT INFORMATION . . . . . . . . . . . . . . . 7COPYRIGHT PROTECTION SYSTEMS . . . . . . . . . . . . . . . . . . . 7COPYRIGHTABLE WORKS . . . . . . . . . . . . . . . . . . . . . . . . . 7COSTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7COUNTERFEITING . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7COUNTRY OF ORIGIN . . . . . . . . . . . . . . . . . . . . . . . . . . . 7COURT REPORTERS’ TRANSCRIPTS . . . . . . . . . . . . . . . . . . . . 7CREDITORS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

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CRIMINAL LIABILITIES . . . . . . . . . . . . . . . . . . . . . . . . . . . 7CUSTOMS REGULATIONS . . . . . . . . . . . . . . . . . . . . . . . . . . 7DAMAGES FOR INFRINGEMENT . . . . . . . . . . . . . . . . . . . . . . 7DATABASES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7DATE OF PUBLICATION . . . . . . . . . . . . . . . . . . . . . . . . . . 7DEATH . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7DECLARATORY JUDGMENTS . . . . . . . . . . . . . . . . . . . . . . . . 8DEFENDANTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8DEFENSES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8DEPOSIT AND REGISTRATION . . . . . . . . . . . . . . . . . . . . . . . 8DERIVATIVE COPYRIGHT WORKS . . . . . . . . . . . . . . . . . . . . . 8DESIGN PATENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8DESIGNS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8DESTRUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8DIGITAL/ONLINE ELECTRONIC RIGHTS . . . . . . . . . . . . . . . . . . 8DIGITAL RECORDING AND TRANSMISSION . . . . . . . . . . . . . . . . 9DIRECTORIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9DISPLAY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9DISTORTION AND DESTRUCTION . . . . . . . . . . . . . . . . . . . . . 9DISTRIBUTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9DOLLS AND TOYS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9DRAMATIZATIONS, ADAPTATIONS, TRANSLATIONS, ETC. . . . . . . . . 9DURATION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9EMPLOYERS AS AUTHORS . . . . . . . . . . . . . . . . . . . . . . . . . 9ENCRYPTION/TECHNOLOGY CIRCUMVENTION . . . . . . . . . . . . . . 9EPHEMERAL RECORDINGS . . . . . . . . . . . . . . . . . . . . . . . . . 10EQUITABLE JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . 10ESTOPPEL OF LICENSEE . . . . . . . . . . . . . . . . . . . . . . . . . . 10EVIDENCE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10EXECUTORS AND ADMINISTRATORS . . . . . . . . . . . . . . . . . . . 10EXTENSION OF TERM . . . . . . . . . . . . . . . . . . . . . . . . . . . 10FABRIC DESIGNS, JEWELRY, ETC. . . . . . . . . . . . . . . . . . . . . . 10FAIR USE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10FEES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10FIRST SALE DOCTRINE . . . . . . . . . . . . . . . . . . . . . . . . . . . 10FIXATION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10FOREIGN RIGHTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10FORFEITURE AND ABANDONMENT . . . . . . . . . . . . . . . . . . . . 11FORMS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11FRAUD . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11GAMES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11GIFT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11GOVERNMENTAL EMPLOYEES . . . . . . . . . . . . . . . . . . . . . . . 11GOVERNMENTAL INFRINGEMENT . . . . . . . . . . . . . . . . . . . . . 11GOVERNMENTAL PUBLICATIONS . . . . . . . . . . . . . . . . . . . . . 11GOVERNMENT PROPRIETORS . . . . . . . . . . . . . . . . . . . . . . . 11GRAPHIC, PICTORIAL, SCULPTURAL WORKS . . . . . . . . . . . . . . . 11GREY MARKET GOODS . . . . . . . . . . . . . . . . . . . . . . . . . . . 11HOTEL REPLAY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11IDEAS, PLANS, SYSTEMS, METHODS, KITS, ETC. . . . . . . . . . . . . . 11ILLEGITIMATE CHILDREN . . . . . . . . . . . . . . . . . . . . . . . . . 12IMPORTATION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12INFRINGEMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12INJUNCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12INTERNATIONAL COPYRIGHT ARRANGEMENTS . . . . . . . . . . . . . 12INTERNET . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12JEWELRY, DISHES, TAPESTRIES, SILVERWARE, ETC. . . . . . . . . . . . 13JOINT AUTHORSHIP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13JOINT LIABILITY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13JOINT OWNERSHIP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13JUKE BOXES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13JURISDICTION AND VENUE . . . . . . . . . . . . . . . . . . . . . . . . 13JURISDICTION (SUPPLEMENTARY) . . . . . . . . . . . . . . . . . . . . . 13

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JURY TRIAL . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13LABELS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13LETTERS, DIARIES, JOURNALS, PRIVATE NOTES . . . . . . . . . . . . . 13LIBRARIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13LICENSES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13LIENS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14LIMITATION OF ACTIONS . . . . . . . . . . . . . . . . . . . . . . . . . . 14LOOSE-LEAF PUBLICATIONS . . . . . . . . . . . . . . . . . . . . . . . . 15MAGAZINES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15MANUFACTURING PROVISIONS . . . . . . . . . . . . . . . . . . . . . . 15MAPS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15MECHANICAL RIGHTS (DRAMAS AND MUSIC) . . . . . . . . . . . . . . 15MERGER . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15MISUSE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15MONOPOLY AND TRADE RESTRAINTS . . . . . . . . . . . . . . . . . . 15MORAL RIGHTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15MORTGAGES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15MOTION PICTURE COPYRIGHTS . . . . . . . . . . . . . . . . . . . . . . 15MOTION PICTURE SOUNDTRACKS . . . . . . . . . . . . . . . . . . . . . 15MUSIC RECORDINGS . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15NAME OR TITLE OF WORK . . . . . . . . . . . . . . . . . . . . . . . . 15NAMES (ANONYMOUS, ASSUMED, FICTITIOUS) . . . . . . . . . . . . . 15NATIONALITY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15NEIGHBORING RIGHTS CONVENTION . . . . . . . . . . . . . . . . . . . 15NON-COPYRIGHTABLE WORKS . . . . . . . . . . . . . . . . . . . . . . 16NON-PUBLIC PERFORMANCES OR RENDITIONS . . . . . . . . . . . . . 16NOTICE OF COPYRIGHT . . . . . . . . . . . . . . . . . . . . . . . . . . 16NOTICE OF INTENT TO ENFORCE COPYRIGHT . . . . . . . . . . . . . . 16OBSCENITY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16ORIGINALITY AND AUTHORSHIP . . . . . . . . . . . . . . . . . . . . . 16PAINTINGS, ETCHINGS, ILLUSTRATIONS, ETC . . . . . . . . . . . . . . 17PANTOMIMES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17PARAPHRASING . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17PARODY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17PARTIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17PATENTED DESIGN . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17PERFORM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17PERIODICALS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17PHONOGRAMS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PHONOGRAPH RECORDS (PHONORECORDS) AND TAPES . . . . . . . . 18PHOTOCOPYING . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PICTORIAL, GRAPHIC AND SCULPTURAL WORKS . . . . . . . . . . . . 18PLAGIARISM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PREEMPTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PRESUMPTIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PRINTS AND LABELS . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PRIVACY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PROFITS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PROPRIETOR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PROTECTIVE DEVICES . . . . . . . . . . . . . . . . . . . . . . . . . . . 18PSEUDONYMOUS WORK . . . . . . . . . . . . . . . . . . . . . . . . . . 19PUBLIC BROADCASTING . . . . . . . . . . . . . . . . . . . . . . . . . . 19PUBLIC DOMAIN . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19PUBLIC PERFORMANCE OR RENDITION . . . . . . . . . . . . . . . . . 19PUBLIC RECEPTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19PUBLICATION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19PUBLICATION CONTRACTS . . . . . . . . . . . . . . . . . . . . . . . . . 19PUBLICATIONS BY INTERNATIONAL ORGANIZATIONS . . . . . . . . . . 19PUBLICITY (RIGHT OF) . . . . . . . . . . . . . . . . . . . . . . . . . . . 19PUNITIVE OR EXEMPLARY DAMAGES . . . . . . . . . . . . . . . . . . 19PURPOSE OF CREATION . . . . . . . . . . . . . . . . . . . . . . . . . . 19RECORDING . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

Topic Page

RECORDINGS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19REGISTER OF COPYRIGHTS . . . . . . . . . . . . . . . . . . . . . . . . 19REGISTRATION OF CLAIM TO COPYRIGHT . . . . . . . . . . . . . . . . 19REGULATIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19REMEDIES FOR INFRINGEMENT . . . . . . . . . . . . . . . . . . . . . . 19REMOVAL . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21RENEWAL OF COPYRIGHT . . . . . . . . . . . . . . . . . . . . . . . . . 21RENTAL . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21REPRODUCE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21RESTORATION OF COPYRIGHT . . . . . . . . . . . . . . . . . . . . . . . 21RIGHTS UNDER COPYRIGHT . . . . . . . . . . . . . . . . . . . . . . . . 21ROYALTIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SALE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SAMPLING . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SCENES A FAIRE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SCULPTURAL WORKS . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SECRETS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SEIZURE, IMPOUNDING AND DESTRUCTION . . . . . . . . . . . . . . . 22SEMICONDUCTOR CHIPS . . . . . . . . . . . . . . . . . . . . . . . . . . 22SERVICE PROVIDERS . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SLOGANS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SOFTWARE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22SOUND RECORDINGS . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23SPEECHES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23STATE ACTIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23STATE LAWS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23STATES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23STATUETTES (THREE-DIMENSIONAL WORKS) . . . . . . . . . . . . . . 23STATUTORY DAMAGES . . . . . . . . . . . . . . . . . . . . . . . . . . . 23STOLEN PROPERTY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23SUBJECT MATTER OF COPYRIGHT . . . . . . . . . . . . . . . . . . . . 23TAPES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23TAPING . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23TELEVISION INFRINGEMENT . . . . . . . . . . . . . . . . . . . . . . . . 23TERMINATION OF TRANSFER . . . . . . . . . . . . . . . . . . . . . . . 23TERM OF COPYRIGHT . . . . . . . . . . . . . . . . . . . . . . . . . . . 23TRADE CATALOGS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23TRADE RESTRAINTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23TRADE SECRETS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23TRANSFER OF RIGHTS . . . . . . . . . . . . . . . . . . . . . . . . . . . 23TRANSITIONAL PROVISIONS . . . . . . . . . . . . . . . . . . . . . . . . 23TRANSLATIONS, ADAPTATIONS, DRAMATIZATIONS, OTHER VERSIONS,

ETC. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23TRANSMISSIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23UNCOPYRIGHTABLE MATERIALS . . . . . . . . . . . . . . . . . . . . . 23UNFAIR COMPETITION . . . . . . . . . . . . . . . . . . . . . . . . . . . 23UNFIXED WORKS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24UNIFORM COMPUTER INFORMATION TRANSACTIONS ACT . . . . . . . 24UNIVERSAL COPYRIGHT CONVENTION . . . . . . . . . . . . . . . . . . 24UNPUBLISHED WORKS . . . . . . . . . . . . . . . . . . . . . . . . . . . 25USE (MECHANICAL) FOR MUSIC . . . . . . . . . . . . . . . . . . . . . 25USEFUL ARTICLES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25VIDEOTAPES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25VISUAL ART . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25WARRANTIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26WEBCASTING . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26WIDOW OR WIDOWER . . . . . . . . . . . . . . . . . . . . . . . . . . . 26WORKS FOR HIRE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26WORKS OF ART . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO) . . . . . . 26WORLD TRADE ORGANIZATION (WTO) . . . . . . . . . . . . . . . . . . 26FORMS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

UNITED STATES COPYRIGHT LAW DIGEST

UNITED STATES COPYRIGHTLAW DIGEST

Revised for 2007 edition by

BAKER BOTTS L.L.P., of New York.

(Unless otherwise specified, all references to sections are to sections of Title 17, U. S. Code Annotated, entitled ‘‘Copyrights’’ as enacted into law on Oct. 19, 1976, and as sinceamended. All references to Regulations are to sections of the Regulations of the Copyright Office as set forth in sections 201 to 259 of Chapter II, Title 37, Code of Federal Regulations(CFR), as amended. USPQ indicates United States Patent Quarterly. Cross references in this digest are to the principal topics [set out in boldface capital letters], subheads thereunder

[set out in upper and lower case boldface] and catchlines under the principal topics [set out in italics].)

NOTE: On Jan. 1, 1978, first major revision of U.S. Copyright statute since 1909 became effective. This new statute changed existing law in many respects. However, for many purposesprior law is still important, for example to determine whether works are in public domain if published prior to Jan. 1, 1978. For purpose of this Digest new law will be referredto except in those cases where it is expressly stated that reference is being made to old law. There have been several amendments to the statute since 1978.

While much of decisional law referred to herein was rendered under prior law, it is still pertinent under new law.

NOTE: Upon adoption of GATT Agreement in 1994 major revisions were made to the Copyright Statute to comply more fully with the Berne Convention. Restoration of copyrightwas made in certain foreign works which had fallen into the public domain in the U.S. because of improper nationality or subject matter or failure to comply with U.S. formalities.(§104A). Certain performing rights were recognized in §1101. The effective date of these new provisions was January 1, 1996 and they have been incorporated into this digest.

NOTE: Federal Copyright Law and its application to digital information is one of the hottest areas of judicial and legislative activity. The National Conference of Commissionerson Uniform State Laws has promulgated the Uniform Computer Information Transactions Act (UCITA) affecting contractual restrictions on copying, fair use and decoding of encrypteddata. Courts are working out rules to determine questions of exercise of personal jurisdiction in cyberspace, as well as copyright infringement of digital products.

Several amendments have been made to U.S. Copyright Law in the last year. These include:

Family Entertainment and Copyright Act (P.L. 109-9) signed Apr. 27, 2005 (html) (pdf) which contains, as Title 1, Artists Rights and Theft Prevention Act. This creates criminalliability for certain acts of willful copyright infringement, including work made available on computer network accessible to members of public if accused infringer knew or shouldhave known work was intended for commercial distribution. (17 U.S.C. 103[a]).

Satellite Home Viewer Extension and Reauthorization Act of 2004 (contained in Consolidated Appropriations Act, 2005, P.L. 108-447) signed Dec. 7, 2004 (html) (pdf).

Individuals with Disabilities Education Improvement Act of 2004 §306 amends §121 of Copyright Law (P.L. 108-446) signed Dec. 3, 2004 (html) (pdf).

Copyright Royalty and Distribution Reform Act of 2004 (P.L. 108-419) signed Nov. 30, 2004 (html) (pdf).

Note: This revision incorporates legislation through July 2006.

INTRODUCTION—THE STATUTORY COPYRIGHT SYSTEM:

The copyright system as well as the patent system, in the United States, derive fromArt. I, §8 of the U.S. Constitution, under which Congress is empowered to promote theprogress of science and the useful arts, by securing, for limited times, to authors andinventors, the exclusive right to their respective writings and discoveries.

The obtaining as well as protecting of copyright are therefore statutory and federal inscope. Remedies against infringement are available under federal law in U.S. courts, asdistinguished from State courts, regardless of whether there is diversity of citizenship ofthe parties, or interstate commerce involved.

Copyright laws of U.S. are codified and enacted into positive law, to be cited as ‘‘Title17, U.S.C. §. . . . . . ,’’ by §101 of Act of Oct. 19, 1976. Prior statute was that of July30, 1947 which codified various statutes relating to copyright. In testing validity or effectof actions taking place prior to Jan. 1, 1978 reference must be made to prior statute.

Current statute is first major revision of U.S. Copyright laws since 1909. Manychanges were made including substantial elimination of dual system of common law andstatutory copyright.

Register of Copyrights is authorized, pursuant to §702 of Act, to make rules andregulations governing conduct of Copyright Office. These will be found in 37 CFR §200ff.

Updated version of Copyright Office’s Circular 92, “Copyright Law of the UnitedStates and Related Laws Contained in Title 17 of the United States Code”, is nowavailable in paperback through Government Printing Office (GPO), http://www.gpoaccess.gov, or online at Copyright Office’s website, http://www.copyright.gov. GPOaccepts checks drawn on U.S. banks; international Visa, MasterCard, Discover/NOVUS,and American Express accounts; Superintendent of Documents deposit accounts;UNESCO coupons; and international postal money orders.

Protectible Works.—Copyright protection subsists in original works of authorshipfixed in any tangible medium of expression, now known or later developed from whichthey can be perceived, reproduced or otherwise communicated either directly or with aidof machine. No copyright exists in unfixed works. (§102).

Acquisition of Copyright.—Copyright in work created after Jan. 1, 1978 is acquiredby author when it is fixed in tangible medium of expression. Such copyright does notrequire publication in order to be statutory right as under prior law. Each part of workis copyrighted as it is fixed. Registration issued by Copyright Office confirms this rightand adds certain statutory presumptions. (§201).

Copyright requires substantial rather than trivial variations over prior works. Origi-nality requirement cannot be satisfied simply by demonstration of physical skill, sub-stantial effort or special training. There must be artistic skill. (2d Cir., 1976, 536 F.2d486, 189 USPQ 753).

Comparison With System Under Prior Law.—Under law prior to 1978 there wasdual system of common law and statutory copyright. Former existing until publicationand latter being created when work was first published with proper notice. Under presentlaw, statutory copyright is created immediately upon its being fixed in copy. To sub-stantial extent common law copyright is done away with by new statue. Where federalstatutory law has not worked preemption common law still exists.

It is important to know both present and prior laws because validity of copyright istested under law in effect at time of creation of copyright and infringement is tested undercurrent statute.

Comparison With Other Countries.—Copyright is based on proprietary rights legalsystems such as U.K. and Commonwealth Countries recognize. It is similar to but distinctfrom “authors rights” or “neighboring rights” systems for protecting proprietary rightsthat are norm in civil law countries around the world. Copyright in other countries, themajority of which belong to the International Union for the Protection of Literary andArtistic Works (the so-called Berne Convention), is somewhat analogous to our systemof protecting exclusive rights prior to publication, without publication in such countriesduring term of copyright having dedicatory effect of throwing work into public domain.Copyrights in Berne Convention and other countries are ordinarily protectible frommoment of creation by author without enjoyment and exercise of rights being subject toany formality. However, they are not perpetual; term of copyright is usually fixed byproviding for specified moment when all works of particular author will fall simulta-neously into public domain, such as specified period of years (usually 70) after his death.Copyright protection in each country must be tested by that country’s law. As is ex-plained in detail in Circular 38a of Copyright Office, there are no international copyrights.

International Arrangements.—U.S. has bilateral copyright arrangements, primarilyby presidential proclamation and in a few instances by treaty, with over 30 countries, aswell as a few multilateral arrangements. These provide mainly for reciprocal nationaltreatment. We permit nationals of these countries to secure copyright protection in U.S.on same basis as U.S. citizens and nonnationals domiciled here, and in turn such othercountries presumably give our nationals same copyright protection as they give their ownnationals.

The Berne Convention.—On Sept. 9, 1886, ten nations formed The Berne Convention.During ensuing years, Convention became preeminent international arrangement relatingto copyright, with 76 member nations. U.S. did not join Convention because of itsincompatibility with domestic law, principally in Convention’s requirement that there beno formalities to obtaining or enforcing of copyright. Former U.S. domestic law man-dated such formalities. One hundred and two years later, by amendment to U.S. copyrightlaw eliminating certain formalities, way was opened for U.S. adherence to Convention.In Nov. 1988, President Reagan signed such legislation effective as of Mar. 1, 1989 andon that date, U.S. became adherent to Berne Convention. Subsequently major revisionswere made to U.S. statute, including elimination of many formalities, in order to complywith our Berne obligations.

Convention in effect provides for equal protection of copyright arising in one BerneConvention country in all other Berne Convention countries.

The Universal Copyright Convention.—On Sept. 16, 1955, this Convention, signedby the United States and some 39 other countries (see Universal Copyright Convention,infra, subhead Signatories) came into force as to the United States and the 11 othersignatories which had deposited their ratifications. It has since come into force as to manyadditional countries, making a total of some 60 countries where it is now effective. ThisConvention provides for recognition and protection in member countries, on nationaltreatment basis, of published and unpublished works of nondomiciled nationals of othermember countries, or works first published (regardless of author’s nationality) in anyother member country, without any formalities conditioning acquisition or enjoyment ofsuch protection, other than, as to published works, that prescribed form of notice ofcopyright be affixed thereto in appropriate place.

For more detailed discussion, see topic Universal Copyright Convention.GATT Treaty.—Adherence by U.S. to this agreement in 1994 expanded our rights and

obligations in many areas of intellectual property, including addition of new §§104A and

See note at head of Digest as to 2006 legislation covered.USA–COP – 1

INTRODUCTION—THE STATUTORY COPYRIGHT SYSTEM . . . continued1101 to Copyright Statute and extension of rights to all citizens of countries who are orbecome members of World Trade Organization (WTO) formed in 1994.

World Intellectual Property Organization (WIPO).—Convention EstablishingWorld Intellectual Property Organization (WIPO) was also signed at Stockholm on July14, 1967, by some 51 countries, including U.S.A.

U.S. deposited its instrument of ratification on May 25, 1970 (effective Aug. 25, 1970),but only as to administrative provisions of 1967 Stockholm Act of Paris Convention forProtection of Industrial Property (patents and trademarks).

ABANDONMENT:

See topic Forfeiture and Abandonment.

ABRIDGEMENTS, ADAPTATIONS, TRANSLATIONS, DRAMATIZATIONS,OTHER VERSIONS:

See topic Derivative Copyright Works.

ACCESS TO WORK:

In order to prove copyright infringement, plaintiff must prove defendant’s access tocopyrighted work. Access is defined as reasonable opportunity to see or hear work.

See topic Infringement, subhead Access and Appropriation Necessary.

ACCOUNTING:

Right of copyright owner to accounting of profits made by infringer is expresslyauthorized by statute. (§504). Copyright statute expressly provides for injunctive reliefand accounting of profits and damages as cumulative remedies, rather than injunctiverelief being condition precedent to accounting of profits. (§§502-504).

As to determining the portion of the infringer’s profits recoverable, and whether actualdamages may be awarded in addition to profits, or statutory damages in lieu of both, seetopic Remedies for Infringement.

Joint owners have duty of accounting to each other for profits from use of copyright,but this remedy is governed by State law.

ADVERTISEMENTS:

Ownership.—In absence of agreement to contrary, creator of advertisement ownscopyright in advertisements published in copyrighted newspaper, and owner of news-paper cannot maintain copyright infringement suit against another newspaper for repro-duction of advertisements at request of advertiser. Copyright notice in name of owner ofcompilation does not suffice as notice for advertisement therein. (§404[a]).

ALIENS (Protection in U.S.A.):

Those persons and organizations which are allowed to obtain copyright protection inU.S. are set out in §104.

For protection of U.S. citizens or U.S. works in foreign countries, see topic ForeignRights, infra.

Copyright of published work will depend upon country at first publication, domicile,or nationality of alien author. Protection of unpublished works does not depend ondomicile or nationality. Copyright in published works extends to works of authors whoare citizens or subjects of foreign states or nation only: (a) When such author is domiciledwithin U.S. at time of first publication of his work; (b) when work is first published insuch foreign state or nation that is treaty party, i.e., is signatory to international agreementto which U.S. is also party, e.g., Berne Convention, U.C.C., WTO Agreement, or WIPOtreaty; or (c) work within scope of Presidential proclamation issued for countries whichprovide reciprocal protection to U.S. works. (§104[b][6]).

National Failure to Qualify.—Certain foreign works which were in public domain inU.S. because of ineligibility due to nationality were restored to copyright on Jan. 1, 1996.(§104A).

Publication By International Organizations.—Copyright protection is granted underU.S. law to works first published by U.N. or one of its specialized agencies or byOrganization of American States. (§104[b][5]).

Stateless Persons.—Copyright protection is granted to stateless person wherever thatperson may be domiciled. (§104[b][1]).

Treaties and Proclamations Applicable.—Citizens or subjects of most foreign coun-tries, may secure statutory copyright in the U.S. on same terms as U.S. citizens may, byreason of treaties with their respective countries or proclamations promulgated by Presi-dent of U.S. or international agreements such as Berne Convention and Universal Copy-right Convention. As to copyright protection received abroad by U.S. nationals there-under, see topics Foreign Rights and Universal Copyright Convention.

Countries with Relations with U.S.—Available on request from Register of Copy-rights, Library of Congress, Washington, D. C. 20540, U.S.A., is Copyright OfficeCircular 38, on International Copyright Protection, giving in capsule form some generalinformation concerning ‘‘Protection in the United States for foreign works,’’ and ‘‘Pro-tection in other countries for United States works.’’ Also available is Copyright OfficeCircular 38a on International Copyright Relations of the United States with Other In-dependent Countries, which lists those having Universal Copyright Convention, BuenosAires Convention, or Bilateral Proclamation copyright relations with U.S., or any one ormore of such relations, as well as those countries with which U.S. copyright relationsare ‘‘None’’ or ‘‘Unclear.’’ (For current listings, see Copyright Office Circular 38a).

Proclaimed Bilateral Relationships.—Bilateral relationships (exchange of proclama-tions between heads of State) which we have had down through the years; each proc-lamation making copyright protection available to nationals of other country on samebasis as to its own nationals, have since been supplemented in most instances by treatyrelationships, particularly mutual membership in Universal Copyright Convention and theBerne Convention.

In addition to relations under Berne Conventions or U.C.C., U.S. has bilateral relationswith countries identified in Circular 38a.

World Trade Organization.—Adherence of U.S. to GATT Treaty in 1994 createdcopyright relationships with countries which are members of World Trade Organizationbut may not be members of Berne or U.C.C. Conventions.

Copyright Relations Status ‘‘None’’ or ‘‘Unclear.’’—Status of U.S. copyright rela-tions with following countries is respectively below indicated as ‘‘None’’ or ‘‘Unclear,’’as case may be (Copyright Office Circular 38a):

No copyright relations: Afghanistan; Belau; Bhutan; Ethiopia; Iran; Iraq; Nepal;Oman; San Marino; Tonga; Turkey; Yemen (San’a).

Copyright relations ‘‘unclear’’: Belau, Comoros, Jordan, Kiribati, Democratic People’sRepublic of Korea, Nauru, Palau, Sao Tome and Principe, Seychelles, Somalia, Sudan,Syria, Tuvalu, Vanuatu, Western Samoa, Yemen (Aden).

For type of relations with remaining countries see Circular 38a.As to ‘‘Unclear,’’ Copyright Office defines this status as prevailing with certain coun-

tries which became independent since 1943, but have not established copyright relationswith U.S., although country may be honoring obligations incurred under its formerpolitical status.

Assignment by or to Ineligible Alien.—Alien author not entitled to secure copyrightin U.S., cannot confer any right to do so upon assignee, even if latter is citizen of U.S.(214 U.S. 236). Where copyright is properly secured, there is no prohibition againsttransferring it to alien.

Analog Transmissions.—Copyright owner’s exclusive right to perform sound record-ing does not apply to analog recording copyrights. Copyright owners of sound recordingsare granted limited exclusive rights in certain digital transmissions. (§114).

ANONYMOUS WORK:Work as to which no natural person is identified as author. (§101). Duration of

copyright on anonymous work is same as that of Pseudonymous Work as set forth undersuch topic, 120 years from creation or 95 years from publication whichever is sooner.Filing in Copyright Office of name of author triggers life plus 70 years term. (§302).

ANTI-CIRCUMVENTION:Digital Millennium Copyright Act, Public Law 105-304 (1998), (see below) added new

c. 12 to Tit. 17 United States Code, which among other things prohibits circumventionof access control technologies employed by copyright owners to protect their works.Specifically, §1201 provides that “No person shall circumvent a technological measurethat effectively controls access to a work protected under this title.” This prohibition oncircumvention became effective on Oct. 28, 2000. Prior to that date, Copyright Officeconducted rulemaking proceeding in which Register of Copyrights recommended, andLibrarian of Congress determined, whether there were particular classes of copyrightedworks that should be exempted from prohibition because persons who are users of thoseclasses of works “are, or are likely to be in the succeeding 3-year period, adverselyaffected by virtue of the prohibition in their ability to make noninfringing uses of thatparticular class of works under this title.”

Copyright Office first sought written and reply comments from interested parties inorder to elicit information and views on whether noninfringing uses of certain classes ofworks are, or are likely to be, adversely affected by prohibition against circumventionof access control technologies. Information on comment submission is contained in Nov.24, 1999, Notice of Inquiry published in Federal Register. Further background on thisrulemaking may also be found in Notice of Inquiry. After receipt of initial and replycomments, Office conducted public hearings at which interested persons presented rel-evant information and views. Following public hearings, Office accepted post-hearingwritten comments addressing points made at hearings. After consulting with AssistantSecretary for Communications and Information of Department of Commerce, Register ofCopyrights has made her recommendation to Librarian of Congress, who has acceptedRegister’s recommendation and determined that from Oct. 28, 2000 to Oct. 28, 2003, twoclasses of work shall be subject to exemption from prohibition on circumvention oftechnological measures that control access to copyrighted works. Two classes were:Compilations consisting of lists of websites blocked by filtering software applications;and literary works, including computer programs and databases, protected by accesscontrol mechanisms that fail to permit access because of malfunction, damage or ob-solescence.

Librarian of Congress, on recommendation of Register of Copyrights, has issued finalrule in anti-circumvention rulemaking pursuant to §1201(a)(1)(D). Final rule announcesthat during period from Oct. 28, 2003 through Oct. 27, 2006, prohibition against cir-cumvention of technological measures that effectively control access to copyrightedworks shall not apply to persons who engage in noninfringing uses of four classes ofcopyrighted works.

On Oct. 28, 2003, Librarian of Congress, on recommendation of Register of Copy-rights, announced classes of works subject to exemption from prohibition against cir-cumvention of technological measures that control access to copyrighted works. Fourclasses of works now exempted are: (1) Compilations consisting of lists of Internetlocations blocked by commercially marketed filtering software applications that areintended to prevent access to domains, websites or portions of websites, but not includinglists of Internet locations blocked by software applications that operate exclusively toprotect against damage to computer or computer network or lists of Internet locationsblocked by software applications that operate exclusively to prevent receipt of email; (2)computer programs protected by dongles that prevent access due to malfunction ordamage and which are obsolete; (3) computer programs and video games distributed informats that have become obsolete and which require original media or hardware ascondition of access. Format shall be considered obsolete if machine or system necessaryto render perceptible work stored in that format is no longer manufactured or is no longerreasonably available in commercial marketplace; (4) literary works distributed in ebookformat when all existing ebook editions of work (including digital text editions madeavailable by authorized entities) contain access controls that prevent enabling of ebook’sread-aloud function and that prevent enabling of screen readers to render text intospecialized format.

ANTI-TRUST:See topic Monopoly and Trade Restraints.

INTRODUCTION—THE STATUTORY COPYRIGHT SYSTEM MARTINDALE-HUBBELL LAW DIGEST - 2007


APPEALS:

Orders, judgments, decrees of any court given jurisdiction by statute over copyrightactions, suits or proceedings, may be reviewed on appeal in U.S. Court of Appeals forappropriate circuit, and, upon certiorari being granted, in Supreme Court of U.S. in samemanner and to extent provided by law for review of cases determined in such courts.Federal Rules of Appellate Procedure would apply, as would individual procedural rulesin respective appellate courts.

APPLICATION FOR REGISTRATION:

The applicant for registration of a claim to copyright is required to use the blank formfurnished on request by the Copyright Office or previously approved reproductionsthereof.

For registration requirements see Regulations §202.3, 17 CFR.Failure to include essential information or inclusion of intentionally misleading state-

ments may be found fraud on Copyright Office leading to misuse and antitrust defensesas well as invalidity of registration. (410 F. Supp. 609).

See also topic Deposit and Registration; also topic Classification of Works for Reg-istration.

U.S. Copyright Office Forms.—Copyright Office application forms are available inPDF format and are best viewed with latest, free Adobe Acrobat Reader program. Fill-inversions may be completed online at http://www.copyright.gov/forms and then printed.To save forms, you must use full version of Adobe Acrobat. Forms submitted to Copy-right Office must be clear, legible, and on good quality 8.5-inch by 11-inch white paper.Office produces completed registration certificates by scanning submitted applications.Thus, poorly printed applications will result in poor quality registration certificates. Youmay also request forms by mail.

Form TX—For published or unpublished non-dramatic literary works.Form TX with instructions.Short Form TX—Simplified version of Form TX.Form PA—For published or unpublished works of performing arts.Form PA with instructions.Short Form PA—Simplified version of Form PA.Form SR—For published or unpublished sound recordings.Form SR with instructions.Form VA—For published or unpublished works of visual arts.Form VA with instructions.Short Form VA—Simplified version of Form VA.Form GR/PPh/CON—Group registration of published photographs continuation sheet.Form SE—For serials (newspapers, magazines, newsletters, annuals, journals, etc.).Form SE with instructions.Short Form SE—Simplified version of Form SE.Form SE/Group—For registration of group of serials.Form RE—For claims to renewal of copyright.Form RE with instructions.Form RE/CON—Continuation form to be used only in conjunction with RE appli-

cation form.Addendum to Form RE—For all works published between Jan. 1, 1964 and Dec. 1977,

that were not registered during their first 28-year term. Must accompany Form RE.Form GATT—For restored works under URAA.Form GATT/GRP—GATT group registration form.Form GATT/CON—Continuation form to be used only in conjunction with GATT

application.Form MW with instructions Non Fill-in version—For registration of mask works

which is fixed in semiconductor chip product (mask works).Form MW/CON Non Fill-in version—Continuation sheet to be used only in conjunc-

tion with MW application form.Form CA—To correct error or amplify information given in registration.Form CON—Continuation sheet to be used only in conjunction with basic application

Forms CA, PA, SE, SR, TX, and VA.Form GR/CP Non Fill-in version—Adjunct application to be used for group of con-

tributions to periodicals in addition to application Form TX, PA, VA.Document Cover Sheet—Cover sheet for use when submitting documents for recor-

dation.New Cable Statement of Account Forms—These forms are for semiannual accounting

periods beginning July 1, 2000.SA1-2 Short Form Non Fill-in version—For use by cable television systems whose

semiannual gross receipts are less than $379,600.SA3 Long Form Non Fill-in version—For use by cable television systems whose

semiannual gross receipts are $379,600 or more.Old Cable Statement of Account Forms.Licensing Electronic Funds Transfer Form—For use by statutory licensees to receive

refund payments via electronic funds transfer.Form EFT.Vessel hull design Forms—For further information see Registration of Designs of

Vessel Hulls.Form D-VH Non Fill-in version—For registration of vessel hull designs.Form D-VH/CON Non Fill-in version—(continuation sheet and multiple designs).Above application forms may be obtained on request to Copyright Office, Library of

Congress, Washington, D. C. 20559.After examining registration of claim of copyright is effective on day of receipt in

Copyright Office of deposit required by statute together with proper application thereforand statutory fees. Upon compliance with provisions of Copyright Act, Register ofCopyright issues to applicant certificate of copyright registration.

Who May Apply.—Persons entitled to secure copyright registration are authors en-titled to own copyright under §104 or §104A of Act.

Care in Application.—Copyright Office reserves right to refuse to accept any appli-cation that is a carbon copy, illegible, defaced, or otherwise not in an acceptable con-dition for examination and recording. All information requested in form should be given

in appropriate spaces provided. Application should be submitted by copyright claimant,or by someone acting under his authority.

Copying of deposits with application are limited to copyright owner and those whocan show legitimate need, and is generally limited to actual or anticipated litigation.Copyright Office has form that must be completed for copying.

APPLICATION FOR RENEWAL:See topic Duration.

ARCHITECTURAL PLANS AND WORKS:Copyright extends to copying of architectural plans as to other types of drawings. In

1990, protection was extended to architectural works as well. This amendment bringsU.S. law into closer conformance with requirements of Berne Convention. ArchitecturalWorks Copyright Protection Act extends copyright protection to architectural works asseparate subject matter category. However, Act does not cover works “constructed orotherwise published before December 1, 1990.”

Definition of architectural works includes buildings and parts thereof. In §101 build-ings are defined as permanent, stationary, humanly habitable structures. (37 CFR§202.11).

ARCHITECTURE:See definition of architectural work—§101 and limitations on exclusive rights therein,

§120 and §301(b)(4). Owner of architectural works may sue for infringement of planstherefor or of works themselves.

ART:See topics Visual Art and Works of Art.Artists’ Rights.—See topic Moral Rights.

ASSIGNMENT:Copyright is intangible, incorporeal right, separate and distinct from property in ma-

terial object in which it may be embodied. Intangible, incorporeal rights in work maybe transferred like any other property. Sale or conveyance by gift or otherwise, ofmaterial object, does not of itself constitute transfer of copyright or right to copyrightin said object, nor does assignment of latter necessarily constitute transfer of title tomaterial object. (§202).

Assignment can be made of whole or any share in whole of copyright. In addition,any individual right granted to owner or author pursuant to §106 may be assigned. Underprior law such individual rights were not assignable but could be licensed.

Assignment must be in writing (§204), and should be recorded in Copyright Office.See subheads Recording and Writing Necessary After Copyright, infra.

Assignment should be executed at time of actual transfer. (29 USPQ2d 1789).Some courts have allowed nunc pro tunc written assignments confirming oral assign-

ments.Assignee should make certain that word ‘‘copyright’’ or its close synonym is used in

instrument and that assignment includes all worldwide rights to copyright and all rightsunder copyright now known or later developed.

Assignee of Infringement Choses in Action.—See topic Parties, same subhead.Rescission of Assignment.—Any assignment or license executed by author on or after

Jan. 1, 1978 other than that of work made for hire can be rescinded without cause uponwritten notice by author or his representatives during period between 35th and 40th yearsafter execution thereof. Notice of termination must be given no earlier than ten years orno later than two years before designated date of termination. (§203).

Assignments or licenses of copyrights under prior statute still subsisting as of Jan. 1,1978 may be similarly cancelled on advance notice at any time during five year periodbeginning at end of 56 years from date of copyright or beginning on Jan. 1, 1978whichever is later. (§304[c][3]).

Upon termination all rights so terminated revert to those entitled to terminate.(§203[b]). Derivative works created under 1978 statute and prior to termination of grantmay continue to be utilized after termination but new derivative works cannot be created.(§203[b][1]). This right to continue use does not pertain to pre-1978 works.

Right of termination is not assignable or otherwise alienable. Such rights pass toauthors’ heirs as provided in §§203 and 304.

Scope of Assignments and Transfers of Rights.—As new electronic media usage ofmore “traditional” media (print, for example) have increased, assignees and licenseeshave been correspondingly subject to increasing legal challenges to their rights to use andexploit assigned or licensed works in these new media by original copyright proprietorswith whom they contracted. Illustration of this issue is decision in Tasini v. New YorkTimes, 981 F. Supp. 841 (S.D.N.Y. 1997), rev’d 206 F.3d 161 (2d Cir. 2000), aff’d subnom, New York Times Co., Inc. v. Tasini, 533 U.S. 483 (2001) holding that print andelectronic publishers, absent explicit author consent, did not have privilege to reproduceand distribute freelance authors’ articles in electronic databases under §201(c) of Copy-right Act that permits copyright owners of collective works to reproduce and distribute“revisions of the collective work”. Rights transferred were limited to print medium; anyuse in electronic media, such as online Internet websites, required further express per-missions from original authors of copyrighted works in question. While many contem-porary legal contracts address this issue by providing for assignment or license “in allmedia, whether now existing or later devised”, this was not case in many agreements inpast, including those involved in challenges in Tasini case.

Writing Necessary After Copyright.—Copyright may only be assigned, granted ormortgaged, by an instrument in writing signed by copyright proprietor. (§204). It mayalso be bequeathed by will. (§201). Instrument should expressly recite that ‘‘copyright’’is transferred and not merely convey material objects in which copyright may be em-bodied on assumption that copyright is thereby included. (18 F. Supp. 974). Copyrightmay be transferred by operation of law without writing. (§204[a]). Parol evidence canbe used to understand meaning of words in assignment. At least one court has held thatimproper oral assignment can be perfected by later written assignment. (17 USPQ2d1858).

UNITED STATES COPYRIGHT LAW DIGEST ASSIGNMENT


ASSIGNMENT . . . continuedWhere joint authors intend other than equal ownership in copyright or to income from

copyright written agreement is required. (921 F. Supp. 1154).

Assignment Not Rescindable for Nonpayment of Royalties.—Conveyance of allrights of every kind and description in a song copyright to publisher, successors andassigns, is not rescindable for nonpayment of royalties provided for, and defendantassignee could transfer to another defendant assignee without consulting original as-signor. Assignor has ample right to sue, and recover unpaid royalties, but his claim torescission will not stand. It is merely breach of contract, not fraud. (S.D.N.Y. 1969, 300F. Supp. 1311, 163 USPQ 181). Such controversies are usually decided in state courtactions.

By Operation of Law.—Interest in copyright, once assigned by author, may betransferred by operation of law, e.g., in divorce proceeding. Care should be taken incommunity property states. Most recent decision (218 F.2d 432 [5th Cir. 2001]) has heldthat Copyright Statute does not preempt local state community property laws.

Recording.—Every assignment should be recorded in Copyright Office within onecalendar month after its execution in U.S. or within two calendar months after itsexecution without limits of U.S., or it will be deemed void as against any subsequentpurchaser or mortgagee for valuable consideration, without notice, whose assignment hasbeen duly recorded. (§205). To perfect security interest, assignment should specify workassigned and registered with Copyright Office. State filings under U.C.C. are not suf-ficient for registered works. While assignment of unregistered work may be made U.C.C.filings should be made.

Recording Prior to Suit.—One who owns copyright or interest in copyright maybring suit for infringement without recording of assignment of copyright.

Recording of Documents Other Than Assignments.—Any document, assignment orotherwise, pertaining to copyright may be recorded in Copyright Office. (§205[a]). Non-exclusive license, whether recorded or not, prevails over conflicting transfer of copyrightownership if taken before execution of transfer or before recordation of such transfer andwithout notice thereof. (§205[e]).

Validity of Assignment a Matter of State Law.—Federal court does not have ju-risdiction, under copyright statute, where children of music composer sought to set asideassignments of their renewal expectancies on ground of fraud in inducement. (S.D.N.Y.1962, 210 F. Supp. 253, 135 USPQ 189).

Gift of Future Royalties.—Valid complete present gift may be made to share in futureroyalties from unproduced stage and film musical versions of play (‘‘My Fair Lady’’),when and if thereafter collected, by assignment in letter from donor by way of expressgift of stated percentage of his future profits from corporation holding such stage and filmproduction rights. (1961, N.Y.2d 313, 131 USPQ 489). Any such transfer, however, mustbe proper under law.

Foreign Assignment.—Every assignment of copyright executed in foreign countryshould be acknowledged by assignor before consular officer or secretary of legation ofU.S. authorized by law to perform notarial acts. Certificate of such acknowledgmentunder the hand and official seal of such consular officer or secretary of legation will beprima facie evidence of execution of instrument. (§204[b]). Such foreign assignmentsshould be recorded within two months of execution. (§205[d]).

Transfers Silent as to their Scope; Trade Custom.—Where a free-lance author sellsan article outright to a tabloid newspaper, with contract silent as to scope of public rightssold, testimony of experts, supported by publisher’s officers as to their own practice, plusabsence of conflicting expert testimony, to effect that prevailing practice of newspapertrade presumed all rights were transferred in absence of express restrictions in sale, it washeld that purchaser was not limited merely to first publication rights, and author assignorwas not permitted to resell subsequent publication rights to others. (7 Cir. 1967, 385 F.2d384, 155 USPQ 550, aff’g N.D. Ill. 1966, 259 F. Supp. 433, 152 USPQ 56, cert. denied390 U.S. 955).

On other hand, permission by corporate employer to plaintiff scientific trade journalto publish two scientific articles by its employees on a by-line basis, did not precludesubsequent permission by employer to re-publish articles in defendant’s publication.Findings by court, after trial without jury in first publisher’s suit against second publisherfor infringement of general copyright in former’s journal, established that there was nocustom or usage among scientific trade publications showing permission by employer forhire of writers to a first printing of their scientific article to be any more than anonexclusive publication license. Furthermore, such license for first publication was not,in absence of any expressed intent otherwise, a transfer of full title thereto justifying firstpublisher to include such articles as part of general copyright obtained in journal as awhole. (S.D.N.Y. 1967, 270 F. Supp. 851, 155 USPQ 342).

Where right is not assigned in assignment or licensed in license agreement, e.g., rightto use motion picture in VCR tapes, said right may be considered retained by grantoror licensor, depending on facts of case.

Licensing of film for use on television does not authorize reproduction of film on videocassettes. (Cohen v. Paramount, [9 Cir. 1988], 6 USPQ2d 1723).

License by Co-owner.—See topic Co-authors and Co-owners. (cf. 2d Cir. Boosey &Hawkes).

ATTORNEYS:There is no Copyright Office Bar, as there is a Patent Office Bar. It is not necessary

to make deposits or register claims to copyright in the Copyright Office through anattorney. Because of technical requirements, it is advisable to use attorney skilled in thisarea.

ATTORNEY’S FEES:The court, in its discretion, may award to the prevailing party a reasonable attorney’s

fee, as part of the costs, in all actions, suits or proceedings brought under the Act, exceptwhen brought by or against the U.S. or any officer thereof. (§505). Attorney’s fee maybe awarded to party prevailing regardless of stage at which action is terminated orcopyright claim is otherwise dismissed. Discretion of court in fixing attorney’s fee isreviewable on appeal.

Attorneys fees may be awarded when suit was brought in bad faith, capriciously orwas otherwise unreasonable or where infringement was willful and wanton. (146 F. Supp.185; 222 F.2d 488).

Fees may be awarded to either plaintiff or defendant. (S.C. 1994, 29 USPQ2d 1857;114 S.Ct. 1023).

ATTRIBUTION:Improper, see topic Moral Rights.

AUDIOVISUAL WORKS:Protected works include those that consist of series of related images intended to be

shown by machines together with accompanying sounds, if any. (§101).

AUTHOR:See also topic Proprietor.The word ‘‘author’’ as used in the Constitution and in the Act, has been very broadly

interpreted by courts. It includes human writers, composers, artists, photographers, de-signers, dramatists, map makers, directors, compilers, etc. Labors of author’s mindentitled to protection by way of copyright must involve some element of creative imagi-nation reduced to or expressed in some permanent tangible form where it can be ex-amined separately and apart from personality of creator. This is requirement of Consti-tution that works must be in ‘‘writings’’ in order to enable Congress to grant exclusiverights for limited period of years. Artistic quality of creation is not important, if thereis some element of origination involving some creative labor and judgment by author.Decisions vary on extent and quality of contribution necessary for finding of authorship.Protection extends only to that which is original contribution of author. Author may drawupon works in public domain or, with permission, protected source materials by revising,commenting, abridging, adapting, novelizing, dramatizing, compiling, or digesting same.He may secure protection for result of his labors which involve his own original con-tribution without affecting availability of any of materials worked on to others. If sourcematerials are subject to exclusive rights under copyright, author must secure permissionfrom owner to use such source materials or he will be infringing on rights of others.

Work is created when it is fixed in tangible medium of expression for first time. Workis considered created as to any portion as soon as that portion is fixed. (§101).

Employers Who Hire, as Authors.—The word ‘‘author’’ includes an employer in thecase of works made for hire. (§101). Employer, in case of works created by employeein regular course of his duties, is not deemed assignee of employee with respect to work,but is himself deemed to be author of work. This distinction may be important underthose sections of statute which relate to authors as distinguished from owners of copy-right. Corporation may be author of copyrighted work, and in case of motion pictures,where corporations often employ various talents that go into production of copyrightedmotion picture, copyright is generally claimed, secured and registered by producingcorporation as ‘‘author’’ of motion picture.

Works for Hire.—Works of employees within scope of their employment are con-sidered works of their employers. Work specially ordered or commissioned can beconsidered work made for hire if it is so provided in written agreement between partiessigned by both and if type of work so ordered or commissioned is of type set forth instatute. (§101). Types of works so specified are very limited. Whether or not work iscreated as employee or on commission is to be determined by principles of Agency.(Community For Creative Non-Violence v. Reid [1989]109 S.Ct. 362, 10 U.S.P.Q.2d,1985).

When commissioned work is not subject of required written agreement or is not ofsubject matter of §101 definition, copyright remains in creator of work. Where there issome doubt whether work is work for hire, specific assignment of work should also beincluded in written agreement.

Employees for Hire (Works Outside Scope).—Copyright is owned by employee inworks created by employee outside of scope of employment. (N.Y. Sup. Ct. Trial Term,N.Y. Co. 1966, 151 USPQ 603).

Citizenship of Author.—See topic Aliens (Protection in U.S.A.).

Joint Authors.—See topic Joint Authorship.

Author as Distinguished From Owner.—While author of copyright may also beowner, where assignment takes place author is no longer owner. This distinction isimportant under several provisions of statute, e.g. §304.

AUTHORSHIP:In order to qualify for copyright there must be creative authorship that is original with

author, i.e. not copied from another.

BANKRUPTCY:For effect of bankruptcy on executory contracts licensing copyrights, see 11 U.S.C.

§365. See topic Liens.

BERNE CONVENTION:Berne Convention, originally formed in 1886, is oldest and most prestigious copyright

convention with approximately 80 adherents to one or more of its revisions. U.S. becamesignatory in Mar., 1989. Author who is national of any one of Berne Convention coun-tries enjoys in any other Berne Convention country such rights as it gives to its ownnationals, as well as rights specifically accorded by Convention. Enjoyment and exerciseof such rights are not subject to any formality. Late adherence by U.S. (1989) was resultof conflicting formalities in domestic U.S. laws which were finally eliminated by BerneConvention Implementation Act of 1988. (P.L. 100-568, 702 Stat. 2853, Oct. 31, 1988).

Prior to adherence of U.S. to Convention, U.S. nationals had been able indirectly tosecure rights under Convention through simultaneous first publication in U.S. and inBerne Convention country. This procedure was far from ideal.

Berne Convention Members.—Member nations include: Albania, Antigua, Argentina,Armenia, Australia, Austria, Azerbaijan, Bahamas, Bahrain, Bangladesh, Barbados, Bar-buda, Belarus, Belgium, Belize, Benin, Bolivia, Bosnia and Herzegovina, Botswana,

ASSIGNMENT MARTINDALE-HUBBELL LAW DIGEST - 2007


BERNE CONVENTION . . . continuedBrazil, Bulgaria, Burkina Faso, Cameroon, Canada, Cape Verde, Central African Re-public, Chad, Chile, China, Colombia, Congo, Costa Rica, Croatia, Cyprus, Czech Re-public, Democratic Republic of Congo, Denmark, Djibouti, Dominica, Dominican Re-public, Ecuador, Egypt, El Salvador, Equatorial Guinea, Estonia, Fiji, Finland, France,Gabon, Gambia, Germany, Ghana, Granada, Greece, Guinea, Guinea Bissau, Guyana,Haiti, Holy See, Honduras, Hungary, Iceland, India, Indonesia, Ireland, Israel, Italy, IvoryCoast, Jamaica, Japan, Kenya, Kyrgystan, Latvia, Lebanon, Lesotho, Liberia, Libya,Liechtenstein, Lithuania, Luxembourg, Macedonia, Madagascar, Malawi, Malaysia, Mali,Malta, Mauritania, Mauritius, Mexico, Monaco, Mongolia, Morocco, Namibia, Nether-lands, New Zealand, Nicaragua, Niger, Nigeria, Norway, Oman, Pakistan, Panama, Para-guay, Peru, Philippines, Poland, Portugal, Qatar, Republic of Korea, Republic of Mol-davia, Romania, Russian Federation, Rwanda, Saint Kitts & Nevis, Saint Lucia, St.Vincent & the Grenadines, Senegal, Singapore, Slovakia, Slovenia, South Africa, Spain,Sri Lanka, Surinam, Sweden, Switzerland, Tajikistan, Tanzania, Thailand, Togo, Tonga,Trinidad and Tobago, Tunisia, Turkey, Ukraine, U.K., U.S., Upper Volta, Uruguay, Ven-ezuela, Yugoslavia, Zaire, Zambia and Zimbabwe. (Copyright Office Circular 38a).

There are several revisions of Convention, and depending on which revision wasadopted by country determines its relations with other Berne countries. Up to datemembership information and revision adhered to can be obtained from Secretariat,International Bureau of the World Intellectual Property Organization (WIPO), Geneva,Switzerland. U.S. adhered to Paris Text of 1971. (http://www.wipo.org).

BLIND:Special exceptions exist to exclusive rights under copyright for materials intended for

the blind, e.g. §121.

BOAT HULL:In 1944 and 1998 Congress provided protection for designs of new and original boat

hulls. (17 U.S.C. §1301). Although Copyright Statute explicitly excludes useful articlesfrom copyright protection, this new hybrid, non-copyrighted design protection, has beenplaced under jurisdiction of Copyright Office. It does not change law against copyrightprotection of useful articles.

BUENOS AIRES CONVENTION:Multilateral Pan-American Agreement to which U.S. is party. This convention requires

notice of reservation of rights, e.g., ‘‘All Rights Reserved’’.

BUILDINGS:By 1990 Amendment, humanly habitable buildings are now protected as architectural

work. (§102[a]).As to copyright in buildings, see topics Architecture; Ideas, Plans, Systems, Methods,

Kits, Etc.

BURLESQUES:See topic Fair Use.

CABLE TELEVISION SYSTEMS:Prior to enactment of present Act, relative rights of copyright owners and licensees and

community antenna systems, or as popularly known cable television system, were subjectof major controversies. In landmark decisions (Teleprompter, 415 U.S. 394; and Fort-nightly, 392 U.S. 390) Supreme Court had held that local and long distance cable systems(including microwave systems) were not infringing in reception and rebroadcast ofcopyrighted television material.

Under current statute cable systems are allowed to receive and rebroadcast copyrightedtelevision programs under compulsory license. Each year each system must pay toRegister of Copyrights percentage of its gross receipts for distribution to owners ofcopyright who claim their works were subject of transmissions by cable systems.(§111[c], [d], [e]).

Such right to transmit does not, however, permit modification of content of programsor advertising during or immediately before or after program. (§§111, 510).

There are other limitations on such use by cable television systems. (§111).

CATALOGS (TRADE):A very low degree of originality is essential for the copyrightability of a catalog. The

resulting creative effort is in selection and arrangement of items in catalog. SupremeCourt’s rejection of ‘‘sweat of brow’’ rule as to telephone directories may precludecopyright in catalogs that are produced only by use of industrious labor. (Feist v. Rural,111 S.Ct. 1282, 18 USPQ2d 1275 [1991]).

CERTIFICATE OF REGISTRATION:When published or unpublished work has been properly deposited, application claim-

ing copyright filed, and statutory fees paid, Register of Copyright issues to applicantcertificate of copyright registration. (§410 [a]).

Where certain errors appear in certificate of registration, they may be corrected bysupplementary registration. (§408[d]).

Prima Facie Evidence.—The certificate is admissible in any court as prima facieevidence of validity of copyright and of facts therein stated. (§410[c]). When introduced,burden shifts to defendant to produce sufficient evidence to overcome prima facie pre-sumption of validity. (W.D. Mo. 1958, 172 F. Supp. 37, 41, 118 USPQ 446, 449). SeeDurham case, also, E.D. Pa. 1963, 32 F.R.D. 325; D.N.J. 1964, 228 F. Supp. 630, 141USPQ 381, 383.

Said presumption applies only if registration issues on application filed within fiveyears of publication of work. (§410). After that period, weight to be granted is withindiscretion of Court.

Prerequisite to Suit for Infringement.—Certificate of registration is necessary beforesuit for infringement can be brought for infringement of works whose country of originis U.S. Registration is not required prior to action for infringement of most works whose

country of origin is not U.S. (17 U.S.C. 411[a]). For works whose country of origin isU.S., note topic Country of Origin. If Copyright Office refuses registration, suit can thenbe brought without certificate provided copy of complaint and notice of suit are servedon Register of Copyright.

Prerequisite for Certain Remedies.—No award of statutory damages or attorney’sfees shall be made in case of infringement of any unregistered, unpublished work or forany infringement of published work commenced prior to registration unless registrationtakes place within three months of publication. (§412). This rule applies to domestic andforeign works.

CHARACTERS, NAMES AND TITLES:Character names used in writing, as well as title of work, are not within protection of

copyright statute. Courts have recognized character copyright in recent cases wherecharacter has been sufficiently developed. Character names and titles may be protectedunder theory of unfair competition.

Cartoon Characters.—In Walt Disney Productions v. The Air Pirates (9th Cir. 1978,581 F.2d 751), Court held that copyright protection extended to cartoon characters.

CHILDREN:Children as contemplated by statute are person’s immediate offspring, whether legiti-

mate or not, and any children legally adopted by that person. (§101).

CHOREOGRAPHY:Choreographic works are copyrightable if fixed in tangible medium of expression from

which they can be perceived, reproduced or communicated. (§102[a][4]; cf. MarthaGraham School & Foundation, Inc. v. Martha Graham Center for Contemporary Dance,Inc. 2002 U.S. District Lexis 15761 [S.D.N.Y. Aug. 23, 2002]; Horgan v. MacMillan, Inc.789 F.2 157 [2d Cir. 1986]).

CLASSIFICATION OF WORKS FOR REGISTRATION:Classification of works into classes for registration purposes is designated by §408(c).

Application for registration must specify to which of these classes work in whichcopyright is claimed belongs.

Inaccurate Classification for Registration Inconsequential as to Denying Relief forCopyright Claimant.—Classification is intended primarily for convenience of CopyrightOffice. Any unintentional error in classification shall not invalidate or impair copyrightprotection of work. (§408[c]).

Statutory Classifications.—Copyright Office has set up five classes of works: Non-dramatic literary works (TX), works of performing arts (PA), works of visual arts (VA),sound recordings (SR), serials (SE).

Care in Selection and Preparation of Application.—Since courts may look at typeof application used and description of rights or work claimed or other statements madein application to determine scope of right covered by certificate, care should be exercisedin selection and preparation of application. Copyright Office will not give filing date toapplication for sound recording not using Form SR.

CO-AUTHORS AND CO-OWNERS:Co-authors or co-owners of copyrighted material are considered tenants in common;

and each co-owner, acting alone, has power to grant non-exclusive licenses to thirdpersons (since he could have exercised such right himself as an owner, but not exclu-sively), with a duty to account to other co-owners; but exclusive rights may be given onlyby a grant from all co-owners. (1961, 3 N.Y.2d 339, 132 USPQ 82: see, also, 2d Cir.1963, 324 F.2d 762, 139 USPQ 400).

See, also topics Joint Authorship; Assignment; Licenses, subhead License By Co-Owner; Duration.

COLLECTIVE WORK:Work in which number of contributions, constituting separate and independent works

in themselves, are assembled. Collective work is form of compilation. (§101). See topicsCompilation; Community Property. Copying of one element is not infringement ofcompilation. Infringer must take substantial part of arrangement of compilation. Copyingone element may infringe copyright in that one element and suit may be brought ifseparately registered. Registration for collective work is not sufficient to allow author ofone element of work to sue for infringing.

COMMISSIONED WORKS:Copyright in commissioned works usually belongs to party commissioned rather than

commissioning party. Narrow exception exists in works for hire as defined in §101. (109S.Ct. 362). Works created prior to 1978 may be subject to policy then in existence whichwas more favorable to commissioning party.

COMMON LAW RIGHTS:Current statute exclusively governs as to all legal or equitable rights that are equivalent

to any of exclusive rights within general scope of copyright as specified in §106 inpublished and unpublished works of authorship, including letters and diaries, that arefixed in tangible medium of expression and come within subject matter of copyright asspecified in §§102 and 103. Thus, after Jan. 1, 1978, common law or State statutory lawshall not apply to such rights. Common law or State statutory law have thus beensubstantially curtailed and will apply only if work: (a) Is not fixed in tangible mediumof expression, e.g., improvisation or choreographic work not reduced to tangible form,or (b) is not equivalent to any of exclusive rights within general scope of copyright, forexample rights of privacy or publicity, trade secrets, defamation or fraud, or (c) does notcome within subject matter of copyrights. This latter situation may present problems forcourts to decide as to what is or is not equivalent. (§301).

Specific exception to this preemption deals with sound recordings fixed before Feb.15, 1972, as to which common law or statutes of any State shall not be annulled until2047. (§301[c]).

UNITED STATES COPYRIGHT LAW DIGEST COMMON LAW RIGHTS


COMMON LAW RIGHTS . . . continuedMisappropriation and unjust enrichment claims have been preempted. (§301). But

other areas, such as some moral right issues, particularly those for period subsequent toauthor’s death, may still be treated under common law or state statutes.

COMMUNITY ANTENNA TELEVISION (CATV):See topic Cable Television Systems.

COMMUNITY PROPERTY:In states with community property laws, copyright co-ownership may be created by

operation of law. (In re Rodriguez, 218 F.3d 432 [5th Cir. 2001]; in Re Marriage ofWorth, 24 Cal. Rptr. 135 [1987]). This may curtail ability to grant exclusive license rightswithout joinder of spouse.

COMPENDIUM:Copyright Office has created for internal use compendium of copyright practice. This

is available to public and provides answers to many issues of copyright registrationpractice.

COMPILATION:Work formed by collection and assembling of preexisting material or of data collected

or arranged in such way that resulting work constitutes original work of authorship.(§101). Mere collection of facts without more, such as simple telephone directories, donot reach requisite level of creative authorship. (Feist v. Rural, 111 S.Ct. 1282). Designsconsisting of combination of preexisting, utilitarian elements are insufficiently original tobe protected as copyright table compilation. (Lamps Plus, Inc. v. Seattle Lighting FixtureCo., 345 F.3d 1140 [9th Cir. 2003]).

Where there is some creative authorship in selection and arrangement of facts, how-ever, copyright may be obtained.

Copyright protection for compilations is “thin” and test for infringement is substantialsimilarity between those elements that provide copyrightability to allegedly infringedcompilation. Infringement of one element of compilation is not infringement of com-pilation copyright. To be infringement of compilation there must be taking of whatcompiler added to individual elements. Copyright registration in compilation may entitleowner to sue for infringement of individual works within compilation, if such works areoriginal, especially if copyright notice appears on each page of compilation. (S.D.N.Y.2000, 97 F. Supp.3d 395; See also, Stuart Y. Silverstein v. Penguin Putnam, Inc., No. 01Civ. 309, 2003 U.S. Dist. LEXIS 5487 [S.D.N.Y. Apr. 4, 2003], on appeal to 2d Cir.).


COMPULSORY LICENSES UNDER MUSICAL MECHANICAL RIGHTS:Statute provides for compulsory licenses including those for certain digital audio

transmissions (§114[d][2]); mechanical rights (§115); juke boxes (§116); cable television(§111) and digital audio phonorecord deliveries (§115) and satellite transmissions (§§119,122). When phonorecords of non-dramatic musical work have been distributed underauthority of copyright owner, any other person may obtain compulsory license to makephonorecords of same work for statutory royalty fee. Such compulsory license does notapply to visual use of lyrics in videos.

See topics Remedies for Infringement; Rights Under Copyright; Universal CopyrightConvention.

COMPUTER MAINTENANCE:It is not improper for owner or lessee of computer to make or authorize others to make

copy of program if so made by operation of computer and solely for maintenance workon computer.

COMPUTER PROGRAMS:Computer programs are copyrightable under current statute (§§101, 102[a]) and such

programs have been accepted for registration by Copyright Office for some years underprior Act. Statute amended in 1980 to clarify §117 as covering computer programs.

Methods or processes involved in use of computer are not copyrightable (§102[b])although patent protection may be available. However, copyright will protect computerprograms regardless of their purpose and in various tangible media of expression in-cluding tape and silicon chip. (3d Cir. 1983, 714 F.2d 1240, 219 USPQ 113). Objectcodes, source codes, interfaces and screen depictions are copyrightable if creative au-thorship is involved.

Semiconductor chips bearing mask works of computer programs are protected for tenyears under quasi-copyright concept. (Semiconductor Chip Protection Act of 1984, §2,c. 9, Tit. 17).

Programs may not be lent or rented except in limited situations. (17 U.S.C. §109[b]).

CONTESTS:See topic Ideas, Plans, Systems, Methods, Kits, Etc.

CONVENTIONS, PROCLAMATIONS AND TREATIES:See topic Aliens; also topic Foreign Rights.

COPIES:These are material objects in which work is fixed by any method now known or later

developed and from which work can be perceived, reproduced or communicated eitherdirectly or with aid of machine or device. (§101). They may be legitimate copies ifauthorized, or infringing copies if not.

COPY:See topic Reproduce.

COPYRIGHT CERTIFICATE:See topic Certificate of Registration.

COPYRIGHT OFFICE:Unlike Patent and Trademark Office, which is part of Executive Branch of U.S.

Government, Copyright Office of the Library of Congress is organized under LegislativeBranch. It performs wide range of administrative functions for copyright owners, issuesregulations relating to copyright and works closely with Congress to advise on variousmatters relating to pending or proposed legislation and budgets relating to copyright.Extensive information about Copyright Office’s operations, including Registration Ap-plication Forms and Directions and ability to search copyrights electronically online, isavailable at its Internet website at: http://www.loc.gov/copyright.

The provisions for the administration of the Copyright Office, such as record keeping,the Register and assistants, deposit of monies received, bond, annual report, seal, rulesfor registration, certificates of registration, catalogs of copyright entries, their distributionand sale, public inspection of records and works, disposition and destruction of depositedarticles, and fees, are set forth in §§701-710.

Register.—The office is under the control of the Register of Copyrights who, underthe direction and supervision of the Librarian of Congress, performs the duties relatingto the registration of copyrights. (§701[a]).

Publications.—Circular 2, Library of Congress, Washington, D.C., lists a variety of‘‘Publications of the Copyright Office,’’ with prices, available from the Register ofCopyrights, Library of Congress, Washington, D.C. 20559, as well as those availableonly from Supt. of Documents, Government Printing Office, Washington, D.C. 20402.Since prices change from time to time, check with Register’s Office as to current price.(§707).

Rules and Regulations.—The Register is authorized to make rules and regulationssubject to the approval of the Librarian, for the registration of claims to copyright.(§702). These regulations are given great weight administratively. Current regulations areset forth in Tit. 37, Code of Federal Regulations, ch. II, Parts 201-270. They are alsopublished as annotation to, §702, Tit. 17 U.S.C.A.

Various amendments to Regulations having been made over years, it is important torefer to latest annual Cumulative Pocket Part for its annotation following, §702 of Tit.17 U.S.C.A. (Copyrights).

Records and Catalogs.—The record books of the office together with the indices tosuch records, and all works deposited and retained, are open to public inspection.Searches of the records, indices or deposits will be made upon appropriate applicationto the Register, and payment of a searching fee.

Requests for Copies.—The Copyright Office will approve the making of a copy ofa copyright deposit when authorized in writing by the copyright owner, or his designatedagent, or pursuant to an order issued by a court having jurisdiction of a case in whichthe copy is to be submitted as evidence. The making of such copy will be approved bythe Copyright Office, when requested in connection with litigation, actual or prospective,in which the copyrighted work is involved; but in all such cases the attorney representingthe actual or prospective plaintiff or defendant shall state in writing: the names of theparties and the nature of the controversy; the court where pending, or if a prospectiveproceeding, a full statement of the facts of the controversy; and satisfactory assurancesthat the requested copy will be used only in connection with the specified litigation.Specific form is required by regulations.

Time to Take Steps.—When the last day for making any deposit or application, orfor paying any fee, or for delivering any other material to the Copyright Office falls onSaturday, Sunday, or a holiday within the District of Columbia, such action may be takenon the next succeeding business day. (§703).

Discretion of Register.—According to the Court of Appeals for the District of Co-lumbia (1958, 117 USPQ 334), there is a wide range of selection within which discretionmust be exercised by the Register in determining what he has no power to accept forregistration under the Act (citing 74 App. D. C. 271, 273, 122 F.2d 51). The Register’sdiscretion is not uncontrolled, however, but is subject to judicial review and correction.Where Register has doubt as to registrability, he may issue registration under ‘‘Rule ofDoubt.’’ See Attari v. Oman cases.

Legal Opinions Unavailable.—The Copyright Office will not compare copyrightdeposits to determine similarity between works, nor does it give legal opinions con-cerning rights of persons in cases of alleged infringement, contracts between publisherand author, the copyright status of any particular work other than the facts shown in therecords of the Office, or other matters of a similar nature; the scope and extent ofprotection of works in foreign countries or interpretation of foreign copyright laws oropinions; the sufficiency, extent or scope of compliance with the copyright law. Nor willthe Copyright Office undertake to furnish the names of copyright attorneys, publishers,agents or other similar information.

Inspection and Copying of Records.—(1) Inspection and copying of completedrecords and indexes relating to a registration or a recorded document, and inspection ofcopies deposited in connection with a completed copyright registration, may be under-taken at such times as will not result in interference with or delay in the work of theCopyright Office; (2) the copying from the Copyright Office records of names andaddresses for purpose of compiling mailing lists and other similar uses is expresslyprohibited. Copying of deposited materials is prohibited unless copyright owner consentsor good cause on Copyright Office form is shown.

Publication of Compendium of Copyright Office Practices.—This manual is pub-lished in loose leaf form. Compendium is available from Supt. of Documents, Govern-ment Printing Office, Washington, D.C. 20540.

Mail Delay.—Provision is made for late mail delivery of deposits, applications andfees if there is general disruption or suspension of postal service. (§709).

Correspondence.—(1) Official correspondence, including preliminary applications,between copyright claimants or their agents and the Copyright Office, or directly relatingto completed registration or to recorded document, is made available for inspection bypersons properly and directly concerned. Requests for photocopies of correspondencemust be made pursuant to provisions in such regard elsewhere prescribed in Regulations.

(2) (i) Correspondence, application forms and any accompanying material forming apart of a pending or rejected application are not records which are open to publicinspection as described in the previous subheading; (ii) inspection of such files may be

COMMON LAW RIGHTS MARTINDALE-HUBBELL LAW DIGEST - 2007


COPYRIGHT OFFICE . . . continuedafforded upon presentation of written authorization of claimant or his agent, or uponsubmission to the Register of Copyrights, Library of Congress, Washington, D.C. 20559,of a written request which is deemed by him to show good cause for such access andwhich establishes that person making request is one properly and directly concerned; (iii)where such access is authorized and photocopies of the official file are subsequentlyrequested, the conditions and procedures elsewhere prescribed in the Regulations arecontrolling.

(3) Correspondence, memoranda, reports, opinions, and similar material relating tointernal matters of personnel and procedures, office administration, security matters andinternal consideration of policy and decisional matter including work product of attorneynot open to public inspection.

(4) The Copyright Office will return unanswered any abusive or scurrilous correspon-dence.

Review of Decision.—Rejection of application may be appealed by review withinCopyright Office or by suit in Federal District Court under Administrative ProceduresAct.

Copyright Decisions of Federal and State Courts.—Copyright Office has beenpublishing volumes of decisions by Federal and State Courts pertaining to copyrightcases, as well as those involving related subjects in field of literary and artistic property,some of which decisions are otherwise unreported. These volumes are not up to date.These past volumes can be individually or collectively purchased. Orders may be ad-dressed and remittances made payable either to Superintendent of Documents, U.S.Government Printing Office, Washington, D.C. 20540.

Register’s Annual Report.—Copy of Register’s Annual Report may be obtained uponapplication to Superintendent of Documents. In addition to its review of Copyright Officeactivities, it contains interesting comments of Register on judicial, legislative and ad-ministrative developments during year pertaining to field of intellectual and artisticproperty, and its related aspects, in U.S. and abroad.

COPYRIGHT MANAGEMENT INFORMATION:Copyright management information includes information conveyed with work that,

inter alia, identifies work, its author and conditions of use. §1202 of statute prohibits anyalteration, removal or false statements in such information.

COPYRIGHT PROTECTION SYSTEMS:It will be unlawful after 2000 to manufacture, use or sell any device intended primarily

to overcome technical means used to protect work from being copied. (§1201).

COPYRIGHTABLE WORKS:Original works of authorship fixed in any tangible medium of expression that can be

perceived, reproduced or communicated either directly or with aid of device includingfollowing categories: (1) Literary works; (2) musical works, including any accompanyingwords; (3) dramatic works, including any accompanying music; (4) pantomimic andchoreographic works; (5) pictorial, graphic and sculptural works; (6) motion pictures andother audiovisual works; (7) sound recordings; and (8) architectural works. (§102[a]).Such works do not include general ideas, theories, procedures, processes, systems or likebut only expression of such ideas, etc. (§102[b]).

This list is not intended to be exhaustive of types of works that may be copyrightable.As new types of works of authorship are developed, they too may be included.

Non-copyrightable works include works in public domain, ideas, useful articles, simplecompilation of facts. There must be sufficient “originality of authorship” for work to bedeemed copyrightable. See Silverstein v. Penguin Putnam Inc., 368 F.3d 77 (2d Cir. 2004)(discussing requisite amount of originality of authorship).

COSTS:Costs against unsuccessful party are awardable in actions, suits or proceedings brought

under Act. Reasonable attorney’s fee to prevailing party, as part of costs, is discretionarywith court. (§505). See topic Attorney’s Fees.

COUNTERFEITING:Whoever knowingly traffics in counterfeit labels for phonorecord or infringing copy

of motion picture or other audiovisual work may be fined up to $250,000 and/or im-prisoned for up to five years. (18 U.S.C. §2318). See topic Criminal Liabilities.

COUNTRY OF ORIGIN:Determination of country of origin is necessary for purposes of provisions of national

eligibility, GATT restoration, and need for certificate of registration before suit. Suchcertificate is not necessary for suit for infringement of most works of foreign origin(§104[b], §101 [definitions of “international agreement” and “treaty party”] other thanworks where country of origin is U.S.

Country of Origin is U.S.—U.S. is country of origin for purposes of §411 if: (a)Published work is first published (i) in U.S. or (ii) simultaneously in U.S. and treaty partycountry (simultaneously means at same time or within 30 days) or (iii) simultaneouslyin U.S. and foreign nation not treaty party country or (iv) in foreign treaty party countryand all authors are citizens, habitual residents or domiciliaries of U.S.; (b) for unpub-lished work, all authors are nationals, domiciliaries or habitual residents of U.S.; (c) incase of sculptural, pictorial or graphic work incorporated in structure, and structure islocated in U.S. (17 U.S.C. §101).

COURT REPORTERS’ TRANSCRIPTS:See topic Proprietor, subhead Court Reporters’ Transcripts.

Inclusion of Copyrighted Material in Court Proceedings Not Dedicatory.—Whereauthor was involved in obscenity prosecutions in which material from his copyrightedbooks was spread in court transcripts and opinions, such were not thereby dedicated topublic domain so as to bar a motion picture using same from being deemed infringing.(S.D.N.Y. 1970, 319 F. Supp. 1269, 168 USPQ 693). To same effect, for same author

(Lenny Bruce), in another case against another defendant, see S.D.N.Y. 1971, 335 F.Supp. 282, 173 USPQ 144.

CREDITORS:See topic Liens.

CRIMINAL LIABILITIES:Wilfully Infringing or Abetting Infringement.—Anyone who wilfully and for profit

infringes any statutory copyright, upon conviction, may be imprisoned for term of up tofive years and fined up to $250,000. (17 U.S.C. §506; 18 U.S.C. §2319). Offense isfederal, and U.S. attorneys may proceed by indictment or information in federal courts.Unlike civil infringement, where intent is immaterial, criminal infringement must bewilfully committed. Offender must also commit infringement for profit or knowingly andwilfully aid or abet such infringement. To avoid defense that no profit was involved,statute has been amended to create new basis for criminality based on amount and valueof works infringed. (§506[a][2]).

Unauthorized recordings of live musical performances and trafficking therein arecriminally punishable under 18 U.S.C. §2319A.

Improper Use of Copyright Notice.—It is misdemeanor, punishable by fine of notmore than $2,500, with fraudulent intent to insert notice of copyright on any uncopy-righted article, or to remove or alter copyright notice upon any article duly copyrighted.(§506).

False Representation.—Any person who knowingly makes false representation ofmaterial fact in copyright application or statement filed with said application shall befined not more than $2,500. (§506[e]).

False Copyright Notice.—Anyone who, with fraudulent intent, places false notice onarticle or imports such falsely marked article shall be fined not more than $2,500.(§506[c]).

Removal of Notice.—Anyone who, with fraudulent intent, removes or alters copyrightnotice on copyrighted work shall be fined not more than $2,500. (§506[d]).

Conspiracy.—While criminal offenses specified by the Act are characterized as mis-demeanors, it should be noted that if the offender conspires with another to commit anoffense against the U.S., he may be subject to indictment for conspiracy under Tit. 18,U.S. Code, §371.

Other Criminal Statutes.—Copyright infringement may also involve Wire Fraud Actand Interstate Transportation of Stolen Property Act. Counterfeiting of labels may becriminal (18 U.S.C. §2318), as well as counterfeiting of copyrighted works (17 U.S.C.§506, 18 U.S.C. §2319) or fixing or trafficking without authorization of live performances(18 U.S.C. §2319A). RICO statute has been amended to include copyright counterfeiting.

Limitations.—There is an express statute of limitation of three years, after cause ofaction arose, on criminal proceedings under Act. (§507).

CUSTOMS REGULATIONS:See topic Importation.

DAMAGES FOR INFRINGEMENT:See topic Remedies for Infringement.

DATABASES:Computer databases and compilations of data are registrable as literary works and

come within the definition of compilations. (§101). Feist v. Rural Telephone Service Co.,499 U.S. 340, 111 S.Ct. 1282, 18 U.S.P.Q. 1273 (1991) overturned copyright legaldoctrine in some circuits that “original contribution” element of copyright law could besatisfied if there were sufficient “sweat of the brow” efforts exerted in creative effort byrights holder. Single greatest loss due to impact of this judicial interpretation of law wasin area of database protection. This doctrine was again reiterated in National BasketballAssociation v. Motorola, Inc., 105 F.3d 841(1997) when Court of Appeals for the SecondCircuit refused to protect data transmissions relating to NBA game statistics by Motorolaand its co-defendant on basis that “mere facts” were not protectable by copyright undereither federal law or state “unfair competition” legal principles. While EU has adoptedsui generis right to protect databases, U.S., despite several bills being proposed inCongress, has not followed suit and, consequently no right of this sort exists per se inU.S. nor may U.S. rights holders avail themselves of such protection in EU as itsprovision requires reciprocity of coverage. This is, however, area where rights are ex-pected to change in foreseeable future due to combination of pressures from privateindustry and international bodies. Copyright may still exist in databases whose selectionand arrangement are result of creative authorship. Protection of databases is thin. Billsare presently before Congress to redefine rights in such works.

DATE OF PUBLICATION:See topic Publication.

DEATH:Death of Author.—Copyright continues to exist for 70 years after author’s death.Copyright Office Records.—Copyright Office will maintain records of deaths of

authors communicated to it as aid to determination of term of copyright. (§302[d]).Presumption of Death.—After period of 95 years from first publication of work or

100 years from its creation, author is presumed dead for 70 years if Copyright Officecertifies no records it maintains indicates otherwise. (§302[e]).

Transfer of Copyright.—Copyright may be transferred by will (§201) but right toterminate transfers or licenses of work can be transferred only as set out in statute (§203[b]).

Joint Work.—Copyright in joint work expires 70 years after death of last survivingauthor.

Visual Artists Rights.—Rights granted under §106A to certain works of visual artcease at death of author. States may protect such rights post death.

UNITED STATES COPYRIGHT LAW DIGEST DEATH


DEATH . . . continuedPre-1978 Law.—Death of author under prior law had significant effects on rights

granted by author. If author died before 1978 rights of assignees and licensees shouldbe determined under prior law.

DECLARATORY JUDGMENTS:

Actions for declaratory judgments in respect of controversy under copyright may bebrought under Tit. 28, U.S. Code, §§2201, 2202.

DEFENDANTS:

Anyone who infringes any exclusive right granted under §106 or §106A or whoinduces or contributes to or who is vicariously responsible for such infringement maybe named as defendant.

DEFENSES:

A considerable variety of defenses can be and often are interposed in copyrightinfringement actions. The following are some of the types of defenses available.

As to Validity or Ownership of Copyright.—Among defenses of this nature are theright of protection to the type of use appropriated, such as ideas, plans and systemsdiscussed in the work, as distinguished from the expression thereof; the originality ofalleged authorship; work is useful article containing no original, separable features,failure to comply with statutory requirements in securing copyright under former statute,such as publication without proper notice, deposit, registration, payment of fees; dedi-catory publication; forfeiture or abandonment of copyright; improper transfer of right tosecure copyright or of copyright after it was secured. Defendants must look to law ineffect when copyright was secured to determine if defense applies.

Denial of Appropriation.—The alleged infringer may claim: that he created his workhimself or used the works of others entitled thereto or in the public domain, but had noaccess to and did not borrow from complainant; that neither he nor any agent for whomhe was responsible made any use whatever as claimed, or that the use made was notexclusively permitted the owner under the rights granted by the statute; or that such useas may have been made was a ‘‘fair use,’’ or insufficient under the particular circum-stances to be deemed an unlawful appropriation.

Affirmative Defenses.—Equitable defenses where injunctive or other equitable relief is sought, may be avail-

able for laches, unlawfully extending scope of copyright monopoly by attempting tomonopolize, or by forcing tie-in sales of other copyrighted or non-copyrighted com-modities or rights, by misusing copyright or by perpetrating fraud upon Copyright Office.

License is available as affirmative defense. See topic Licenses.Unintended Infringement.—Copyright is strict liability tort; as such, intent to infringe

is not required. Defense of innocence based on absence of copyright notice was removedfrom statute in 1989. At same time need for notice was eliminated. (§405[b]).

Estoppel and Laches.—May be available under certain factual situations. See topicRemedies for Infringement.

Statute of Limitations.—Five years from date cause of action arose in criminal casesor three years after claim accrued in civil cases. (§507).

Procedural Defenses.—Jurisdiction could be attacked through failure to possess validregistration, lack of standing by plaintiff, or improper venue. Improper venue must beraised by motion, since it can be waived by general appearance in action.

Misjoinder or non-joinder of parties plaintiff or defendant, not amounting to a juris-dictional defect, will be governed by the Federal Rules of Civil Procedure.

Prior Statute.—Many copyrights which arose under pre-1978 statute are still existing.Their validity will be tested under pre-1978 statute while their infringement will bedetermined under current statute.

See additional discussion under topic Remedies for Infringement.

DEPOSIT AND REGISTRATION:

Deposit and registration are two separate concepts under Act. Owner of copyright orof exclusive right of publication in work published in U.S. shall deposit two copies ofwork in Copyright Office within three months of such publication. While failure todeposit does not affect copyright in work, failure to deposit after demand by Register ofCopyright can result in fines. (§407). Deposit for §407 can be made without applicationfor registration.

Registration, on other hand, is permissive. (§408). Registration also requires depositof two copies along with application for registration and fee. Single deposit can be usedto satisfy deposit (§407) requirements and registration (§408) provisions if deposit andregistration are accomplished at same time. If not accomplished simultaneously, twoadditional copies must be filed with application to register.

Registration.—Description of work as audiovisual work, rather than musical com-position, did not limit scope of plaintiff’s right to claim copyright in song included onaudiovisual work deposited with copyright application. It is acceptable to describe physi-cal nature of deposit submitted with application, rather than only scope of copyrightclaim.

Deposit and Registration in Relation to Commencement of Infringement Suit.—Except for actions for infringement of copyrights in works whose country of origin isnot U.S., no action for infringement of copyright can be instituted until registration ofcopyright claim is made. (§411[a]). Where such registration is refused by CopyrightOffice, action may be instituted without registration if notice thereof and copy of com-plaint are served on Register of Copyrights. (§411). See topic Country Of Origin.

Statutory damages or attorneys fees may not be awarded for infringement of unpub-lished work commenced before effective date of its registration or where infringementcommenced after publication of work and before its registration, unless registration ismade within three months after first publication. (§412).

Copyright Office permits expedited registration for purposes of suit for additional fee.

Loose-leaf Separate Publications.—Loose-leaf materials published at various inter-vals, although intended for insertion in single binder, are nevertheless, not to be treated

as one work, but as ‘‘books’’ separately published, with separate registration accompa-nied by separate fee for each published insertion.

Unpublished Works.—Works of which copies are not published may be registered byfiling application and deposit of one complete copy of such work just as published worksmay be registered.

DERIVATIVE COPYRIGHT WORKS:Right to make derivative works is one of exclusive rights granted to owner of copy-

right. (§106).Derivative work is work based on one or more preexisting works and involves addition

of some creative authorship. (§101).

From Public Domain.—Compilations or abridgments, adaptations, arrangements, dra-matizations, translations or other versions of works in the public domain, may be copy-righted as new works. However, the protection of the copyright is extended only to thenew contributions of the author, nothing being removed by such copyright from thepublic domain still available to all others. (§101).

Copyright in derivative work extends only to material contributed by authors of suchwork and is independent of and does not affect or enlarge copyright that may exist inpreexisting work. (§103[b]).

Trivial Editing.—Derivative copyright is not supportable by publishing an edition ofa biography in public domain with many trivial changes in punctuation, etc. (C.D. Cal.1967, 264 F. Supp. 603, 152 USPQ 787).

From Copyright Works.—With the consent of the copyright owner, compilations orabridgments, adaptations, arrangements, dramatizations, translations or other versions ofcopyrighted works, or works republished with new matter, may be copyrighted as newderivative works. However, copyrighting of such new works does not affect validity oforiginal copyright as to material used, does not serve to secure or extend copyright inoriginal work, and is not construed to imply exclusive right to such use of original work.(§§103, 106).

New Editions.—The foregoing principles apply to new editions of a copyrightedwork, which may be copyrighted as new works if the same have new matter withoutserving to extend copyright in the original edition or to affect the validity of the originalcopyright. (§§101, 103).

Applications.—Care must be taken to refer in application to prior works upon whichderivative work is based, otherwise copyright may be invalid or unenforceable.

Cancellation of Agreements.—Assignments and licenses made by author are can-celable without cause at end of 35 years from execution. (§§203, 304[c]). Owner ofderivative work made under such agreement may continue to sell such works but no newderivative works may be created. Works copyrighted prior to 1978 have different rules.

DESIGN PATENT:Possible Overlapping Jurisdiction Between Patent and Copyright Law over De-

signs.—Court of Customs and Patent Appeals, pointed out that in Mazer v. Stein (1954,347 U.S. 201, 217, 100 USPQ 325, 333) U.S. Supreme Court recognized an area ofoverlapping ‘‘statutory subject matter,’’ but said it was not passing on such issue sinceonly a copyright had been secured. Accordingly, such appellate court reversed a decisionby U.S. Patent Office rejecting an application for a design patent on ground that priorcopyright registration was an election precluding patent protection. Such was not goodground for rejection by Patent Office.

Design patent may be obtained by anyone who has created new, original and orna-mental design for article of manufacture. (Tit. 35, U.S.C., ‘‘Patents,’’ Ch. 16). Problemhere, as in case of other patents, is that design must be product of ‘‘invention,’’ and thusnovel and never before anticipated by others. Search is required before patent will beissued.

Existence of design or utility patent will not affect registrability of claim otherwiseregistrable. (37 CFR §202.10).

Issuance of design patent on new boat hull cancels any protection issued by CopyrightOffice. See topic Boat Hulls.

DESIGNS:Works of art, as well as models or designs for works of art can be copyrighted. This

class includes works of artistic craftsmanship, insofar as their form but not their me-chanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware,and fabric designs, as well as all works belonging to fine arts, such as paintings, drawingsand sculpture. Designs found on useful article are protected only if such designs can beidentified separately from, and are capable of existing independently of, utilitarian as-pects of article. (§101). Unique combination and arrangement of uncopyrightable ele-ments in jewelry (ring) design was entitled to protection under copyright law whennumerous options available to designer, design choices not dictated by function alone andalthough elements of defendants’ design could be found, no ring similar in totality todefendants’ was in evidence and there was evidence of independent creation of ring.(S.D.N.Y. 2000, 56 U.S.P.Q.2d 1763).

See topic Boat Hulls.

DESTRUCTION:See topic Seizure, Impounding and Destruction.

DIGITAL/ONLINE ELECTRONIC RIGHTS:During past decade, Internet has spawned series of new copyright laws and admin-

istrative regulations from Congress and Copyright Office of the Library of Congress inattempt to protect proprietary rights of owners from ease of access, copying and globaldistribution of their works in new electronic media.

Audio Home Recording Act (“AHRA”) of 1992 (Pub. L. No. 102-563, 106 Stat.4237, Oct. 28, 1992) was, with advent of Digital Audio Tape (“DAT”) intended to shieldconsumers against copyright infringement liability for home copying for noncommercialpurposes. It was also intended to protect hardware manufacturers, digital equipmentsellers and marketers of blank tape provided they paid statutory 3% surcharge on their

DEATH MARTINDALE-HUBBELL LAW DIGEST - 2007


DIGITAL/ONLINE ELECTRONIC RIGHTS . . . continuedqualifying sales. Proceeds are then to be divided among musical composers, publishers,record companies and between featured and non-featured artists, musicians and vocalists.

The Digital Performance Rights in Sound Recordings Act (“DPRSR”) of 1995(Pub L. No. 104-39, Jan. 13, 1995) was passed with idea of amplifying rights providedfor in AHRA with particular emphasis on digital transmissions via Internet. It added,however, certain “performance” rights for sound recordings that did not exist prior to thattime, namely rights of artists performing to compensation for their recorded performancesin addition to those collected as royalties for underlying music and lyrics such as havebeen collected by ASCAP, BMI and SESAC for many years. In doing so, it also creatednew Digital Distribution Right for digital phonorecord deliveries that can be collected invariety of ways including pursuant to individual contracts, collective bargaining agree-ments and via statutory digital mechanical licenses. In practice, it is usually artist’s recordlabel that handles such negotiations and collections.

Negotiations of these rights can lead to royalty payments that equal or substantiallyexceed those for more established “performance rights” administered by ASCAP, BMIand SESAC. This may, in time, lead to trade regulation limitations by courts as, inaddition to each of major record labels seeking “gross revenue” percentages from musicusers, there are over 100 independent record labels who also are individually seekingsuch royalty payments, leaving little or no net revenue for actual music users in end oreliminating independent labels from consideration for practical reasons.

Digital Millennium Copyright Act (“DMCA”) (Pub. L. No. 105-304, 112 Stat. 2860,Oct. 28, 1998) covers broad range of copyright issues as they apply to electronic, digitaland online environments. It is probably broadest of new electronic enactments and wasdivided into five Titles as follows. Title I is “WIPO Copyright and Performances andPhonograms Treaties Implementation Act of 1998” and supplements restoration of copy-right protection, originally granted in 1994 GATT implementing legislation, and dealswith circumvention of technological measures for protection of copyright while providingsix sets of specific exemptions to rights created therein. Title II is “Online CopyrightInfringement Liability Act” that creates limitations on liability of online service providersfor copyright infringement when engaging in certain types of activities. Title III is“Computer Maintenance Competition Assurance Act” that creates exemption for makingcopies of computer programs by activating computer for purposes of maintenance orrepair. Title IV continues six miscellaneous provisions relating to functions of CopyrightOffice, distance education, exceptions in Copyright Act for libraries and making ofephemeral recordings, “webcasting” of sound recordings on Internet and applicability ofcollective bargaining agreement obligations in case of transfers of rights in motionpictures. Title V deals with protection for Vessel Hulls. There are many details of DMCAthat merit close and careful scrutiny. One, in particular, is provision contained in 17U.S.C. §512(c) whereby, in order to avail itself of exemptions from liability provided bystatute, Internet Service Provider needs to either provide information on its designatedagent for notification of claimed infringements on system or network that service pro-vider owns or controls. Such information needs to be provided to Copyright Office andthrough service provider’s publicly accessible website.

In order to avoid liability under “safe harbor” provisions of DMCA, Internet ServiceProvider must take reasonable steps to prevent use of its service for purposes of in-fringement. See In re Aimster Copyright Litigation, 334 F.3d 643 (7th Cir. 2003) (InternetService Provider found liable for contributory infringement for its software enablingusers to share music files; ISP found to encourage rather than discourage potentialinfringers).

DIGITAL RECORDING AND TRANSMISSION:

All digital recording devices must include means to restrict serial copying. Suchdevices and recording media therefor must be reported and royalties paid thereon.(§§1001-1003).

Restrictions on Digital Audio Transmissions were enacted in 1995. (§§114, 115).Certain compulsory licenses were provided for as well as need to obtain negotiatedlicenses for some Digital Audio Transmissions. Amendment was directed to computertransmission and downloading of digital works. Such amendments do not apply to analogtransmission.

There are reported decisions involving digital transmission of music. In one, plaintiffswere members of musical groups that made recordings for defendant record companies.Plaintiffs brought suit against record companies and Internet music publisher MP3.Com,Inc. arising from Internet use of recordings produced before Feb. 1, 1996, effective dateof DPRSR. (UMG Recordings, Inc. v. MP3.com, 92 F. Supp.2d 349 [S.D.N.Y. 2000]).Held that expansive language of recording contracts, which gave record companiesunrestricted right to manufacture, use, distribute and sell sound productions of perfor-mances recording thereunder made by any method whatsoever, whether then known or“[t]hereafter to become known” authorized digital transmission of recordings. (2000S.D.N.Y., 123 F. Supp.2d 198). In A & M Records, Inc. v. Napster, Inc., 114 F. Supp.2d896 (N.D. Cal. 2000), aff’d, 239 F.2d 1004 (9th Cir. 2001), district court found thatvirtually all Napster users had engaged in unauthorized downloading and uploading ofplaintiffs’ copyrighted music thereby evidencing predicate of direct infringement. Evi-dence showed that Napster executives had actual knowledge of its users’ direct infringe-ment and that Napster executives actively facilitated distribution of “pirated” music.Hence, Napster contributed to third-party direct infringement of plaintiffs’ copyrightedmusic. Although Napster did not derive any revenue from providing its service, it hadplans to monetize its customer base and eventually derive profits mainly from adver-tisement revenue and sales revenue from selling music directly to users.

DIRECTORIES:

Copyright does not exist in mere compilation of facts in directory. (Feist v. Rural, 111S.Ct. 1282, 18 USPQ2d 1275 [1991]). But copyright may exist in selection or arrange-ment of facts which is result of creative authorship.

DISPLAY:

Concept of display of copyrighted work appears for first time in current statute. Rightto public display is one of exclusive rights of copyright owner. (§106[5]). Private displaysare not prohibited nor is public display by owner of lawful copy of work to viewers

present at place where copy is located. (§109[b]). Display Right has taken on increasingimportance with Internet display of Web pages.

DISTORTION AND DESTRUCTION:Improper distortion, mutilation and destruction—see topic Moral Rights.

DISTRIBUTION:Distribution is one of exclusive rights of copyright ownership. (§106). Distribution is

release to public by sale or other transfer of ownership or by rental, lease or lending.Once copyright owner has distributed copies such copies may be subsequently redis-tributed by owners of copies. (§109[a]). This provision does not apply to importation ofgenuine works. (§602). See topic First Sale Doctrine.

DOLLS AND TOYS:See topics Statuettes (Three-Dimensional Works); Pictorial, Graphic and Sculptural

Works.

DRAMATIZATIONS, ADAPTATIONS, TRANSLATIONS, ETC.:See topic Derivative Copyright Works.

DURATION:Copyright in works created on or after Jan. 1, 1978, exists from creation and endures

for life of author plus 70 years. In case of joint works, term is life of last surviving authorplus 70 years. (§302).

Anonymous and pseudonymous works and works made for hire endure for term of 95years from publication or 120 years from creation, whichever expires first. In case ofanonymous or pseudonymous works, if identity of one of authors is made of record inCopyright Office, term of copyright becomes life of author plus 70 years. (§302.)

Copyright in works created but not published before Jan. 1, 1978, subsists from Jan.1, 1978, and endures for same periods as set forth above, except term of copyright shallnot expire before Dec. 31, 2002, and if published on or before Dec. 31, 2002, it shallnot expire before Dec. 31, 2047. (§303).

Copyrights under Pre-1978 Law and in their first term on Jan. 1, 1978, shall continuefor 28 years from date originally secured plus renewal term of 67 years. (§304[a]).

Copyrights under Pre-1978 Law and in their renewed term shall continue for term of95 years from date copyright was originally secured. (§304[b]).

All copyrights run to end of calendar year in which they would otherwise expire.(§305).

Continued existence of copyrights obtained under Pre-1978 Law will be determinedby propriety of renewals obtained under said Law. Works which have passed into publicdomain because of improper notice, failure to renew or other reason prior to 1978 shallnot be revived by entry into effect of current Law in 1978. Statutory and case law ineffect at time shall determine effect of any act causing loss of copyright.

Works expiring during period immediately before enactment of current Law in 1978were extended yearly by Congress.

Certain foreign works which fell into public domain for failure to comply with U.S.laws were restored to copyright in 1996. Their duration is to be calculated as if they hadnever fallen into public domain. (§104A).

EMPLOYERS AS AUTHORS:See topic Author; also topic Duration.As to rights in works by employees, created within scope of employment, and those

created outside scope of employment, see topic Proprietor, subhead Work for Hire.

ENCRYPTION/TECHNOLOGY CIRCUMVENTION:Caution should be exercised in export of encryption software or its uploading on

Internet. Encryption software keys of over 40 bits for symmetric key ciphers and over512 bits for asymmetric keys must be pre-approved by Department of Commerce beforetransmission outside U.S.

Recent amendments to copyright statute prohibit evasion of encryption protection tocopyrighted works beginning in year 2000.

While there are certain limited exemptions for specific research and similar purposes,Digital Millennium Copyright Act (“DMCA”) (17 U.S.C. §1201 et seq.) (see below)creates strong statutory remedies against defendants who disable or circumvent techno-logical protection measures to curb against unauthorized copying, distribution or otherprotected uses of copyrighted works. This is particularly important in electronic onlinecontext as encryption, electronic “watermarking” and “fingerprinting” and industry ef-forts such as Secure Digital Music Initiative (“SDMI”) are being taken in effort to employtechnology against infringers who abduct copyrighted works with increasing ease. Thesemeasures are designed not only to mark but also to track copies of protected works soenforcement efforts can be mounted against infringers.

Illustrations of enforcement efforts involve these provisions is decision in UniversalStudios Inc. v. Corley 273 F.3d 429 (2d Cir. 2001), A DeCSS (Decode Content Scram-bling System) encryption system, believed to have been created by European computer“hackers” and used to decode DVD encryption system created by motion pictures stu-dios, was posted on defendant’s web site and offered free for downloading off web siteas way to sidestep studios’ copyright protection software on their DVD’s. Studios, relyingon DMCA, charged defendant Corley and two others with illegal copying and in Jan.2001, U.S. District Court issued injunction against them. While defendants complied withinjunction in respect to their own sites, defendant Corley began linking his site to sitesthat continued to post software and, since owned by nonparties, were not directly subjectto court’s injunction. Defendant Corley argued that posting code is protected by Freedomof Expression under First Amendment to the U.S. Constitution and that DeCSS softwarewas designed for individual computer users to make copies of digital DVD’s for personaluse only. Movie studios argued that software had both intended and actual commercialuse and clearly infringed DMCA.

Other DMCA anti-circumvention of technology matter that bears citing are criminalcases, USA v. Sklyarov, Crim. Docket No. 01-M-257-ALL, N.D. Cal. (San Jose) (filedon July 11, 2001) and companion case of USA v. Elcom Ltd., et al., Crim. Docket No.

UNITED STATES COPYRIGHT LAW DIGEST ENCRYPTION/TECHNOLOGY CIRCUMVENTION


ENCRYPTION/TECHNOLOGY CIRCUMVENTION . . . continued01-CR-20138-ALL, N.D. Cal. (San Jose) (filed on Aug. 28, 2001). Dmitri Sklyarov, isRussian programmer. His Moscow-based employer, Elcom Ltd. posted his bail and isdefendant in separate suit that was filed. He was arrested in Las Vegas while attendingcomputer industry trade show and charged with illegal distribution of program that isalleged to unlawfully crack Adobe Software encryption code used for electronic books.Defendants have argued “fair use” as defense claiming that decryption software hasnon-infringing uses and that software is legal in Russia and, therefore, raising interna-tional cross-border jurisdictional and other legal issues.

EPHEMERAL RECORDINGS:

It is not infringement of copyright for transmitting organization entitled to transmit topublic performance or display of work other than movie or audiovisual work to makeone copy of transmission if made for limited purposes and for limited times. (§112). Thisprivilege has also been extended to copies made to Webcasting in DMCA.

EQUITABLE JURISDICTION:

See topic Jurisdiction and Venue; also topic Remedies for Infringement.

ESTOPPEL OF LICENSEE:

For discussion of U.S. Supreme Court’s overruling of time-honored doctrine of es-toppel of a licensee to question validity of patent or copyright licensed, in Lear v. Adkinspatent case (1969, 395 U.S. 653, 162 USPQ1), see topic Licenses, subhead Estoppel ofLicensee. It is not clear that this rule applies to copyright licensees.

EVIDENCE:

See topics Certificate of Registration; Remedies for Infringement.

EXECUTORS AND ADMINISTRATORS:

Executors may obtain renewals of Pre-1978 copyright registration in absence of widowor children. (§304).

EXTENSION OF TERM:

See topic Duration.

FABRIC DESIGNS, JEWELRY, ETC.:

See topic Pictorial, Graphic and Sculptural Works.

FAIR USE:

The courts have always implied the consent of an author to the ‘‘fair use’’ by othersof his copyrighted work. Since the rights given to the author are for the Constitutionalpurpose of ‘‘promoting the progress of science and useful arts,’’ the discussion of ideas,opinions and expressions contained in copyrighted works implies some reasonable quo-tation or copying of small portions of the work may be made, particularly by way ofcriticism, comment or discussion thereof. (William Patry, The Fair Use Privilege inCopyright Law [2d ed. 1995]).

Concept of fair use was court developed over the years and statutorily recognized in§107 of 1976 Act. Non-exhaustive statutory list of factors to consider in determiningdefense of fair use include: (1) Purpose and character of use; (2) nature of work copiedfrom; (3) amount and substantiality of taking; and (4) effect on market for or value ofcopyrighted work. Other factors may include unpublished nature of copyrighted work,and user; good or bad faith and intent of taker. No one factor should be controlling.

Fair uses can be found in literary criticism, comment, news reporting, teaching,scholarship, research, historical writings, biographical writings and parodies. Such uses,however, are not per se fair use. Each case is fact specific and all factors must beconsidered.

There is no First Amendment defense, per se, to copyright infringement. Rather, FirstAmendment concerns are taken into account by fair use defense, and by copyright law’sdistinction between expression, which is protected by copyright, and ideas, which arethemselves not protectable. (471 U.S. 539).

One of the most frequently found fair uses is parody, in which material taken fromcopyrighted work is subject of humorous treatment. U.S. Supreme Court has definedparody as “the use of some elements of a prior author’s composition to create a new onethat, at least in part, comments on that author’s works.” Acuff v. Rose (510 U.S. 569).However, even if work is parody, it may not qualify as fair use. Parody is evaluated under§107 as part of fair use analysis. For example, to qualify as fair use, original work mustbe object of purported parody and only so much of original can be taken as to suggestparody’s subject (that is, original work). Analysis is fact-specific. Thus, one court hasfound to be parody movie advertisement showing superimposition of movie star’s faceover pregnant model posed identically to pregnant Demi Moore depicted on Vanity Faircover. That court found advertisement commented on pretentiousness of original and wasunrelated to movie being promoted. (2d Cir. 1998, 137 F.3d 109). On other hand, anothercourt held that movie advertisement and trailer bearing strong resemblance to anothermovie advertisement and trailer were not parodies; although advertising copy clearlycommunicated a joke, it was not targeted at original, but, rather, promoted movie. (199811 F. Supp.2d 1179). Another court held that purported parody of Dr. Seuss’ Cat in theHat commenting on O.J. Simpson trial was not parody because it did not comment onoriginal work; rather it used Dr. Seuss work merely to “get attention” and “maybe evento avoid the drudgery in working up something fresh”. (9th Cir. 1997, 109 F.3d 1394).

Supreme Court has stated, in dicta, that it is much more difficult to show that satireis subject to fair use defense. Supreme Court noted satire “has been defined as a work‘in which prevalent follies or vices are assailed with ridicule’ or ‘are attacked throughirony, derision, or wit,’”; unlike parody, satire does not comment on work it copies, but,rather, is directed to some subject other than original work. Parody is more likely toqualify for fair use defense than satire, according to Supreme Court, because “[p]arodyneeds to mimic an original to make its point, and so has some claim to use the creationof its victim’s (or collective victims’) imagination, whereas satire can stand on its owntwo feet and so requires justification for the very act of borrowing.” (510 U.S. 569).

Another type of fair use considered common is fleeting use of copyrighted materialsas decorative backgrounds in motion pictures and television programs. If use is deminimis, fair use factors need not be applied. Where use is significant, several courts havefound infringement.

Fair use is not only exception to exclusive rights of copyright owners. (see §§107-120.)On Nov. 2, 2002, President Bush signed “The 21st Century Department of Justice

Appropriations Authorization Act” (H.R. 2215) into Law. “Intellectual Property” sectionof Act, captioned “Technology, Education and Copyright Harmonization Act of 2002”,creates new §13302 “Educational Use Copyright Exemption” for certain “Performancesand Displays for Educational Use” as “part of a mediated instructional activities trans-mitted via digital networks and for certain performances of a non-dramatic literary ormusical works in live classroom sessions by or in the course of transmission.”

FEES:Registration fees and all other remittances sent to the Copyright Office should be by

means of a money order, postal note, check or bank draft made payable to the Registerof Copyrights. Postage stamps should not be sent for fees. Coin or currency enclosed inletters or packages will be at remitter’s risk. Persons or firms for their own conveniencemay deposit in the Copyright Office a sum of money in advance against which copyrightfees will be charged. See http://www.loc.gov for details.

Where the statutory fee is submitted in the form of a check, the registration of thecopyright claim or other record made by the Office is provisional until payment in moneyis received. In the event the fee is not paid, the registration or other record will beexpunged. (Reg. §201.6[a, b]).

Schedule of fees is now as follows (§708):All Registrations $30.00All Renewals 60.00Assignments (1 title) 20.00

Additional titles, each 1.00Searches (per hour) 20.00

Refunds.—Money paid for applications which are rejected as non-copyrightable subjectmatter or because claim is invalid for any other reason will not be refunded. Paymentsmade in excess or by mistake will be refunded but amounts of $5 or less will not bereturned unless specifically requested.

Remittances from Foreign Countries.—These should be in the form of an interna-tional money order or bank draft payable and immediately negotiable in the U.S.A. forthe full amount of the fee required. (37 CFR, §201.6[a]).

FIRST SALE DOCTRINE:Once owner of copyright in work sells or otherwise relinquishes ownership of material

object embodying copyright, owner cannot control subsequent transfer of object. Trans-feree of object is still bound to recognize other exclusive rights of copyright owner, suchas exclusive right to reproduce. This is called First Sale Doctrine. This doctrine equallyapplies to reimportation of copyrighted works. (L’Anza [523 U.S. 135]). Where workslicensed for foreign manufacture are imported into U.S., in violation of U.S. distributionrights, importation may be barred.

FIXATION:Work is fixed in tangible medium of expression when its embodiment in copy is

sufficiently permanent to permit it to be perceived, reproduced or otherwise communi-cated for period of more than transitory duration. (§101). Work consisting of sounds,images, or both, that are being transmitted is fixed if fixation of work is being madesimultaneously with its transmission. Example would be transmission of baseball game.

Unauthorized fixation and trafficking in such fixations of live musical performances isinfringement of performers’ rights. (§1101). Example would be unauthorized capturingof band’s performance.

FOREIGN RIGHTS:See also topic Aliens (Protection in U.S.A.).For texts of current foreign copyright laws (in English translation where non-English),

see latest supplements of Copyright Laws and Treaties of the World, compiled byUNESCO, Berne Union, U.S. Copyright Office, and U.K. Board of Trade, and jointlypublished by UNESCO, Paris, France, and Bureau of National Affairs, Inc., Washington,D. C. and World Intellectual Property Organization’s Website, http://www.wipo.org.

Rights in copyrights available to U.S. citizens and domiciliaries in foreign countriesand available to foreign citizens and domiciliaries in U.S., are dependent upon domesticlaw, bilateral agreement and treaties (reciprocal relations) and international conventions.

Under reciprocal relations and international conventions, citizens of one contractingnation are generally afforded protection of their copyrights in other contracting countriesto same extent such other country affords protection to its own citizens.

International Conventions.—U.S. is member of two major copyright conventions,Berne Convention (since 1989) (see topic: Berne Convention) and Universal CopyrightConvention (since 1952) (see topic: Universal Copyright Convention). Through adher-ence to GATT Treaty in 1994 and two 1996 WIPO treaties, relations now exist betweenU.S. and certain World Trade Organization and WIPO members who are not membersof Berne or U.C.C.

Inter-American Conventions.—United States ratified certain Inter-American Copy-right Conventions (that adopted in Mexico City in 1902 and superceded at Buenos Airesin 1910). Under latter Convention, known as Buenos Aires Convention, for example, actof copyright in any one of states, in conformity with its laws, shall produce its effect offull right in all other countries without necessity of complying with any other formalities,providing always there shall appear in work statement that indicates reservation ofproperty right. (Art. 3). This means that U.S. works published in these countries shouldhave copyright notice indicating reservation of property right.

Members of Convention include Argentina, Bolivia, Brazil, Chile, Colombia, CostaRica, Dominican Republic, Ecuador, Guatemala, Haiti, Honduras, Mexico, Nicaragua,Panama, Paraguay, Peru, U.S. and Uruguay.

Reciprocal Relations.—For list of countries with which U.S. has reciprocal copyrightrelations under which U.S. citizens are given copyright protection in such countries on

ENCRYPTION/TECHNOLOGY CIRCUMVENTION MARTINDALE-HUBBELL LAW DIGEST - 2007


FOREIGN RIGHTS . . . continuedsame basis as is given to their own citizens, or at least protection equivalent to that givenunder U.S. Act, see Aliens. This may mean that U.S. citizen has copyright automaticallyin such countries, without any formalities, if citizens of such countries enjoy copyrightprotection without formality. But if citizens of any such foreign country are required toobserve any formality in connection with their copyrights, such would be required of U.S.citizens.

International Agreement for Protection of Producers of Phonograms against theirUnauthorized Duplication.—Problem of piracy of sound recordings by unauthorizedduplication of recorded identical sounds on tape, wire, and other phonograms, has takenon great significance not only domestically, but internationally.

This problem resulted in above Convention in 1971 and U.S. joined Mar. 10, 1974.Members of this Convention are: Argentina, Australia, Austria, Barbados, Brazil,

Burkina Faso (Upper Volta), Chile, Costa Rica, Czechoslovakia, Denmark, Ecuador,Egypt, El Salvador, Fiji, Finland, France, Germany, Guatemala, Honduras, Hungary,India, Israel, Italy, Japan, Kenya, Korea (Republic), Luxembourg, Mexico, Monaco, NewZealand, Norway, Panama, Paraguay, Peru, Spain, Sweden, Trinidad and Tobago, U.K.,U.S., Uruguay, Vatican City, Venezuela, Zaire. (Copyright Office Circular 38[a]).

FORFEITURE AND ABANDONMENT:Under law prior to Jan. 1, 1978, works published by or with authorization of author

or copyright owner and without proper notice of copyright fell into public domain. Worksso published after Jan. 1, 1978 could be saved from abandonment by complying withrequirements of then effective version of §405 of statute. On Mar. 1, 1989, CopyrightAct was amended to eliminate need for copyright notice at all for works first publishedafter that date. All works first published prior to Mar. 1, 1989 are still subject to noticerequirements in effect as of date of their first publication for copies distributed beforethat date. Mar. 1, 1989 amendment did not retrieve any works then in public domain andany works published without notice between Jan. 1, 1978 and Mar. 1, 1989 are governedby remedial provisions of then-effective version of §405. (36 F.3d 1214).

See topic Notice of Copyright, for advantages to continued use of notice.Publication is defined as distribution of copies or phonorecords of work to public by

sale or other transfer of ownership, or by rental, lease or loaning. Offering to distributecopies to group of persons for purposes of further distribution, public performance, orpublic display constitutes publication. Public performance or public display itself is notpublication. (§101). Question of whether or not publication actually took place is de-termined on facts of each case. See topic Publication.

Offering without restriction to interested insurance companies 100 printed pamphlets,without copyright notice, of a detailed insurance plan and forms, which several of suchinsurance companies thereupon adopted and used, dedicated such work to extent sopublished, and made invalid statutory copyright attempted to be secured thereon ninemonths later by distributing 500 such pamphlets with notice of copyright affixed thereto.(2d Cir., 1958, 253 F.2d 702).

Where copyright owner had permitted for many years circulation of infringing copiesof his work (a caricature print), without copyright notices thereon, and without takingsteps to stop infringements, an inference is supported that copyright owner authorized oracquiesced in wide circulation of copies without copyright notice, thereby dedicatingcopyrighted work to public. (2d Cir. 1965, 342 F.2d 143, 144 USPQ 560).

Well-known and widely disseminated speech such as Martin Luther King’s ‘‘I havea Dream’’ speech may be dedicated to public domain and free for others to copy if norestrictions on further dissemination were made and proper notice not affixed (11thCircuit).

Publication by Phonorecord.—In order to correct split among courts, statute has beenamended to provide that distribution before 1978 of phonorecord was not publication,and possible abandonment, of underlying musical work. (17 U.S.C. §303[b]).

Failure to apply for renewal during 28th year of original term of renewable copyrightthrew work into public domain at end of 28th year. See topic Duration. Since 1992renewable copyrights have been automatically renewed. (§304[a]). See topic Renewal ofCopyright.

Foreign Works Restored.—On Jan. 1, 1996 certain foreign works still copyrightedin home country were restored to copyright protection here if they had fallen into publicdomain in U.S. because of failure to comply with U.S. formalities or subject matter.(§104A).

FORMS:Blank forms are usually not copyrightable as means of merely collecting information.

Where forms convey information, they may be copyrightable. (37 CFR §202.1). Reg-istration of forms by Copyright Office is prima facie evidence of copyrightability. (155USPQ 133).

FRAUD:Knowing false representation of material fact in application for copyright or in any

written statement relating thereto is punishable by $2,500 fine. (§506). In addition, thiswill jeopardize copyright registration.

Fraudulent use or removal of copyright notice is subject to same fine. (§506).

GAMES:Games as ideas cannot be copyrighted but rules and Playing Board may be. See topic

Ideas, Plans, Systems, Methods, Kits, Etc. Some games may be patentable.Public performance of copyrighted game as part of national tournament is not in-

fringement. (964 F.2d 965).

GIFT:See topic Assignment, subhead Gift of Future Royalties.

GOVERNMENTAL EMPLOYEES:As to right of federal governmental employees to secure copyright in their works of

authorship, even though ideas were developed in course of performing governmental

duties, see topic Proprietor. Copyright in works created outside of employment belongsto employee.

Most federal governmental works cannot be copyrighted. (§105). Works of stategovernment are not excluded from protection.

GOVERNMENTAL INFRINGEMENT:U.S. Government is liable for infringement of copyright. (28 U.S.C. §1498[b]). How-

ever, remedies given copyright owner are not those under copyright statute, Tit. 17,U.S.C., but only by action exclusively against U.S. in Court of Claims for recovery ofowner’s reasonable and entire compensation as damages for such infringement, includingminimum statutory damages as provided in §504 of Tit. 17, but not costs. (§505). Suchaction is available for infringements committed not only by Government, but by anycorporation owned or controlled by it, or by contractor, subcontractor, or any person, firmor corporation acting for Government. Government employee may have such right ofaction, provided he was not in position to order, influence or induce governmental use,and provided, further, that work was not prepared during such employment, as part ofhis official functions, or by use of governmental time, material or facilities. Authority isgiven appropriate governmental corporation, or head of appropriate governmental de-partment or agency, to settle and compromise damage claim administratively, before suit,out of available appropriations. Three-year limitations period is provided; claims arisingin foreign countries are inapplicable; and nothing in Act is to be construed to waive anyCongressional immunity granted by Art. I, §6 of U.S. Constitution. Since such typicalcopyright remedies as injunction, seizure, impounding, and destruction, are not madeavailable, legislation does no more in effect than provide reasonable compensation whereGovernment, or one of its agencies, chooses to utilize copyright property.

State Infringement.—States and their agents may be liable for damages for copyrightinfringement after Nov. 15, 1990. (17 U.S.C. §§501, 511). Recent amendment to statutemaking states liable for infringement has been held unconstitutional, however, by lowercourts.

Governmental Use or Infringement Does Not Authorize Others to Infringe.—Althoughdefendant’s use of plaintiff’s copyrightable and copyrighted motion picture photographsof shooting of President Kennedy, by way of unauthorized charcoal sketches thereof indefendant’s published story of assassination, was ultimately deemed a ‘‘fair use’’ andnon-infringing, since too inconsequential to affect value of plaintiff’s work in a non-competitive medium, court does point out by way of dictum, that Government’s appro-priation of plaintiff’s copyrighted motion picture photographs for Warren CommissionReport, per se caused no abridgement of copyright or authorized others to use materialwithout copyright owner’s consent. (S.D.N.Y. 1968, 293 F. Supp. 130, 159 USPQ 663).

GOVERNMENTAL PUBLICATIONS:Copyright is generally not available for any work of U.S. Government, but U.S.

Government is not precluded from receiving and holding copyrights transferred to it byassignment, bequest or otherwise. (§105). Government may obtain copyright on certainstandard reference data published by Commerce Department (15 U.S.C. 290e), U.S.Postal Service publications and certain other limited forms of works.

Papers created by government employees within scope of their employment are con-sidered governmental publications.

Works created for government by independent contractors may be copyrightable.(1981, 667 F.2d 102).

Whenever copy is published consisting preponderantly of works of U.S. Government,notice of copyright should include statement identifying those portions of copy em-bodying work protected by statute. (§403).

This requirement was mandatory for works published prior to Mar. 1, 1989 but onlyrecommended for evidentiary purposes for such works first published thereafter.

Works created by states or state bodies may be copyrightable.

GOVERNMENT PROPRIETORS:See topic Proprietor, subhead Government Proprietors.

GRAPHIC, PICTORIAL, SCULPTURAL WORKS:See topic Pictorial, Graphic and Sculptural Works.

GREY MARKET GOODS:Grey market goods are generally those exported by producer which are reimported to

U.S. While this is basically trademark issue, cases based on copyrighted labels under 17U.S.C. §602, do not allow blocking of such imports. (523 U.S. 135).

HOTEL REPLAY:Where hotel, apartment house or similar establishment relays transmitted radio or

television signal by broadcast station to private lodgings of guests or residents at nocharge, there is no copyright infringement. (§111[a][1]). Where hotel lends video tapesfor use by guests in private rooms this is not public performance and not infringement.Where hotel broadcasts or otherwise transmits to hotel room guests, material not trans-mitted by radio or TV station, such as VCR tapes, such transmission is infringementunless licensed.

IDEAS, PLANS, SYSTEMS, METHODS, KITS, ETC.:Copyright protection does not extend to ideas, procedures, processes, systems, methods

of operation, concepts, principles or discoveries, but exists only in their form of ex-pression in work. (§102[b]).

Ideas Involving Methods, Processes, etc.—An original idea, such as a plan for a typeof motion picture, radio or television program, a new method for an advertising cam-paign, a new system of playing or teaching contract bridge, keeping accounting records,or selling insurance, is the author’s property while he keeps it to himself. The situationis the same as to trade secrets, secret processes, secret lists. The exclusive right theretowill not, however, survive a voluntary disclosure, and will become public propertyavailable to anyone desiring to utilize them.

Statutory copyright can be secured for a book describing or illustrating these ideas,plans, methods, systems, secrets and processes. The copyright does not, however, protect

UNITED STATES COPYRIGHT LAW DIGEST IDEAS, PLANS, SYSTEMS, METHODS, KITS, ETC.


IDEAS, PLANS, SYSTEMS, METHODS, KITS, ETC. . . . continuedthe intellectual conceptions themselves. It merely protects the author’s expression indescribing or illustrating them. Since the securing of copyright involves a voluntarydisclosure to the public of the contents, the public is perfectly free, despite the copyright,and unless patented, to utilize any of ideas, plans, methods or processes, disclosed, orto teach them to others, or to illustrate them, or to write about them and secure copyrightfor their own descriptions. Public is not free to copy author’s copyrighted expression indescribing his ideas, but is free to utilize ideas themselves, according to leading case ofBaker v. Selden (1880, 100 U.S. 99) involving alleged infringement of copyrighted book‘‘Seldon’s Condensed Ledger, or Book-keeping Simplified’’ containing system of rulingsfor accountants as arranged and described in book.

Such ideas, etc. may be protected by Patent Law.

Merger of Idea.—Where possible ways of expression of ideas are limited or obvious,such as very simple game or contest rules, author’s expression may merge with idea andis not protectable. Otherwise idea itself would be protected. (379 F.2d 675).

Scenes A Faire.—Certain events or situations may naturally flow from idea and arecalled scenes a faire. Use of such events or situations, unless slavishly taking expression,do not indicate improper copying. Thus, idea of cross-continent train trip would nec-essarily involve station stops, dining car meals and customary sights and sounds.

Means of Protection.—Some ideas and processes may be protected by patents, othersby state enforced contracts, express or implied confidential arrangements, or fiduciaryduty.

Plans for architectural works are protectable not only to prevent copying of plans, butalso erection of structure. (§106). Other type plans, such as electrical drawings and thelike may be protected from being copied, but cannot prevent use of plan to constructdevice or system. Latter is general rule with broader architectural rule because of ourobligations under Berne Convention.

Rules of a Game.—Plaintiff’s claimed copyright in a book of rules for plaintiff’s gameCarom could not be deemed infringed by defendant, another distributor of Carom who,despite admitted access to plaintiff’s published ‘‘Rules’’, did not copy same verbatim indefendant’s published ‘‘Rules’’, but made changes in their language to enhance theirclarity. Rules of a ‘‘game’’ are in public domain but there may be protection in expressionof rules unless rules can be expressed in only very limited way. To hold otherwise wouldprevent publication of similar rules and afford protection to game itself, citing 379 F.2d675, 154 USPQ 193. (1st Cir. 1967).

Copyrighted Indemnity Forms.—While detailed insurance plan for blanket bond tocover replacement of lost securities, contained in pamphlet with form of proposed bond,affidavit of loss and indemnity agreement integrated to narrative explanatory material,can be validly copyrighted, standard of proof is so stiff for infringement as to leave little,if any, protection to copyright owner, as far as exclusive utilization of his plan or ideais concerned. (2d Cir., 1958, 253 F.2d 702). Noninfringement in such case was foundbecause alleged infringer’s use of language in copyrighted ‘‘forms’’ was merely inci-dental to his use of underlying idea which he had right to use. There was no slavishcopying of language of copyrighted work. Fact, also, that author, prior to affixing noticeof copyright to 500 pamphlets, had nine months before distributed 100 pamphlets withoutcopyright notice to interested insurance companies, few of which adopted his plan andbegan to use forms, was held to be dedicatory and forfeited his right to later copyright.Injunction granted by lower court forbidding author to assert that any of his forms werecopyrighted, was modified, however (since forms were copyrightable), to extend nofurther than to those forms as to which lower court had found forfeiture of right tocopyright by prior general publication without copyright notice.

ILLEGITIMATE CHILDREN:

See topic Children.

IMPORTATION:

Manufacturing Requirements.—Requirement of U.S. or Canadian manufacture tomaintain copyright in certain English language literary material expired on July 1, 1986.Improper importation of works in violation of manufacturing provision may have causedloss of copyright prior to 1986. Since many pre-1986 works are still in copyright,importation prior to 1986 should be considered in determining continued viability ofcopyright. Certain foreign works which fell into public domain for failure to comply withmanufacturing requirements may be restored to copyright. (§104A).

Infringing Importation.—Importation of even genuine copies of work manufacturedabroad is infringement if done without permission of copyright owner. (§601).

Customs Regulations.—Pursuant to Customs Regulations infringing imports may beseized and forfeited. (§603). Such regulations appear in Tit. 19 CFR Part 133. Copyrightsmust be registered with customs for §603 to apply.

INFRINGEMENT:

Infringement is defined by statute as violation of any of exclusive rights of copyrightowner as provided by statute (§§106-106A) or importation of copies in violation ofstatute (§602). Violation includes proof of access to work, copying and that such copyingis substantial taking of work. In determining infringement, courts first determine if therewas copying of protectible material, and, if so, it then determines if such copying wassubstantial. Test for substantial copying is whether ordinary observer would believeaccused work was taken from copyrighted work. One court has limited ordinary observerto one in specific market for works. Circuits vary as to how they frame test for in-fringement.

By U.S. Government.—U.S. Government is liable for infringement of copyright, butby way only of action in U.S. Court of Claims for recovery of copyright owner’sreasonable and entire compensation as damages, including minimum statutory damagessuch as provided by copyright statute. See topic Governmental Infringement, for variousconditions under which such remedy is available.

Foreign Infringement.—U.S. courts generally will not find jurisdiction to try issuesof foreign infringement and damages therefor. Where foreign infringement is indepen-

dently based on initial infringement in U.S., some courts will maintain jurisdiction. Meredirecting of foreign infringement from U.S. does not give jurisdiction.

By States.—In 1990, states were made liable for infringement. (§§501[a], 511). Butsome courts have found this provision unconstitutional.

Unfair Use.—The appropriation of an exclusive right must be of a material andsubstantial part of the copyrighted work, amounting to an unfair use. This is a questionof fact depending on the nature of the work and the nature of the use which is notmeasured quantitatively but qualitatively (558 F.2d 1090, 630 F.2d 905). See topic FairUse.

Access and Appropriation Necessary.—Exclusive rights conferred by copyright pre-vent only appropriation of particular copyrighted work by infringer, but do not excludeother authors from independently creating similar or identical works, and utilizing orpermitting others to utilize them, and of securing copyright themselves in such works,provided creator did not borrow from other copyright. Essence of infringement, therefore,is copying or appropriation of claimant’s copyrighted work. Creating without copyingyour own work, even though identical or similar to prior work is complete defense.

Access Implicit in Infringement.—Access to the claimant’s copyright, in order tocopy or borrow therefrom, is required in every actionable infringement. This access neednot necessarily be proved by direct evidence. Circumstantial evidence, from whichconclusion can reasonably be derived that infringer had access to copyrighted claimant’swork, is sufficient. Identity of errors common to both works would be circumstantiallyindicative that common available sources were not consulted by both authors, but thatone work was consulted by other without reference to original sources and its errorsrepeated. Internal similarities in development of work could be such as to be beyondrealm of coincidence and lead to no other conclusion than that portions of one musicalcomposition were copied from another. (684 F.2d 821, 558 F.2d 1090).

Intention Immaterial.—Intention to infringe is immaterial. Even subconscious in-fringement is actionable. (2d Cir. 1983, 772 F.2d 988, 221 USPQ 490). Intention mayinfluence amount of damages awarded. For cases, see topic Remedies for Infringement,subhead Innocence of Intent to Infringe Immaterial.

Liability for criminal penalty, on the other hand, requires that the infringement shallhave been committed wilfully and for profit or that the infringer shall have aided orabetted such an infringement. See topic Criminal Liabilities.

Innocent Infringement.—Former partial defense of innocent infringement was elimi-nated by elimination of notice requirement in 1989. (§405[f]).

Infringement a Tort.—The infringement involved in an appropriation of any rightunder copyright, is a tort, like any other invasion of general property rights. The tortfeasor is primarily liable for his acts. If they are committed in the course of his dutiesfor an employer, the employer may be jointly and severally liable for the acts of hisagent. If acts of infringement are continuing, statute of limitations runs from last in-fringing act.

Joint and Several Liability.—Those who participate in infringement, as well as forwhom infringement is committed, may be jointly and severally liable for infringement,as in other torts. There may also be vicarious infringement. For cases, see topic Remediesfor Infringement, subhead Joint and Several Liability.

Thus if infringement takes place, those who induced it; contributed to it; or werevicariously responsible for it are also liable. Vicarious liability takes place where one hascontrol over place where infringement occurs as in case of night club owners.

Indirect Copying.—It is infringement to copy protected copyrighted work in Frenchlanguage, even though copying was from unprotected English translation of originalFrench work, and translation was in public domain. (E.D.N.Y. 1965, 247 F. Supp. 518,147 USPQ 99).

Copying from one who is already copier is infringement.

Additions to Copyrighted Works.—It is improper to insert advertisements in copy-righted work without permission. (National Bank of Commerce v. Shaklee Corp., 503 F.Supp. 533 [W.D. Tex. 1980]). However, addition of advertising on blank lead of videotape or motion picture is not infringement.

Rights Infringed.—Infringement can be found where any right granted by §106 isused or performed without permission. Violation of rights granted under §106A is alsoconsidered infringement. Thus, distributor of infringing work is as liable as copier.

Infringement of Performers’ Rights.—Unauthorized fixation in records or musicvideos of live musical performances or trafficking in such fixations is infringement ofperformers’ rights. (§1101). Such actions may also be criminal. (18 U.S.C. §2319A).

Digital Audio Transmission.—Unauthorized Digital Audio Transmission of phon-orecord is infringement. (§§114, 115).

INJUNCTION:See topic Remedies for Infringement.

INTERNATIONAL COPYRIGHT ARRANGEMENTS:As to rights of aliens to copyright protection in the United States, under bilateral

presidential proclamations, Buenos Aires Copyright Convention (of 1910), and UniversalCopyright Convention (of 1952), Berne Convention (1886), GATT (1994), and WIPOConventions (1996) see: topics Aliens (Protection in U.S.A.); Importation; Notice ofCopyright; Publication; Unpublished Works; Universal Copyright Convention; BerneConvention.

As to protection of the copyrights of United States citizens or domiciliaries, outsideof the United States, under the above proclamations, treaties and Conventions, see:Aliens; Foreign Rights; Notice of Copyright; Universal Copyright Convention; BerneConvention.

INTERNET:Unauthorized downloading from Internet is infringement as well as unauthorized

loading of copyrighted works on Internet. Transmitting copyrighted works digitally overInternet is infringement. Infringement issues that are still developing in courts involvelinking to various sites; framing, modification of another site; niching, modifying or

IDEAS, PLANS, SYSTEMS, METHODS, KITS, ETC. MARTINDALE-HUBBELL LAW DIGEST - 2007


INTERNET . . . continuedeliminating copyright management information; modifying works to allow more rapidtransmission; sharing of copyrighted recordings; streaming of music. Providers of In-ternet services may be responsible for actions of users of service. (907 F. Supp. 1361).However, §512 of statute has now relieved service providers from most liability formaterial circulated by customers via their service. Party who posted unfinished versionof movie “Hulk” on Internet pled guilty to felony copyright infringement and wassentenced to six months home confinement, three years probation, fined $2,000 andordered to pay $5,000 in restitution to copyright owner in United States v. KerryGonzalez, … F. Supp … (S.D.N.Y. September 2003).

Because of worldwide presence of Internet, foreign copyright laws and other statutesmay apply to material on U.S. website.

See topic Service Providers.

JEWELRY, DISHES, TAPESTRIES, SILVERWARE, ETC.:

See topic Works of Art.

JOINT AUTHORSHIP:

Joint work is work prepared by two or more authors with intention that their con-tributions be merged into inseparable or interdependent parts of unitary whole. (§101).While works combined without such intention during preparation are capable of copy-right protection, they are not joint works. Intent that work be joint work must be mutual;if only one author has requisite intent, it is not joint work. Authors of joint works mayindependently license work but are accountable to co-author. Law is not clear on whethersaid intention must be subjective or objective but it must be prior to creation of work.

Contribution of each joint author need not be equal in amount. Thus, one who suggestsidea for work (not copyrightable) is not joint author with person who carried out suchwork. Likewise, nature of thing depicted in photograph, or subject of photographs is notcopyrightable and one who created subject of photograph (e.g. sculpture) or is subject(e.g. celebrity) is not joint author. (N. D. Ill. 2000, 111 F. Supp.2d 1003; S.D.N.Y. 2000,104 F. Supp.2d 236).

Test for joint authorship prior to 1978 was more liberal. Such test applicable to workscreated pre-1978.

Varying interest in or proceeds from work or joint work requires written instrument.Since considered assignment. (921 F. Supp. 1154).

JOINT LIABILITY:

See topics Infringement, subhead Joint and Several Liability; and Remedies for In-fringement, subhead Joint and Several Liability, catchline Sponsors.

JOINT OWNERSHIP:

Joint ownership includes joint authorship as well as ownership based on assignmentof ownership interest from one to another. In community property states care should betaken to consider potential ownership in both spouses.

All interests in copyright may be assigned or subdivided thereby breaking up copyrightin many ways.

JUKE BOXES:

Operators of coin-operated phonorecord players are subject to negotiated compulsorylicense (§116A), to perform non-dramatic musical works embodied in phonorecord(§§116, 116A).

JURISDICTION AND VENUE:

Federal Jurisdiction.—Where validity or infringement of copyright is issue, juris-diction is granted exclusively to federal courts. (18 U.S.C. §1338). Where divisionalownership of copyright or other contractual issues are subject of litigation, no jurisdictionis granted to federal courts except in diversity situations. (Bassett). However, whencomplaint alleges claim or seeks remedy provided by Copyright Act, federal jurisdictionis properly invoked, even if contract claim is also pled. Also, when interpretation ofcontract requires construction of Copyright Act and seeks remedies thereunder, federaljurisdiction will lie. Claims as to matters that have not been preempted by Federal statute,such as relating to matters not reduced to tangible medium of expression, may be withinjurisdiction of state courts.

Supplementary federal jurisdiction attaches to other state claims accompanying claimfor statutory copyright infringement, based on same factual situation, not otherwisecognizable for federal jurisdiction, such as unfair competition, or implied-in-fact con-tracts for remuneration for misappropriation of idea bearing sufficient concreteness andnovelty. See topic Jurisdiction (Pendent). (18 U.S.C. §1338). See also topic Removal.

Copyright Registration Prerequisite to Federal Copyright Infringement Suit.—Certificate of registration is necessary for suit for infringement except where refused byCopyright Office or for infringement of treaty party works whose country of origin isother than U.S. (§411). See topics Country of Origin; Certificate of Registration, subheadPrerequisite to Suit for Infringement, supra.

Magazine publisher that registered copyrights in magazines in which plaintiff’s au-thors’ articles appeared but did not register copyrights in articles themselves, is notcopyright owner capable of satisfying registration requirement of 17 U.S.C. §411(a) withrespect to plaintiff’s articles and publisher’s registration of collective work therefore didnot create subject matter jurisdiction necessary for author to bring infringement action.Court held that exclusive licensee is not copyright owner for purposes of §411(a) andaffirmed district court’s determination that Conde Nast’s registrations do not affordcopyright protection to Morris’ articles. (2d Cir. 2001, 59 USPQ2d 1581).

Copyright registration must be obtained specifically for work infringed; courts do nothave subject matter jurisdiction over alleged infringements of unregistered derivativework. See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp. 354 F.3d 112 (2d Cir. 2003).

Plaintiff.—Infringement suit must be by owner of exclusive right under copyrightincluding exclusive licensee. It cannot be brought by non-exclusive licensee alone.(§501). Owner of entire copyright or only part of copyright may sue.

Injunctions.—The power to grant injunctions to prevent and restrain violations ofrights granted under copyright, ‘‘in accordance with the course and principles of courtsof equity’’ upon complaint by ‘‘any party aggrieved,’’ is specially conferred by §502.Injunction can be served and be operative throughout U.S., and be enforceable byproceedings in contempt or otherwise by any Court possessing jurisdiction of defendants.Copyright proprietor must also be party to action if aggrieved complainant is not pro-prietor.

Personal Jurisdiction.—Individual state ‘‘long arm’’ statutes have been used to obtainpersonal jurisdiction over individuals and companies. (352 F. Supp. 1062, 374 F. Supp.47).

New International Borders of Internet.—While use of firewalls and various tech-nological screening or filtering devices is increasing, traditional limitations of copyright-related jurisdictional claims, whether in personam or in rem in nature, is changingdramatically in not only intellectual property field but also in respect to areas such asdefamation, pornography, gambling, taxation and trade practice conduct generally. Courtdecisions in U.S. distinguish between active and passive web sites to assert personaljurisdiction on traditional “contacts” test. Active web site provides basis for assertion ofjurisdiction consistent with due process because owner of foreign web site obtainseconomic benefit or causes economic harm to forum residents. Owner of passive web siteprovides information or does not pose economic risk to forum residents. U.S. andinternational court decisions are skewed in their application of principles of jurisdictionin Internet and online context and Congress and multilateral bodies such as WorldIntellectual Property Organization (WIPO) and World Trade Organization (WTO), amongothers, are struggling to develop, adopt and implement protocols and treaties to addressthese gaps in global legal community of states.

E.g., Cybersell v. Cybersell, 130 F.3d 414 (9th Cir. 1997) (finding that Cybersell FLA.passive website lacked sufficient contacts with State of Arizona to give AZ court juris-diction with respect to complaint filed by Cybersell AZ); ALS Scan, Inc. v. DigitalService Consultants Inc. 293 F.3d 707 (4th Cir. 2002); Panavision v. Toeppen, 141 F.3d1316 (9th Cir. 1998) (finding that “cyber pirate” Toeppen’s registration of Panavisiondomain name harmed Panavision in California thereby giving California Court personaljurisdiction over Toeppen in Illinois).

Venue.—While a defect in jurisdiction would be fatal at any stage, defect in venuemay be waived.

The venue of any action, suit or proceeding under the copyright statute is the districtin which the defendant or his agent resides or may be found. (Tit. 28, U.S.C. §1400[a]).

Suits to Declare Copyrights Invalid.—Purported owners of copyrights are indis-pensable parties to action seeking to invalidate their copyrights and to divest them ofownership therein, and if jurisdiction cannot be obtained over such nonresident defen-dants, action cannot be enforced against resident defendants who acted under authorityof such nonresident defendants until invalidity of copyrights in question is adjudicated.(8th Cir. 1959, 271 F.2d 204, 123 USPQ 296).

JURISDICTION (SUPPLEMENTARY):In addition to exclusive original jurisdiction given to District Courts of U.S. of any

civil action arising under Tit. 17 U.S.C. (Copyright) by subsection (a) of 28 U.S.C.§1338, subsection (b) of same section confers original jurisdiction of any civil actionasserting claim of unfair competition when joined with substantial and related claimunder copyright laws. Such supplementary jurisdiction appears also to cover claims basedon same set of facts as infringement claim by which federal jurisdiction was invoked andwhich are not preempted. Otherwise than as supplementary to such infringement claimbased on similar facts, a common law unfair competition, or common law copyrightinfringement or breach of contract claim is a state matter cognizable in state courts, orby federal court applying state law where federal jurisdiction is obtained by diversity ofcitizenship and requisite jurisdictional amount. (S.D.N.Y. 1971, 329 F. Supp. 601, 171USPQ 339). See topic Removal.

JURY TRIAL:Where actual damages are requested, parties are entitled to jury trial. Where only

injunction is requested, jury trial is not of right. Where only statutory damages arerequested, there is right to jury trial. (Feltner).

There is split among courts as to whether request for disgorgement of profits justifiesrequest for jury trial.

LABELS:See topic Prints and Labels.

LETTERS, DIARIES, JOURNALS, PRIVATE NOTES:Such works are considered literary works. (§106). Sending of letter to another does

not transfer copyright in letter which remains with author, although recipient may ownphysical letter itself.

LIBRARIES:See topic Photocopying.

LICENSES:Non-exclusive license is waiver by, or under authority of, copyright owner, of right

to consider as infringing any particular use of work which, but for permission and toextent thereof, would have been violation of exclusive right secured by copyright.

Divisibility of Copyright.—Under 1909 law, assignment could not be made of in-dividual rights that are granted to copyright owner. Such rights could only be licensedand non-exclusive licensee could not sue for infringement.

Under current statute, individual rights granted by §106 are divisible and can belicensed or assigned by copyright owner. (§201). Thus one owning by assignment oneor more exclusive rights or exclusive licensee may sue for infringement of his right.

Community Property.—Care should be exercised in community property states toobtain signature of both spouses to exclusive license or assignment.

UNITED STATES COPYRIGHT LAW DIGEST LICENSES


LICENSES . . . continuedHow Granted.—A license may be granted orally or in writing, for consideration or

as gift. Ordinarily it is granted for consideration, monetary or otherwise, pursuant toagreement. Scope and extent of license, terms and conditions upon which it is grantedand may be terminated, are governed by terms, express or implied in fact, of grant oragreement. Unlike question of infringement of copyright, which is governed exclusivelyby copyright statutes, questions in respect of licenses are governed by laws of variousStates as to gifts, contracts, monopoly, illegality, etc., or of applicable federal statutes ifinterstate commerce is involved.

Licenses may be exclusive or non-exclusive, and may be limited as to time, place,territory, person, or to one or more uses in whole or in part. They may be express orimplied, written or oral. Exclusive license is considered transfer of right and must be inwriting. See topic Assignment.

Interpretation and enforcement of assignments and licenses is properly tried in statecourts not federal.

Conflicts with Transfer.—Non-exclusive license, whether recorded or not, prevailsover conflicting transfer of copyright ownership if taken before execution of transfer orif taken in good faith without knowledge of transfer before it is recorded. (§205[e]).

Violation of License Limitations.—Where the licensee exceeds or disregards thetime, place, personal, or other limitations of his license, such other uses are unlicensed,and the licensor can, at his option, elect to treat the same either as a tortious infringementor as a breach of express or implied obligations of the license agreement not to exceedor disregard license limitations. (530 F.2d 1096). Licensee who enables others to infringemay be guilty of contributory infringement.

Parole Evidence Rule Applicable to License Limitations.—For detailed discussion anddocumentation of the doctrine that the parole evidence rule will preclude a limitedlicensee under the copyright from establishing an asserted prior or contemporaneousparole agreement permitting like use of the copyright at other or additional times andplaces, see 166 F. Supp. 494 D.C. Neb., 1957, 117 USPQ 335, holding that licensee ofright to publish copyrighted advertisement, in designated city only, infringed copyrightwhen he also published advertisement in second city, despite claimed contemporaneousoral agreement permitting him so to do.

Term of License.—While the term of a license, in the absence of express agreement,will be dependent primarily on the evidence of the expressed intention of the parties, therule of patent license construction that the license is for the unexpired term of the patent,may well be followed in copyright cases where the agreement is silent as to term. (20F. Supp. 314). See subhead Cancellation of License, infra.

Cancellation of License.—License granted by author can be terminated at anytimeduring period of five years beginning at end of 35 years from date of execution of grant,with or without cause and notwithstanding any express term set forth in license. (§203).As to termination of license made prior to Jan. 1, 1978, see §204(c). See topic Assign-ment, subhead Rescission of Assignment. Right of termination is not assignable orotherwise alienable. Such right may, however pass, to authors’ heirs as provided in §203.

Trustee in bankruptcy can reject or terminate executory contracts such as license. Thiscan present problems for both parties to contract. See §265, 11 U.S.C.

License by Co-owner.—A valid license may be given by one joint owner of acopyright without the consent of his co-owners.

However, such license must be non-exclusive. All co-owners must join for an effectiveexclusive license, or transfer of exclusive rights (e.g., the exclusive motion picture rightsto a copyrighted story), and if one such co-owner later seeks to repudiate the exclusivegrant, he cannot do so without the other co-owners, unless he takes the burden ofpleading and proving their bad faith in refusing to go along with him. (1961, 3 N.Y.2d339, 132 USPQ 82).

Estoppel of Licensee.—For decades, doctrine of estoppel of a patent licensee, and byanalogy a copyright licensee, to question title of his licensor, or validity of his patent,in a suit for unpaid royalties, has been asserted and apparently generally, accepted.

Warranty of Validity Not Implied.—The general rule that warranties of validity arenot implied in the case of patent licenses (216 N.Y. 40, 46) would appear to be applicableto copyright licenses.

Implied Negative Covenants.—There are implied mutual negative covenants that thelicensor will not injure the licensee by use of his ungranted rights and the licensee willnot injure the licensor’s ungranted rights. (252 U.S. 317).

Licenses for Uncreated Works.—A license would be good whether the work is inbeing or to be created in the future, and it would be immaterial whether a subsequentassignee of the work had notice of prior licenses.

Suits by Licensees.—An exclusive licensee whose rights have been invaded canobtain federal jurisdiction for infringement suit under copyright without joining copyrightowner as co-plaintiff. (§501[b]).

Licensee has no standing to sue for infringement of statutory copyright, except as anexclusive licensee.

If the legal owner of the copyright is entitled to relief on his own account, he neednot join equitable interests in the ownership, but the judgment will be limited to redressof the legal owner’s own interests and the rights of the others reserved. (140 F.2d 268;140 F.2d 266; 140 F.2d 270). A request for injunctive relief in which the rights of theexclusive licensee are those concerned, would appear to require the exclusive licenseeof such particular exclusive right as a necessary co-complainant, since he is really the‘‘party aggrieved’’ and the real party in interest as to such dispute. Court may orderservice of notice of suit on others with interest in copyright. (§501[b]).

Illegality in Licensing.—See this topic supra; also topics Misuse; Monopoly andTrade Restraints.

Compulsory Licenses.—There are several compulsory licenses granted by Act. Prin-cipal ones are: cable television (§111), juke boxes (§116), phonorecords of musical worksonce recorded (§115), public broadcasting (§118), digital recording devices (§1008) anddigital audio transmissions (§§114, 115). Satellite retransmissions. (§§119, 122).

Licensing Organizations.—Organizations have been formed to handle licensing ofworks which would be difficult or inefficient for individual copyright owners to arrange.

These organizations include ASCAP, BMI, SESAC, Harry Fox Agency and Sound Ex-change.

Scope of License.—Care should be taken by licensee to include sufficient rights toaccomplish all intended activities. For example, license to publish work should includeright to publish in electronic media. Rights not specifically granted may be consideredreserved to licensor. In many instances, license terms are included in software packagingand in dialogue box appearing on computer screen (accepted by clicking mouse). If termsare reasonable and purchaser of software can return program if purchaser does not acceptlicense terms, licenses will be enforced against licensee.

Licenses—Authors’ Grants of Electronic Rights.—§201(c) of Copyright Act, whichpermits publishers to revise collective works, does not authorize publisher of periodicalsto publish, in electronic and CD-ROM databases, articles that were licensed by inde-pendent contractors for publication in printed periodicals. Freelancer may license elec-tronic rights and without such license publisher may not re-publish article that previouslyappeared as part of collective work, in print, as standalone electronic work or within newcollective electronic work. (2001 … U.S. …, 121 S.Ct. 2381, 150 L.Ed.2d 500).

Shrinkwrap Licenses.—While “shrinkwrap” licenses for software have regularlybeen upheld as enforceable against consumers when tested in federal courts, whethersuch licenses will continue to be fully enforceable in Internet online environment is beingtested presently. Type of legal issues involved are probably best framed by ProCD, Inc.v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996), wherein Court of Appeals held that “shrink-wrap” licenses are enforceable under general contract law since Zeidenberg who hadopportunity to read contract terms and failed to exercise his option of return was deemedto have consented to “shrinkwrap license terms” when he used product. By contrast, inSpecht v. Netscape, 2d Circuit Court, applying California law, held that Netscape’slicense agreement was not enforceable because someone trying to obtain software wasnot required to read license agreement and consent to its terms in order to downloadsubject software. Some of these issues may be resolved if majority of states adopt UCITA(see topic Uniform Computer Information Transactions Act) but that result is uncertain.

Interpretation and enforcement of licenses is state court action.

LIENS:

Statute’s definition of transfer of copyright includes transfer by mortgage or hypoth-ecation (§101), thus lien may arise as to copyright.

Copyright statute (§202) makes it explicitly clear that incorporeal copyright is distinctfrom any property in material object copyrighted. Such §202 further provides that saleor conveyance, by gift or otherwise, of material object does not of itself constitutetransfer of copyright; and that assignment of copyright does not constitute transfer ofmaterial object.

It is important, therefore, to distinguish foreclosure of liens by way of mortgage orotherwise upon the incorporeal copyright from foreclosure of lien on material object.

Involuntary Sales of Copyrighted Goods.—The ‘‘first sale’’ of copyrighted materialmay be effective and noninfringing, even if not voluntarily made by the copyright owner,as where it is some reasonable and recognized form of compulsory transfer, such as ajudicial sale or court compelled assignment. Copyrighted goods are not immune from thenormal remedies of unpaid creditors until the copyright owner has made a truly voluntarysale. However, the unpaid manufacturer engaged by the copyright owner to make thegoods, cannot resort to self-help by selling the copyrighted goods on the basis of acontract or lien under State law, before an adjudication by a court that the manufactureris entitled to do so, and a U.S. District Court can temporarily restrain such sale pendingdetermination of the right so to sell. (2d Cir. 1963, 315 F.2d 847, 137 USPQ 268).

Bankruptcy.—In the absence of proof that a bankruptcy court exercised its equitablepower to cut off liens on the bankrupt’s property, the District Court denied motion forsummary judgment of dismissal made by alleged infringing film producer defendant whoclaimed that plaintiff author, not being the nominal owner of the copyright, had lost anypossible lien as equitable owner of all rights therein other than serial publication, whenthe serial publisher as nominal copyright owner went through bankruptcy. (S.D.N.Y.1962, 209 F. Supp. 150, 135 USPQ 356).

During bankruptcy, trustee may accept or reject any executory license under copyrightthereby possibly extinguishing license. See 11 U.S.C. §365.

LIMITATION OF ACTIONS:

Criminal and Civil Proceedings.—Statute of limitations is for period of five yearsafter cause of action arose in criminal matter and three years after claim accrued in civilmatter. (§507). If infringement continues after said period suit may be maintained forcurrent infringement.

Since general equitable reasons are available to plaintiff to explain away non-timelyfiling of copyright infringement suit, copyright limitation provisions being remedialrather than substantive, application of Florida Blameless Ignorance rule was unnecessary,and would have been inapplicable in any event under general equitable principles avail-able to plaintiff, if plaintiff could establish same. Plaintiff who had general awareness ofinfringement, but was unable to obtain actual evidence by way of infringing copy, couldhave sued, but failed to do so, during three year period following his first awareness.Knowledge of infringement excluded plaintiff from equitable principle that successfulconcealment of cause of action and fraudulent means to achieve that concealment willtoll statute of limitations. (Court indicates that such principle is not to be confused withdoctrine applicable where gist of action is fraud, and concealment is inherent in fraud,citing 1946, 327 U.S. 392, 90 L.Ed 743.) Summary judgment dismissing plaintiff’s suitwas granted. (5th Cir. 1971, 446 F.2d 338, 170 USPQ 378).

Plaintiff’s amendment time-barred where plaintiff sued for infringement of her copy-right in books two days before three year limitations period expired and sought to amendcomplaint to include allegations of copyright infringement of TV script as to which shehad sought registration one year after filing complaint. Trial court held that infringementof copyright in script is entirely new and different claim than infringement of copyrightin book and does not relate back to original filing because does not arise out of sameconduct, transaction or occurrence. Circuit court held that plaintiff’s amendment wasfutile regardless of whether it related back; even if infringement has been plead, courtwould not have had jurisdiction because plaintiff must register or attempt to register

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LIMITATION OF ACTIONS . . . continuedcopyright before instituting suit, and she did not apply to register copyright in scriptsuntil long after limitations period had run. (11th Cir. 2000, 216 F.3d 1281).

Tort is continuing one with new cause of action arising from each instance of in-fringement. If no new act of infringement occurs, statute of limitations runs from last act.(37 F.3d 180).

LOOSE-LEAF PUBLICATIONS:

Each issue is considered separate work.

MAGAZINES:

See topic Periodicals.

MANUFACTURING PROVISIONS:

Requirement of U.S. or Canadian manufacture to maintain copyright in certain Englishlanguage literary material expired on July 1, 1986. Validity of U.S. works publishedbefore 1986 and still copyrighted may be attacked for failure to comply with manufac-turing requirement.

See also topic Importation.

MAPS:

Maps are registrable as pictorial or graphic work.Defendant cartographer who did not copy from plaintiff’s copyrighted outing maps, but

largely from independent productions of automobile club, was not infringer because 193place names thereon for lakes, streams, etc., had been created by plaintiff for latter’smaps, since subsequent cartographers could use plaintiff’s names with impunity, hiscopyright not extending to such places so named. (9th Cir. 1960, 281 F.2d 543, 126USPQ 483, aff’g S.D. Cal. 1959, 177 F. Supp. 303, 123 USPQ 475). Facts are notcopyrightable.

There has been a tendency, where copyrighted maps are concerned, of some courts todepart from the otherwise liberal attitude toward ‘‘originality.’’ Such courts want some-thing more than the effort of compiling information secured by others; originality mustbe predicated on maker securing a reasonable portion of the information himself. (D.Hawaii, 1961, 201 F. Supp. 301, 133 USPQ 65; See, also, E.D. Va. 1957, 162 F. Supp.561, 117 USPQ 332; Sparaco [2d Cir. 2002]).

A map was upheld as copyrightable, even though source of materials assembled,prepared, collated and compiled was primarily from government maps, aerial photo-graphs, assessor’s records, etc., but copyright protection is limited to new and originalcontributions of map-maker. (9th Cir. 1966, 362 F.2d 515, 150 USPQ 160).

MECHANICAL RIGHTS (DRAMAS AND MUSIC):

See topic Notice of Copyright, infra; also topics Rights Under Copyright, infra;Remedies for Infringement.

MERGER:

Where idea is simple and capable of only limited means of expression, protection ofsuch expression may improperly protect idea. Doctrine of merger may preclude findingof infringement except in case of slavish copying.

MISUSE:

Using copyright beyond its recognized limits or other actions which stifle competition,including using copyrights in antitrust violations, result in misuse. Also included wouldbe improper conduct by copyright owner before Copyright Office. (In re Napster, Inc.copyright litigation 191 F. Supp.2d 1087 [N.D. Cal. 2002]). If court finds misuse it maynot enforce copyright until effects of misuse are dissipated. Misuse is not personaldefense and can be raised by any defendant.

Of similar nature is concept of unclean hands, which results from some reprehensibleconduct of copyright owner against defendant, and court concluding that it would not beequitable to enforce right where plaintiff has himself been inequitable.

Misuse may be found in tying of service contracts with sale of software or computersor in prohibiting licensees from developing competitive software.

MONOPOLY AND TRADE RESTRAINTS:

The exclusive rights conferred by a copyright are sometimes referred to as a monopoly.Except that the rights are incorporeal, and not necessarily embodied in the physicalobjects in which expressed (which may be owned by others), the so-called monopoly isessentially no more than that of any owner of real or personal property to prevent trespassor appropriation of his exclusive right to enjoy his own property.

For many years it had been accepted that certain of the restraints necessarily imposedby the exclusivity of the right afforded by patent or copyright were statutory exceptionsto restraints prohibited under the anti-trust laws. For a generation, great industries havedeveloped marketing practices, by way of licensing under patent or copyright, deemedlegal exceptions to the prohibitions of the anti-trust laws. For example, price fixing bythe patent owner of the first sales by a licensee to manufacture and vend, has for manyyears been legal under U.S. v. General Electric. (272 U.S. 476). Its doctrine, althoughquestioned, has not been overruled (333 U.S. 287), but a conspiracy to fix prices wouldbring patent or copyright licensors within prohibitions of anti-trust laws.

Antitrust Suits.—Federal and private suits have been brought, particularly in motionpicture and music fields. Antitrust violations are also raised as defenses to infringementsuits. Objectively reasonable copyright infringement suits cannot be ‘‘sham’’ withinmeaning of exception to Noerr doctrine immunity from antitrust liability, regardless ofplaintiff’s subjective intent. (113 S.Ct. 1920, 26 USPQ2d 1641).

Pooling of copyrights of several copyright owners for purposes of licensing andenforcement is not per se illegal, but can lead to antitrust infractions if misused. See suchorganizations as ASCAP, BMI and SESAC.

MORAL RIGHTS:After long debate over moral rights of authors, Copyright Statute was amended on

Dec. 1, 1990 providing for similar rights in case of visual art. Visual art rights are nowdefined in statute as any painting, drawing, print, sculpture and certain photographs madein limited number. Other types of visual and graphic works are specifically excluded fromdefinition. (17 U.S.C. §101). In U.S. term ‘‘moral rights’’ is not accurate description ofrights granted and is not coequal to foreign moral rights.

Rights granted are of attribution, that is, to claim or disclaim authorship, and right ofintegrity, that is, to prevent intentional distortion, mutilation or modification of workwhich would be prejudicial to author’s honor or reputation and to prevent any intentionalor grossly negligent destruction of work of recognized stature. There are several detailedlimitations on these rights. (17 U.S.C. §§106A, 113[d]).

These rights are personal to author and do not pass with assignment of copyright.These rights may be waived but not assigned.

Rights endure for life of author, not copyright owner.

MORTGAGES:The copyright statute expressly provides that the statutory copyright and any of its

exclusive rights may be assigned, granted or mortgaged by instrument in writing signedby copyright owner, or may be bequeathed by will. (§201[d]). See topic Assignment.Being creature of federal statute and no longer existent at common law, incorporeal rightof copyright would not appear to be appropriate subject of chattel mortgage at commonlaw. It has been held that it can be mortgaged only under federal copyright law. (272 Fed.886).

Where individual author’s ownership of copyright has not previously been transferredvoluntarily by that author, no action by any governmental body, official or organizationmay force involuntary transfer of copyright. (§201[e]). Transfer under mortgages orbankruptcy are not considered within this provision against involuntary transfers.

Right of termination of assignment or licenses under §203 cannot be assigned ortransferred until such right of termination vests. (§203[b]).

MOTION PICTURE COPYRIGHTS:Assignment of copyrights in motion pictures shall, except in case of transfer of security

interest, carry with said assignment obligation by assignee to perform under any col-lective bargaining agreements relating to creation of motion picture. (28 U.S.C. §4001).

MOTION PICTURE SOUNDTRACKS:These works are not considered either as sound recordings or phonorecords but are

considered part of motion picture. (§101).

MUSIC RECORDINGS:See topic Phonograph Records (Phonorecords) and Tapes.

NAME OR TITLE OF WORK:There is no protection under the copyright statute in name or title of a copyrighted

work, although there might be protection under principles of unfair competition (8th Cir.1962, 299 F.2d 320, 132 USPQ 483) or trademark law if title is for series of works.

See topic Non-Copyrightable Works, subhead Titles or Names of Works, infra; also,subhead Appropriation of Title Names: Secondary Meaning under topic Unfair Com-petition.

NAMES (ANONYMOUS, ASSUMED, FICTITIOUS):That copyright statute contemplates possibility of names other than author’s true name

appearing on work, is indicated in §§101, 302. Term of copyright for pseudonymous andanonymous works is 75 years from first publication or 100 years from creation unlessauthor’s actual name is recorded in Copyright Office, in which event term becomes lifeplus 50 years.

Name in Copyright Notice.—The owner’s (rather than author’s) name should appearin copyright notice when work is published. Under common law, one can adopt any namehe chooses so long as he is not engaged in fraud, and he need not use it exclusively inall his businesses. In common law domiciles it would appear owner has right to use hispen name, or new name, in notice, as well as in application for copyright. In jurisdictionswhich have departed from common law by statutes making illegal use of fictitiousindividual names for business purposes, or company names, or partnership names, wherethere is not in fact any partnership or company, or unless fictitious name, company orpartnership name has been duly registered in compliance with statute, there may not besufficient legal entity to justify use of fictitious name in notice of copyright or applicationfor registration.

NATIONALITY:See topic Aliens.

NEIGHBORING RIGHTS CONVENTION:These are rights related to, but not necessarily part of the copyright statute, and are

often referred to as ‘‘neighboring rights.’’ Under sponsorship of UNESCO, the BERNEUNION, and International Labor Organization (ILO), the ‘‘International Convention forthe Protection of Performers, Producers of Phonograms and Broadcasting Organizations’’was adopted by a diplomatic conference at Rome on Oct. 26, 1961. The U.S. Registerof Copyrights acted as Rapporteur-General. Although 23 countries signed, the U.S.decided not to do so. There is very substantial opposition in U.S. by various majorcopyright interests to U.S. becoming member, or to area of neighboring rights beingenlarged by legislation.

This Rome Convention of 1961, or so-called ‘‘Neighboring Rights Convention,’’provides for reciprocal national treatment between contracting States in respect of pro-tection given to performers, record producers, and broadcasters. Certain minimum gen-eral protection is required, such as prohibition of clandestine recording of performances,copying of phonograph records without producer’s permission, and ‘‘off-the-air’’ record-ing of broadcasts without authorization from the broadcasting organization. The principle

UNITED STATES COPYRIGHT LAW DIGEST NEIGHBORING RIGHTS CONVENTION


NEIGHBORING RIGHTS CONVENTION . . . continuedof payments for the use of phonograph records in broadcasting was written into theConvention, but any member country is permitted to refrain from adopting this principle.

Above Convention Into Effect May 18, 1964.—Above International Convention forProtection of Performers, Producers of Phonograms, and Broadcasting Organizations,finally came into effect, in accordance with its terms, on May 18, 1964, three monthsafter sixth country (Czechoslovakia) had deposited its ratification, acceptance, or acces-sion.

U.S. has not ratified, accepted, or acceded to the convention.U.S. has given limited rights to performers against unauthorized fixation of live music

performances. (§1101).World Intellectual Property Organization (WIPO) administers above Convention since

WIPO Convention came into effect on Apr. 16, 1970.

U.S. Adoption of Similar Rights.—New §1101 was added to U.S. statute providingfor protection against unauthorized fixation of live musical performances or transmissionthereof or trafficking therein.

NON-COPYRIGHTABLE WORKS:

Works which are not fixed in tangible medium of expression cannot be protected bystatutory copyright.

Works in ‘‘Public Domain,’’ works published before July 1, 1909, in U.S. or anyforeign country, and not already copyrighted by that day in U.S., Government publica-tions and seditious works cannot be copyrighted. Obscenity cannot be ground for denialof copyright and suggested same would be true of other types of illegal subject matter.(604 F.2d 852).

Isolated Words and Phrases.—It is well established that copyright or literary rightdoes not extend to words or phrases isolated from their context, nor do they extend toabstract ideas or situations. Common phrase, in and of itself, is not susceptible ofcopyright nor of appropriation by any individual.

Titles or Names of Works.—Copyright of the work does not give the author exclusiveright to use of the title or name by which he identifies his work. Other authors are freeto use the same title or name for their works, as far as the copyright statute is concerned.But persons may subject themselves to action for unfair competition if there is an elementof ‘‘passing off’’ a different work with the same title as a prior work which the publichas come to identify by that title. See also topic Unfair Competition.

Listing of Material Not Subject to Copyright.—Materials listed in current statuteinclude: (a) Words and short phrases such as names, titles, and slogans; familiar symbolsor designs; mere variations of typographic ornamentation, lettering or coloring; merelisting of ingredients or contents; (b) ideas, plans, methods, systems, or devices, asdistinguished from particular manner in which they are expressed or described in writing;(c) blank forms, such as time cards, graph paper, account books, diaries, bank checks,score cards, address books, report forms, order forms and like, which are designed forrecording information and do not in themselves convey information; (d) works consistingentirely of information that is common property containing no original authorship, suchas, for example: standard calendars, height and weight charts, tape measures and rulers,schedules of sporting events, and lists or tables taken from public documents or othercommon sources; (e) useful articles; (f) works not reduced to tangible medium ofexpression; (g) works that are not original. (§§101, 102, 113).

Tradenames, brand names and slogans are not protected by the copyright statute,but are protected under other laws. (2d Cir., 1959, 266 F.2d 541, 121 USPQ 359). See15 U.S.C. §1051 and also topic Unfair Competition.

Ideas, etc.—Ideas, plans, systems, methods and plots, as such, are not protected bycopyright from use by others. Expression of author by way of description or illustrationmay be copyrighted, but copyright will protect only against copying of description orillustration, and not against utilizing, discussing, treating, describing, illustrating or oth-erwise using ideas, systems, plans, etc., themselves. See topic Ideas, Plans, Systems,Methods, Kits, Etc.

Scene A Faire.—Circumstances, characteristics and events that necessarily flow fromidea are referred to as scenes a faire and are not protectible under copyright.

Public Documents.—Messages of Governors, reports of legislative committees, opin-ions of State courts, texts of codes, rules and regulations of departments and agenciesof State of New York, are in public domain. However, editorial notes or commentsappearing in official compilations thereof may be copyrighted. (Opinion of New YorkAttorney General, Aug. 21, 1973, reported in 180 USPQ 332).

Noncreative Authorship.—Works that do not rise to level of creative authorship arenot copyrightable. (536 F.2d 486).

Infringement.—Infringing material, being non-original, is uncopyrightable.

NON-PUBLIC PERFORMANCES OR RENDITIONS:

See topic Remedies for Infringement; also topic Rights Under Copyright.

NOTICE OF COPYRIGHT:

Absence of copyright notice does not indicate that work is not copyrighted.Traditionally, proper copyright notice upon publication had been essential part of U.S.

copyright law. On Mar. 1, 1989 all requirements for copyright notice were eliminated toallow U.S. to join Berne Convention. To encourage continued voluntary use of noticecertain evidentiary benefits have been retained. (§401).

Whether or not work fell into public domain because of defect in notice or no noticewill be decided according to law in effect at time of original publication. Therefore workspublished before Berne adherence in 1989 must be tested by then current notice re-quirements. Pre-1978 notice requirements were very rigorous. Statements below regard-ing notice relate primarily to post-1978 law.

Correction of Notice Post-Berne.—Coming into effect of Berne waiver of notice didnot relieve from requirement to correct defective notice on pre-Berne publication. (30USPQ2d 1612).

Position of Notice.—Position of notice shall be in such manner and location as to givereasonable notice of claim of copyright. Register of Copyright shall provide specificexamples of proper place and manner of notice. (§401[c]).

Copyright Office published examples of acceptable methods of affixation and positionsof copyright notice. (37 CFR §201.20). These examples are not intended to be exhaustive.

Form of Notice.—Notice shall consist of three elements: (a) Symbol ‘‘©’’ or word‘‘copyright’’ or abbreviation ‘‘Copr.’’ (form ‘‘©’’ is recommended since this also satisfiesUniversal Copyright Convention); (b) year of first publication of work (except as togreeting cards, postcards, stationery, jewelry, dolls, toys or useful articles); and (c) nameof owner of copyright or abbreviation by which he can be recognized, or generally knownalternative designation of owner. (§401).

Works published before Dec. 31, 1977, when republished or distributed after that date,may bear notice complying with new Act or old Act.

In case of phonorecords of sound recordings notice requirements are generally sameexcept symbol ~ should be used. (§402).

Where work consists preponderantly of works of U. S. Government, notice shoulddesignate those nongovernmental portions of work protected under Act in order to obtainevidentiary value of notice. (§403).

In case of collective works, notice for collective work as whole is sufficient to coverindividual contributors’ rights except for advertisements but individual contributors mayor may not use their own separate copyright notice. (§§404, 406[a]).

Omission of Notice.—Under Law prior to Jan. 1, 1978 omission of or defect in noticeof copyright upon publication lost copyright in most instances. After that date and untilMar. 1, 1989 omission of or defect in required notice did not invalidate copyright if: (a)Omitted from only relatively small number of copies, or (b) registration is accomplishedwithin five years of publication without notice and reasonable effort is made to add noticeto all copies distributed after omission of notice is discovered, or (c) notice was omittedin violation of requirement in writing to include notice. (§405[a]). Subsequent elimina-tion of need for notice in 1989 does not eliminate need to correct improper notice onworks published prior to 1989. (36 F.3d 1214).

Infringers who act innocently based on absence of notice on authorized copy of workpublished prior to 1989 are not liable for damages before receiving notice of copyright.(§405[b]).

Where error in owner’s name occurs, one who operates under transfer or license fromnamed owner is not liable for infringement unless registration has been made in trueowner’s name or document executed by named owner showing ownership has beenrecorded. (§406[a]).

Where error in date occurs that states date earlier than actual publication date, anyrights dependent on date of publication run from stated date. If stated date is later thandate of publication, work is treated as having no notice of copyright as discussed above.(§406[b]).

Omission of Notice on Foreign Works.—Many works of foreign origin, publishedabroad without proper notice, passed into public domain in U.S. Adherence to BerneConvention and GATT prompted restoration of copyright to such works as of Jan. 1,1996. Provisions protect to limited extent persons who relied on public domain status(“reliance parties”). (§104A).

Prior Act Notice.—Notice under prior Act was much more formalized and failure tocomply could result in forfeiture of copyright. In determining whether work publishedunder prior Act is in public domain, prior Act and cases interpreting them control.

When Notice Recommended.—Notice of copyright should be used whenever workis published by authority of copyright owner in U.S. or elsewhere.

Notice in New Editions.—In the case of new editions containing a substantial amountof new matter, it might be sufficient to publish such work with a notice containing theyear date of the new edition, on the ground that it is a new work subject to copyright.However, if there is any question as to whether new matter is substantially sufficient tojustify work being considered new work, it may be safer to include original copyrightnotice as well as copyright notice containing year date of later edition, to avoid risk oflosing evidentiary value of notice.

Foreign Notices.—Certain foreign laws and conventions may require additional matterwith standard U.S. copyright notice, such as ‘‘All Rights Reserved’’ for Buenos AiresConvention or ‘‘©’’ and date of first publication and name of owner for UniversalCopyright Convention. Individual foreign laws and conventions should be consulted forsuch additions.

NOTICE OF INTENT TO ENFORCE COPYRIGHT:This is notice required to be filed in Copyright Office or served on infringer stating

copyright owner’s intent to enforce copyrights which had been lost but restored by§104A. See topic Restoration of Copyright.

OBSCENITY:Statute does not refer to obscenity as possible ground of refusing copyright, and one

court has refused to deny copyright on that ground. (604 F.2d 852).

ORIGINALITY AND AUTHORSHIP:Unlike a patentable invention, a copyrightable work does not require ‘‘novelty’’ to be

protected under copyright statute. It is sufficient that work be ‘‘original’’ with particularauthor, and not borrowed by him from others. If it is author’s own original work, he isprotected against appropriation of contributions of his own origination, to extent per-mitted by copyright statute, by others who had access directly or indirectly to his work,even though author may have been anticipated by other authors in creation of similar oridentical works.

In some instances where simple ideas are involved ways to express idea are so limitedthat expressions merge with idea and are uncopyrightable. (446 F.2d 738).

While a valid patent gives certain specified exclusive rights, during patent term, to artprotected thereby, a valid copyright gives protection only to form of ‘‘expression’’originated by author for his idea, but unlike patent not to ‘‘idea’’ itself.

That sculptress author of various statues of children, having facial expressions withstrong dominant characteristics, permitted her common law rights therein to fall into

NEIGHBORING RIGHTS CONVENTION MARTINDALE-HUBBELL LAW DIGEST - 2007


ORIGINALITY AND AUTHORSHIP . . . continuedpublic domain by sale in open market, and by illustrations in magazine articles, withoutproper copyright notice, did not bar plaintiff (as assignee of her common law rights insubsequent statuary versions) from securing valid copyrights in such versions, despitesimilar dominant facial characteristics, where there were sufficient new creative elementsexpressed. (N. D. Ill. 1972, 347 F. Supp. 1150, 174 USPQ 217).

A modicum of originality, even by way of slight variations on public domain materials,is sufficient to afford copyrightability, and protection against copying. (Feist).

Some Circuits require that such modicum be more than mere trivial variations overprior art. (536 F.2d 483).

Courts have found insufficient originality in simple telephone listings, price lists, facts,and lists of facts. However, if there is some creative authorship in selection and ar-rangement of facts, arrangement is protectable.

Where derivative work is created by changing size of work, Second Circuit requiressubstantial rather than trivial variations over prior works. Such originality cannot besatisfied by demonstration of physical skill or special training to produce new work.There must be artistic skill. (536 F.2d 486, 2d Cir. 1976, 189 USPQ 753).

A bald statement of fact in a consumer’s magazine, which could hardly have beenstated in any different fashion, was deemed too noncreative to be copyrightable, so that‘‘quotation’’ thereof was not enjoined. (S.D.N.Y. 1961, 199 F. Supp. 860, 125 USPQ296).

Educational flash cards as a teaching device on arithmetical problems, which were oldand in public domain, are nevertheless copyrightable and protected against deliberatecopying of plaintiff’s sequence arrangements, since arrangement, plan and manner inwhich put together constitutes sufficient originality. (7th Cir. 1963, 313 F.2d 143, 136USPQ 240, cert. den. 1963, 373 U.S. 913).

Copyright protection covers form of expression although not underlying system de-scribed, which is available for use by public, and if published business forms weredeemed to convey sufficient information to be accepted for registration by CopyrightOffice, such was prima facie evidence of sufficient copyrightability. (N. D. Ill. 1967, 155USPQ 133).

Supreme Court in Feist v. Rural, 111 S.Ct. 1282, found insufficient authorship in listof facts, namely simple telephone directory.

PAINTINGS, ETCHINGS, ILLUSTRATIONS, ETC:

Such works are considered copyrightable subject matter. (§102).

PANTOMIMES:

Pantomimes, if fixed in tangible medium of expression, are copyrightable. (§102).

PARAPHRASING:

To Secure Copyright.—To secure valid copyright, alleged author of a new variationin using an old uncopyrighted work or public domain materials, must do something morethan merely refrain from outright copying; some non-trivial originality, must be added,which is meaningful and result from original creative work. Trivial word changes in oldpublic domain legal forms by combining various forms and servilely imitating or para-phrasing already stereotyped language therein, is not sufficient to sustain alleged copy-right in legal forms against unauthorized reprinting by defendant manufacturer and sellerof such forms. (See 5th Cir. 1970, 426 F.2d 1027, 1029-30, 165 USPQ 751, 752-3, citingprevious cases, cert. denied 1971, 400 U.S. 992, 27 L.Ed.2d 441; 189 USPQ 753.)

As Infringement of Copyright.—Where defendant’s paraphrasing is charged to be aninfringement of a valid copyright, it would seem that extent of paraphrasing and originalcreative effort therein need not be as meaningful as where paraphraser seeks to investhimself with a valid copyright. Copyrights on college physics text books were infringedby a manual of solutions to problems posed in texts, since paraphrasing with evasion maynevertheless be an appropriation. (S.D.N.Y. 1963, 223 F. Supp. 219, 139 USPQ 47).

PARODY:

See topic Fair Use, subhead Parody.

PARTIES:

Plaintiffs.—Legal or beneficial owner of exclusive right under copyright is entitled tosue for infringement of said right while he or she is owner of it. (§501[a]). Thus one whois owner of only one of exclusive rights may sue for infringement without joining ownersof remaining exclusive rights. Nonexclusive licensee is not considered sufficient party tobring, by himself, suit for infringement. Renewal registrant of copyright registration isnot necessarily owner of copyright; thus author may renew copyright but another mayown renewed copyright. (S.D.N.Y. 2000, 55 USPQ2d 1763).

Where rights of others in copyright may be affected by litigation, court shall orderplaintiff to order service of notice of suit on said others. (§501[b]). E.g., motion forjoinder of successors-in-interest as necessary parties granted, where defendants, heirs ofcopyright owner, had attempted to terminate rights by giving notice to plaintiff, neithercopyright owner, nor exclusive licensee, and said notice was deemed ineffective.(S.D.N.Y. 2001, Copyr. L. Rep. ¶ 28,237).

Equitable Rights of Strangers to Suit Not Available as Defense Against PlaintiffCopyright Holder.—Where publisher as record holder of copyright, subsequently suesU.S. for infringement by wholesale photoduplication by agencies of Dept. of Health,Education and Welfare, defense of non-ownership by plaintiff of copyrights in suit, onground that there may be equitable interests therein in absent strangers to suit, cannotbe raised as defenses against legal title holder. (Opinion of Trial Commissioner for U.S.Ct. of Claims, 1972, 172 USPQ 670, citing various cases for above).

Licensing Agent of Copyright Proprietor Not Indispensable Party to InfringementSuit.—Defendant’s motion to join ASCAP (American Society of Authors, Publishers andComposers) as indispensable party to infringement suit by music copyright proprietorsalleging infringement of public performing rights for profit, dismissed, inasmuch aslicensing agent of principal is not a necessary party where principal sues directly. (E.D.Wisc. 1971, 53 F.R.D. 364, 171 USPQ 640).

Copyright Play Owner Need not Join Assignee of Motion Picture and SequelRights Against Television Infringer.—Plaintiff copyright owner of a play ‘‘Stalag 17’’who had sued a television broadcasting company for unauthorizedly producing a tele-vision series ‘‘Hogan’s Heroes,’’ claimed to be based on characters in play, sought to joinmotion picture producing company to which plaintiff had given an outright assignmentof motion picture rights, including right to make sequels using characters of play by wayof television series, for which plaintiff was to be paid $16,500 per sequel (althoughassignee was not obligated to make such sequels). It was held that plaintiff could obtainall relief in his own suit, if entitled thereto, and joinder of assignee motion picturecompany was not permissible for convenience of plaintiff and inconvenience of suchassignee. It was found that neither diversity, nor a federal question warranted joiningmotion picture company on pendent jurisdiction for alleged breach of contract to sueinfringer broadcasting company or pay $16,500 for each sequel so made. Court pointedout that situation might be different if motion picture assignee held as agent or as trusteefor copyright owner, and then refused to enforce rights against copyright owner.(S.D.N.Y. 1968, 293 F. Supp. 1366, 161 USPQ 376).

Assignee of Infringement Choses in Action.—Assignee of causes of action forinfringement damages, past, present, and future, has right to maintain infringement actionwhether or not such assignee is proprietor of copyright. See Silvers v. Sony PicturesEntertainment, Inc., 330 F.3d 1204 (9th Cir. 2002), where U.S. Court of Appeals heldthat accrued cause of action for copyright infringement, without any other copyrightrights, can be assigned to third party, thereby granting assignee right to sue for infringe-ment violation. Also see, Gardner, et al. v. NIKE, INC., 279 F.3d 774 (9th Cir. 2002)wherein same federal circuit held that exclusive licensee did not have right to resell orsublicense copyright without consent of copyright owner.

Copyright Mortgagors.—Copyright owner who assigns copyright merely as security,to be effectual only in event of default, which has not occurred, continues as real partyin interest, as both equitable owner and copyright owner, to maintain infringement suit.(S.D.N.Y. 1968, 294 F. Supp. 545, 160 USPQ 530).

Defendants.—Any person who infringes any one or more of exclusive rights ofcopyright is proper defendant, including corporate officers, inducing and contributoryinfringers and vicarious infringers, latter including owners of establishments where in-fringement takes place and if owner has control over activities there.

Federal and state governments and employees may be defendants.

PATENTED DESIGN:

See topic Design Patent.

PERFORM:

Performance is one of exclusive rights of copyright owner. (§106).To perform work means to recite, render, play, dance or act it either directly or

indirectly. (§101). Infringement occurs only when performance is public. (§106[4]).Public performances are those which occur at place open to public or where substantial

number of persons outside normal family or its social acquaintances are gathered orwhich transmit performance to such place by device or process. (§101).

Certain performances in fields of education, religion, charity, government, as well asvariety of other situations, are not included within exclusive rights granted to copyrightowner. (§110).

Playing of radio in stores or restaurants may be infringement of performance rightunless exception of §110(5) is met. For full understanding of exception legislative historyand case law must be consulted.

Performance alone is not considered publication.

Transmission Is Performance.—Definition of public performance includes transmis-sion to public or to public place. (§101). Transmission of movie to hotel room, while nottransmission to public place, is transmission to public.

Performer’s Rights.—Unauthorized fixation in sound recordings or musical videos ortrafficking in such fixations of live musical performances shall be treated as infringementof performers’ rights. (§1101). Otherwise there is no right under copyright protectingperformance of artist except as such performance is included in phonorecord copyrightand artist owns part of such copyright.

PERIODICALS:

This term includes newspapers, magazines, reviews and serial publications, appearingmore often than once a year; bulletins or proceedings of societies, etc., which appearregularly at intervals of less than one year; and generally publications which would beregistered as second class matter at Post Office. Serial publications which are not clearly‘‘periodicals’’ should be registered as books.

Individual Contributions.—Only one notice of copyright is necessary for the entireissue of periodical but each contribution receives all protection which it would have ifindividually bore copyright notice. (§404). Advertisements are not included under suchnotice.

Individual contribution to periodical may bear its own copyright notice where copy-right is owned by someone other than owner of copyright in entire periodical. Where suchindividual notice appears, separate copyright may be obtained for such work.

If special registration is requested for any individual contribution to a periodical, onecomplete copy of the periodical in which such contribution appears must be depositedpromptly after publication. The contribution to a periodical referred to includes anywriting of an author published with copyright notice in any given number of the peri-odical. The entire copy of the periodical should be sent; a mere clipping or the pagecontaining the contribution does not comply with the requirements of the CopyrightOffice.

How to Register.—Copyright Office Circular 62 contains general information as tosecuring copyright to such contributions. Each installment of serial is regarded as sepa-rate contribution subject to separate copyright registration.

If separate copyright is desired for the contribution, it should contain a separatecopyright notice, either on the contribution itself or in direct conjunction with it.

Copyright Office has issued regulation allowing group registration of certain serials.

UNITED STATES COPYRIGHT LAW DIGEST PERIODICALS


PHONOGRAMS:

A descriptive word used by Secretariats for Berne Union, Universal Copyright Con-vention, and World Intellectual Property Organization, to cover all forms of exclusivelysound recordings, whether on gramophone records, magnetic tape, film, wire, or otherrecording media.

1961 Rome Convention (International Convention for Protection of Performers, Pro-ducers of Phonograms and Broadcasting Organisations) defines ‘‘phonograms’’ in Art.3(b) as meaning ‘‘any exclusively aural fixation of sounds of a performance or of othersounds.’’ U.S. is not member of this convention. U.S. is member of 1996 WIPO Per-formances and Phonograms Treaty.

International Protection.—For members of International Convention for the Protec-tion of Performers, Producers of Phonograms, and Broadcasting Organisations (to whichU.S. is not an adherent), see topic Neighboring Rights Convention, supra.

Convention for the Protection of Producers of Phonograms Against UnauthorizedDuplication of Their Phonograms.—For development and nature of this Convention,see topic Foreign Rights, subhead International Agreement for Protection of Producersof Phonograms against their Unauthorized Duplication as to its adoption and coming intoforce.

PHONOGRAPH RECORDS (PHONORECORDS) AND TAPES:

Those phonograph records and tapes produced subsequent to Feb. 15, 1972 are pro-tected against copying by federal statute. (§102). Phonograph records produced beforeFeb. 15, 1972 may be protected under state law until Feb. 15, 2067 when preemptionby federal law prevails. (§301[c]). Protection afforded precludes taking of actual soundsfrom phonorecord. It does not protect against imitating sounds, although copyright inbasic music or unfair competition may offer protection.

Restored Phonograph Rights.—Certain foreign phonograph recordings first fixedprior to 1972 or which failed to comply with U.S. formalities, such as notice of renewal,were restored to copyright on Jan. 1, 1996. (§104A).

Rental.—Public rental of phonograph records for commercial advantage is infringe-ment without permission of copyright owners. (§109).

Digital audio transmission of phonorecord may be infringement (§114), though notanalog transmission.

Compulsory License.—Once author has recorded his musical work or has licensedothers to do so, any other recording company may obtain rights to record same work withproper notice and payment of statutory fee. (§115). Such compulsory license does notgrant permission to copy prior recording, nor does it allow reproduction of lyrics on VCRtapes as in sing-along tapes.

PHOTOCOPYING:

Problem of photocopying has not been completely settled by new Act. Concept of fairuse as discussed above will still apply to photocopying.

Archives and Libraries.—It is not infringement of copyright in work where archiveor library reproduces one copy if made without commercial advantage, collections oflibrary or archives are open to public or researchers and reproduction includes notice ofcopyright. (§108[a]). Such sanctioned copying may only be for: (a) Preservation offacsimile of unpublished work for another library or archives. (b) replacement of work,if work is not available at fair price, (c) user of library or archives, where no more thanone article or contribution to work or small part of work, or (d) in case of entire work,if it is determined that copy cannot be obtained at reasonable price. Statute also appliesadditional requirements on such copying (§108) as well as certain guidelines, found inlegislative history, expressly adopted by legislature. See text of guidelines following 17U.S.C. §108.

Reproductions allowed by §108 of statute do not apply to musical works, pictorial,graphic or sculptural work, or motion picture or other audiovisual work. (§108[h]).

Photocopying of articles from technical journals by research personnel of corporationsfor archival purposes is not fair use. (37 F.3d 881).

Educational Uses.—Fair use, 17 U.S.C. §107 is supplemented by 17 U.S.C. §110(1)and guidelines adopted by Congress in Legislative History. See text of guidelines fol-lowing 17 U.S.C. §107.

Photocopying for classroom use under fair use section (§107) is subject to certainguidelines set out in legislative history. See House Report 94-1476, Pg 68 ff.

Wholesale excerpting from works without permission to form student textbook isinfringement.

PICTORIAL, GRAPHIC AND SCULPTURAL WORKS:

These are two and three dimensional works of fine, graphic and painted art, photo-graphs, prints, reproductions, maps, globes, charts, diagrams, models, technical drawings,including architectural plans. (§101).

See topics Copyrightable Works; Useful Articles; Moral Rights.

PLAGIARISM:

See Remedies for Infringement, subhead Criteria for Plagiarism.

PREEMPTION:

Act of 1976, §301, has generally preempted field of common law copyright and turnedit into federal statutory copyright. State laws that relate to subject matter of copyrightand grant rights equivalent to rights granted under copyright are preempted. Thus, suchworks as unfixed works may still be protectable under state law. State causes of actionthat require additional factors for state cause of action qualitatively changing cause ofaction are not preempted. In addition, laws pertaining to certain criminal penalties forphysical transfer of copy, such as laws in California and New York, are not preempted.

As to areas, such as unfixed ideas, in which states have not been preempted byCongress, through its Copyright Act (Tit. 17, U.S.C.), from adjudications under statestatutory or common law, see topic Common Law Rights.

Note: Transfer of computer programs by license agreement, i.e., contract, how posedquestion of to what extent can state contract law ignore Federal Copyright Act to restrictcopying of programs and get around “first sale” doctrine.

PRESUMPTIONS:

Certificate of registration made before or within five years of first publication shallconstitute prima facie evidence of validity of copyright and facts stated in certificate.(§410[c]).

PRINTS AND LABELS:

These works, insofar as they include original works of authorship, continue to becovered by copyright statute.

Counterfeit Labels.—Trafficking in counterfeit phonorecord or video tape labels,whether affixed to goods or not, punished by criminal statue. (18 U.S.C. §§2318, 2320).There are also state statutes relating to this subject.

PRIVACY:

Invasion of privacy or its obverse right of publicity is either statutory tort in certainstates, or common law tort in some others, but is not copyright question, although arisingat times in copyright matters.

PROFITS:

See topic Remedies for Infringement.

PROPRIETOR:

See also, topic Author.Copyright statute provides that ‘‘owner of copyright,’’ shall have exclusive rights as

provided in §106. Rights granted under §106A do not belong to proprietor of copyrightbut to individual author. Author may or may not be proprietor and vice versa.

The proprietor could be the author himself, or an assignee of the author, or theexecutor, administrator, legatee, distributee, or assignee of either the author or otherowner in the chain of title from the author. A proprietor could be an individual, part-nership, corporation, trustee or any other legal entity entitled to hold title to personalproperty.

Ownership of copyright or exclusive rights thereunder are distinct from ownership ofany material object in which work may be embodied. Transfer of such material objectdoes not transfer copyright that may be embodied therein, and similarly, transfer ofcopyright does not transfer ownership of such material object. (§202). Owner of copy-right may demand access to physical embodiment of work in order to make copies.

In dismissing suit for declaratory judgment brought by publishing company whichproposed unauthorizedly to publish same on ground that permission was unnecessary,since speeches were governmental property not subject to copyright, it was held thatspeeches were delivered in Admiral Rickover’s strictly private capacity, prepared on hisown time, and as no part of his governmental duties, as further confirmed by theircontent. Accordingly, Rickover’s copyrights were valid and infringed. (D. DC 1967, 268F. Supp. 444, 153 USPQ 598).

Soldiers at Camp Dix employed by Government to erect a statue, cannot subsequentlyregister claimed copyright in their own name and maintain an infringement action againstGovernment, as well as a company licensed by Government to produce and distributebooks of matches containing a reproduction of statue on cover. Apart from falling intopublic domain by fully permitting public to photograph and copy statue, Government,as employer for hire, was entitled under §26 of former, Tit. 17, U.S.C., to any suchcopyright interest as might exist in statue. (S.D.N.Y. 1967, 160 USPQ 216, aff., 417 F.2d497).

Work for Hire.—In case of works made for hire, employer or other person for whomwork was prepared is considered author and owner of copyright unless otherwise agreedin writing. (§201[b]). See topic Author, subhead Works for Hire. Commissioned worksin many cases are not considered works for hire unless commissioned party is employeeor meets strict requirements of works for hire set out in §101.

Transfer of Ownership.—See topic Assignment.

Government Proprietors.—U.S. Government cannot obtain copyright for its works(§105) except for certain limited cases. See topic Governmental Publications.

Texts of N.Y. State court opinions, e.g., are in public domain and may be used withoutfear of infringement. However, copyrighted statements of facts, headnotes and othermaterial prepared in connection with publication of such court opinions appearing in NewYork official reports, may not be copied in absence of express legislative authorization,since copyright on law reports is taken in name of New York Secretary of State underauthority of §438 of New York Judiciary Law. (Opinion of N.Y. Attorney General,7/21/64, 142 USPQ 288).

Court Reporters’ Transcripts.—Absent state legislation such as federal statute (28U.S.C.A. §753) which permits court reporters to charge and collect fees for transcriptsof court proceedings requested by parties at rates prescribed by court, Massachusetts freelance reporter was held by District Judge to have no common law right in transcripts ofinquest proceedings, since same were intended to be public documents, nor any right toacquire statutory copyright therein. Court granted motion by defendant, Commonwealthof Massachusetts, for summary judgment, dismissing plaintiff court reporter’s complaintfor injunctive relief against defendant taking from him contractual right to sell copies oftranscript which had been impounded in clerk’s office for further subsequent proceedings.(District Court, D. Mass. 1970, 311 F. Supp. 593, 166 USPQ 127).

PROTECTIVE DEVICES:

Beginning in 2001, persons, with some exceptions, may not circumvent technologicalmeasure, such as encryption, that controls access to copyrighted work. (17 U.S.C.§1201). Exceptions exist for reverse engineering to enable interoperability with othercomputer programs, for encryption research and other listed reasons.

PHONOGRAMS MARTINDALE-HUBBELL LAW DIGEST - 2007


PSEUDONYMOUS WORK:

Work on copies of which author is identified under fictitious name. (§101). Durationof pseudonymous work is 95 years from year of first publication or 120 years from yearof its creation, whichever expires first. If before end of terms specified above identityof pseudonymous author is made of record in copyright registration, term of copyrightshall be for life plus 70 years of author so identified. (§302[c]). Identity of pseudonymousauthor may be recorded by anyone having interest in copyright.

PUBLIC BROADCASTING:

Recognizing public interest in so-called ‘‘public broadcasting’’, exclusive rights givento copyright owner in published nondramatic musical, pictorial, graphic works andsculptural works are subject to compulsory license to public broadcasting stations at ratesand terms to be set by Copyright Office unless parties agree to voluntary license agree-ment. (§118).

PUBLIC DOMAIN:

This refers to public ownership in materials that have not been copyrighted or ma-terials that were copyrighted but whose copyright has been lost or expired. Certain worksthat were neither published nor registered for copyright as of Jan. 1, 1978, entered publicdomain on Jan. 1, 2003, unless works were published on or before Dec. 31, 2002. Under1909 Copyright Act, works that were neither published nor registered did not enjoystatutory protection, although they were protected under common law in perpetuity aslong as they remained unpublished and unregistered. But under §303 of 1976 CopyrightAct, works that were created but neither published nor registered in Copyright Officebefore Jan. 1, 1978, lost their common law protection and acquired statutory term ofprotection that was life of author plus 50 years, amended in 1998 to life plus 70 years.As result of 1976 Copyright Act, any of works in question whose author had died over50 years prior to 1978 would have entered public domain after Dec. 31, 1977. To providereasonable term of copyright protection for these works, and in light of fact that theseworks had enjoyed perpetual protection under common law, Congress extended their termby at least 25 more years. Congress also encouraged publication by providing additional25 more years, extended in 1998 to 45 more years, of protection if work was publishedon or before Dec. 31, 2002. That first 25-year period expired on Dec. 31, 2002. Any workthat was neither published nor registered as of Jan. 1, 1978, and whose author died before1933 entered public domain on Jan. 1, 2003, unless it was published on or before Dec.31, 2002. If author died in 1933 or later, work will be protected for 70 years after author’sdeath, due to passage of Sonny Bono Copyright Term Extension Act in 1998.

Restoration of Foreign Copyrights.—For restoration of certain foreign copyrightswhich had been in public domain prior to Jan. 1, 1996, see §104A.

Other Developments.—While principally §43(a) Lanham Act trademark decision,Court’s Opinion in Dastar Corp. v. Twentieth Century Fox Film Corp., et al., 539 U.S.… (2003), 123 S.Ct. 2041 (June 2, 2003), rules that once copyright in work enters publicdomain, it is not “reverse passing off” to delete prior owner’s name from originallycopyrighted content and that no credit or attribution is due to former rights holder bysubsequent distributor of content.

See topics Forfeiture and Abandonment; Publication; Non-copyrightable Works.

PUBLIC PERFORMANCE OR RENDITION:

See topics Rights Under Copyright; Remedies for Infringement; Perform.Public performance is to display or to perform work in place open to public or in which

more than normal family or social acquaintances are gathered or to transmit performanceto public place. (§101).

Former limitation of liability to for profit performance has been eliminated.Term ‘‘public performance’’ includes transmission of performance to public place or

to public. (§101). See also topic Perform.

Unauthorized Bootlegging.—Unauthorized fixation of live music performances, ortrafficking in fixations so made, are infringements. (§1101, 18 U.S.C. §2319A).

PUBLIC RECEPTION:

Reception in public of transmission of copyrighted work on single receiving apparatusof kind commonly used in private homes is not infringement unless direct charge is madeto see or hear transmission or transmission is further transmitted to public. (§110[5]).This provision is designed to allow proprietor of public place to play home style radioor television set on premises without liability as long as reception is limited to singleradio or television set and is not further augmented.

This exception is intended to be limited to small stores. In considering this exception,courts have generally placed stress on legislative history and facts of specific case. Factthat small store is one of chain is not determinative. (516 F. Supp. 923, aff’d 668 F.2d84 [1981]).

PUBLICATION:

To publish or distribute is one of exclusive rights granted to owner of copyright.(§106).

Publication as used in connection with copyrightable works is a word of art. It doesnot necessarily mean the creation of awareness of the work among the public by dis-semination of its contents. Its meaning is governed primarily by the context of thepurposes for which the operative facts in question are being examined.

Thus a work is published when copies are distributed to public by sale or other transferof ownership, or by rental, lease or lending. Such publication includes offering todistribute copies to group of persons for purpose of further distribution, public perfor-mance or public display. (§101).

Publication without proper copyright notice may result under law prior to Mar. 1, 1989in dedication of work to public domain unless necessary steps to correct omission ofnotice are taken. (§§401, 405).

Public performance or display of work does not constitute publication. (§101).Proper date of publication is important for said date must be included in copyright

notice (§401[b][2]) and may determine duration of copyright (§302[c]).

Distribution of Performing Devices.—Release of positive motion-picture films, withstatutory notice of copyright thereon, made available at branch exchanges of distributorfor renting generally by exhibitors would be deemed general publication, upon analogyto leading Jewelers’ Mer. Agency case, 155 N.Y. 2241, and Ladd v. Oxnard, 75 F. 703(D. Mass. 1896). Actual date of availability of motion-picture prints for general releasebeing at times uncertain, in view of prerelease special showings, it would be safer toclaim date of first such public exhibition as date of publication.

Prohibited Publication.—Under exclusive right granted copyright owner ‘‘to publishhis work’’ (§106) publication prohibited on part of unlicensed strangers could wellinclude any species of dissemination of copies of work, regardless of form in whichcopies are disseminated.

Foreign Publication.—Publications abroad from 1978 to 1989 required U.S. Notice.Prior to 1978 court decisions were unclear on this point. (§401). Certain foreign workswhich lapsed into public domain for failure to affix notice upon publication abroad wererestored to copyright on Jan. 1, 1996. (§104A).

Publication of Phonorecord as Publication.—Publication of phonorecord does notpublish underlying musical works. (§303[b]).

Unauthorized Publication.—Publication prohibited by copyright owner is not pub-lication.

Limited Publication.—Dissemination of limited number of copies to select group,with restrictions on use or further disseminating is not treated as publication.

PUBLICATION CONTRACTS:Publication in breach of contract can result in award of damages. Publication contrary

to contract and without proper notice is not binding on author.Controversies dealing with contractual matters are generally not considered copyright

matters and shall be litigated in state courts.

PUBLICATIONS BY INTERNATIONAL ORGANIZATIONS:Copyright protection is granted under laws of U.S. to works first published by U.N.

or one of its specialized agencies or by Organization of American States. (§104[b][3]).

PUBLICITY (RIGHT OF):See topic Privacy.

PUNITIVE OR EXEMPLARY DAMAGES:It would not appear that such damages are recoverable in case for infringement of

statutory federal copyright, but same effect can be achieved by adjusting statutory dam-ages upward within range set out in statute. (§504[c]).

PURPOSE OF CREATION:Fact that work is created for inclusion in uncopyrightable useful object does not

prevent protection of work.

RECORDING:See topic Assignment.

RECORDINGS:See topic Phonograph Records (Phonorecords) and Tapes.

REGISTER OF COPYRIGHTS:See topic Copyright Office.

REGISTRATION OF CLAIM TO COPYRIGHT:See topic Deposit and Registration.

REGULATIONS:Statute empowers Register of Copyright to establish regulations to implement law in

terms of Copyright Office functions (§702) which regulations are found in 37 CFR cc.II and III.

REMEDIES FOR INFRINGEMENT:Common Law.—Common law copyright was pre-empted and absorbed into statutory

copyright in 1978. Infringement of said prior rights were tried in state court. Pre-emptionleft little, if any, rights under common law but debate continues as to protection in areason fringe of copyright law. Remedies for infringement of common law rights in a work,existing prior to statutory copyright, and where not preempted by 1976 Act, are availableunder laws and in courts of various states. Recognizing such rights U.S. District Courtsmay take jurisdiction over such disputes, but only where there is diversity of citizenshipof parties and requisite jurisdictional minimum amount involved, such Courts applyingappropriate state law as to substantive rights. In determining damages due plaintiff forconversion of his common law literary property, 2d Cir. Court of Appeals, citing Re-statement, Torts, §927(a), applied analogous rule that damages, as compensation, in-demnity or restitution for harm sustained by plaintiff, for conversion of chattel or de-struction of any legally protected interest in land or other thing, includes exchange valueof subject matter or plaintiff’s interest therein at time and place of conversion or de-struction, or different value where that is necessary to give just compensation. (242 F.2d266).

See also, topic Common Law Rights.

Statutory Copyright.—Various remedies are available for infringement of a statutorycopyright. Jurisdiction lies exclusively in the District Courts of the U. S., any of itsterritories and District of Columbia, regardless of citizenship of party and amount in-volved. (28 U.S.C. §§1338, 1400).

Certificate of Registration.—Under current statute certificate of registration is nec-essary before suit may be brought unless application for registration has been filed and

UNITED STATES COPYRIGHT LAW DIGEST REMEDIES FOR INFRINGEMENT


REMEDIES FOR INFRINGEMENT . . . continuedrejected by Copyright Office except in suit based on Berne Convention work other thanwork of U.S. origin. See topic Certificate of Registration. (§411[a]).

Recording Prior to Suit.—Suit for infringement may be brought prior to recordingin Copyright Office of plaintiff’s ownership rights.

Parties.—As to complainants in a statutory copyright infringement suit, and necessityof joining copyright owners, see topic Parties. Plaintiff must own interest in copyrightin order to sue.

Civil Remedies.—Infringer is liable to any one or more of following remedies:Plaintiff’s actual damages, defendant’s profits, statutory damages, attorney’s fees anddestruction of infringing work.

Criminal Remedies.—See topic Criminal Liabilities.

Attorney’s Fees.—In court’s discretion it may award full costs to prevailing partyincluding reasonable attorney’s fees. There are limitations on such award where regis-tration has not taken place prior to commencement of infringement. (§412). While suchfees are frequently awarded to prevailing plaintiffs, they may also be awarded to pre-vailing defendant. (114 S.Ct. 1023).

Damages.—Infringer is liable for either owner’s actual damages plus infringer’s prof-its or statutory damages. Damages of this type would be actual and ordinary damagesprovable under established rules of evidence. (§504). There are limitations on right tostatutory damages where work is unpublished or where infringement commenced beforeregistration has taken place. (§412). Plaintiff must elect which of two bases for damagesdesired prior to final judgment. Only that portion of infringer’s profits attributable to useof copyright are recoverable. In proving defendant’s profits, plaintiff is required to provedefendant’s gross revenues only and defendant is required to prove every element ofdeductible expense and elements of profit attributable to factors other than copyrightedwork. (§504[b]).

Statutory damages shall be not less than $750 or more than $30,000 as court considersjust. Where willful infringement is proved, court may increase statutory damages to notmore than $150,000. Where innocence of infringement is proven, court may lowerstatutory damages to not less than $200. (§504[c]). Statutory damages are based onnumber of copyrights infringed not number of infringing copies.

Damages for Both Infringement and Unfair Competition.—Court can award dam-ages for copyright infringement and separate damages for unfair competition or trade-mark infringement. (441 F.2d 579).

Damages for Other Actions.—Damages may be collected both for copyright in-fringement and violations of other federal statutes, such as those prohibiting unscram-bling of coded transmissions. (38 U.S.P.Q.2d 1893).

Impounding and Destruction.—During action court may order impounding of ac-cused copies and means by which they were made. Said materials may be ordereddestroyed at conclusion of trial where plaintiff is successful. (§503).

Injunctive Relief.—Preliminary as well as final injunctions may be awarded restrain-ing future infringement. This will be granted in accordance with general equitableprinciples, and an especially strong case will have to be made out for temporary orpreliminary injunctions. (§502). However, if defendant does nothing to challenge validityof copyright and does not deny copying, preliminary injunction may be granted withoutdetailed showing of danger of irreparable injury. (236 F.2d 144). In clear cases ofinfringement courts may presume irreparable damage. See also 146 F. Supp. 795. Ifcopyright has expired, or possibility is remote that infringer will be in position to commitfurther infringements, injunctive relief may not be granted.

Preliminary Injunctive Relief.—General rule in 2d Circuit Court of Appeals, is thatwhen prima facie case of copyright has been made out by copyright certificate, withreasonable probability of infringement on merits, there is no necessity to produce evi-dence of irreparable damage before obtaining preliminary injunction. For review of casesand indication of principles involved, see: S.D.N.Y. 1972, 335 F. Supp. 278, 280, 173USPQ 188, 189. See, also, 2d Cir. 1971, 446 F.2d 685, 688, 170 USPQ 545, 547, citingother opinions by Second Circuit. To similar effect, E.D.N.Y. 1974, 377 F. Supp. 1372,102 USPQ 601, 607.

Certificate of Copyright Registration as Prima Facie Evidence of Existence of ValidCopyright, Including Affıxation and Publication with Proper Copyright Notice.—This isparticularly important in applications for preliminary relief such as seizures of infringingcopies and devices, at commencement of suit, and for preliminary restraining orders orinjunctive relief. (§410[c]). See topic Certificate of Registration, subhead Prima FacieEvidence, supra.

Bond for Preliminary Relief.—Court will require sufficient bond to protect defendantagainst damages caused by preliminary injunction improvidently issued. (16 F.3d 1032).

Limitations (Equitable Principles Toll Three-Year Statutory Period).—See topicLimitation of Actions.

Laches.—Each case where laches is urged must be decided on its own facts. A lowercourt will be reversed for barring plaintiff on the ground of laches constituting manifestprejudice, where it appeared from affidavits so claiming, that there was no specificprejudice from eleven-year delay in suit; and record shows consents by defendant invarious delays, complex questions, a desire of both parties to determine same, andrenewed interest stirred by radio and television in the revival of old songs. (2d Cir., 1958,255 F.2d 518, 523, cert. denied 1958, 358 U.S. 831).

Laches from long delay, followed by change of position of party relying on otherparty’s inaction, might result in denial of certain equitable relief, but it would not standin the way of granting injunction against future violations. (See S.D. Cal. 1959, 177 F.Supp. 303, 307, 123 USPQ 475, 478).

Estoppel.—Ordinarily failure to take action does not give rise to estoppel, but copy-right owner’s knowing failure for 19 years to institute proceedings may constitute anestoppel barring any remedy. (S.D. Cal. 1959, 177 F. Supp. 303, 123 USPQ 475). See,also, 2d Cir. 1965, 342 F.2d 143, cert. den. 1965, 382 U.S. 822.

According to Ninth Circuit Court of Appeals four elements must be present to establishdefense of estoppel: (1) Party to be estopped must know facts; (2) he must intend thathis conduct shall be acted on or must so act that party asserting estoppel has right to

believe it is so intended; (3) latter must be ignorant of true facts; and (4) he must relyon the former’s conduct to his injury. Accordingly, while infringing uses of copyrightedsilent motion picture had been continuing for over twenty-five years, copyright owner’ssilence and inaction did not estop it, since it had right to assume that its copyright noticeon film gave ample notice to users, to call upon them to make inquiry from owner, ratherthan to rely upon assertions of third parties. (1960, 279 F.2d 100, 125 USPQ 623; cert.den., 1960, 364 U.S. 882).

A representation in a copyrighted story that facts related were historically true, whenin fact fictitious and created by the author, would estop the copyright owner from sayingthat the episodes were not historical in an action charging an infringing TV script basedthereon. (S.D.N.Y. 1960, 184 F. Supp. 198, 125 USPQ 226).

Unclean Hands.—Improper actions by copyright owner such as misuse may result infinding of unclean hands and nonenforceability of copyright. (In re Napster, Inc. copy-right litigation 191 F. Supp.2d 1087 [N.D. Cal. 2002]). It was good defense of uncleanhands that plaintiff failed to disclose in application for copyright registration, priorpublication of portions of material for which copyright was sought. (N.D. Ill. 1964, 239F. Supp. 511). See also 410 F. Supp. 609. Intentional failure to inform Copyright Officeof material fact or fraud upon Office may result in invalid or unenforceable registration.(968 F.2d 676).

Res Judicata.—If plaintiff sues an infringing retailer who is defended and indemnifiedby infringing manufacturer, latter is bound by res judicata if later sued. Where, as ininstant case, plaintiff sued manufacturer first, and retailer was not a party, there is no resjudicata as to a subsequent suit against retailer. (S.D.N.Y. 1971, 323 F. Supp. 1234, 169USPQ 393).

Vicarious Infringer.—Owner or operator of public establishment at which copyrightinfringement takes place by independent contractors may be liable for such infringement.(554 F.2d 1213).

Protection of Copyrighted Fraudulent Material.—Copyright in compilations orderivative works does not extend to any part of work in which preexisting material hasbeen used unlawfully. (§103).

Joint and Several Liability.—It has been held that copyright infringers are jointly andseverally liable for damages resulting from infringement as well as for costs and attor-neys’ fees, but that accountability for profits is peculiarly personal as to the infringer whorealized the profits. (86 F. Supp. 399; see also 126 F.2d 341).

Officers and directors of corporation found guilty of infringement are individuallyliable as well if they personally participated in acts constituting infringement. (S.D.N.Y.1965, 240 F. Supp. 588, 145 USPQ 77, aff’d 2d Cir. 1965, 352 F.2d 285, 147 USPQ 336).To similar effect (W.D. Ark. 1974) 371 F. Supp. 900, 182 USPQ 193.

Where corporate infringer of copyrighted design became inactive and was withoutassets to satisfy judgment, individual who was its active, conscious force would be liable.(Per Curiam, 2d Cir. 1965, 352 F.2d 285, 147 USPQ 336, aff’g S.D.N.Y. 1965, 240 F.Supp. 588, 145 USPQ 77. To similar effect: S.D.N.Y. 1968, 285 F. Supp. 798, 157 USPQ693; S.D. Tex. 1971, 326 F. Supp. 80, 170 USPQ 228).

Sponsors.—In holding commercial sponsor of television or radio program, and itsadvertising agency, vicariously liable with broadcasting network and various participatingindividuals, for infringement of copyrighted dramatic work, where sponsor and its agencyhad power, whether exercised or not, to approve or disapprove steps in preparation ofprogram, District Court in 240 F. Supp. 612, 145 USPQ 258 (S.D.N.Y. 1965) relied onholding in another case (2d Cir. 1963, 316 F.2d 304, 137 USPQ 275) finding store ownerjointly liable for sale of infringing musical recordings in its store by recordings con-cessionaire, even in absence of actual knowledge by store owner that copyright monopolywas being infringed, where store owner retained right to supervise conduct of concessionand its employees, and was beneficiary in exploitation by reserving percentage of profits.

Television commercial sponsor and advertising agency arranging television broadcast,as well as producer of show and broadcaster, were all liable for infringing television playof copyrighted dramatic work, even though copying was indirectly from screen playbased on copyrighted work. (S.D.N.Y. 1965, 240 F. Supp. 612, 145 USPQ 358).

Concert Management Company.—In case for copyright infringement of song spon-sored by American Society of Composers, Authors and Publishers (ASCAP), and broughtby one of its music publishing members against major artists’ management corporation,it was held that latter was liable to minimum statutory damages, and injunction for aidinglocal citizens’ associations sponsoring community concert programs, where performinglicenses were not secured by such associations, nor by artists performing copyrightedmusic. Persuasive was fact that artists’ management concert bureau set up hundreds ofthese local associations, advised and counselled, arranged budgets and programs, chargedappropriate fees for artists, and as local associations progressed, raised their artists’ fees.Vicarious liability for contributory infringement is no longer predicated on employer-employee relationship (citing 2d Cir. 1963, 316 F.2d 304, 137 USPQ 275), but similarly,one who, with knowledge of infringing activity, induces, causes or materially contributes(not necessarily quantitatively but qualitatively) to infringing conduct, may be held liableas contributory infringer. (2d Cir. 1971, 443 F.2d 1159, 170 USPQ 182, aff’g S.D.N.Y.1970, 312 F. Supp. 581, 165 USPQ 543).

Jury Trial of Damage Issues.—Trial by jury is available where actual damages,profits or statutory damages only are sought. (Feltner v. Columbia Pictures TV 523 U.S.340 [1998]).

See also topic Jury Trial.

Expert Opinion Testimony as to Damages.—Where a phonograph record manufac-turer which had produced and sold recordings of copyrighted music without complyingwith the compulsory licensing provisions of the Act requiring notice of use and paymentof a 2¢ royalty per record, frustrated proof of amount of its liability to copyright owners,in their infringement actions against it, by failing to disclose facts reasonably known orby failing to keep accurate production records, owners were entitled, in their suit, tointroduce expert opinion testimony, as to estimated volume of copying, and all doubtsand uncertainties as to volume were to be resolved strictly against manufacturer. (2d Cir.,1959, 265 F.2d 263).

Innocence of Intent to Infringe Immaterial.—Except in case of amount of statutorydamages, lack of intention to infringe is immaterial and publisher would be liable evenif none of its employees knew publication contained material copied from plaintiff’s

REMEDIES FOR INFRINGEMENT MARTINDALE-HUBBELL LAW DIGEST - 2007


REMEDIES FOR INFRINGEMENT . . . continuedunpublished work. (S.D.N.Y. 1965, 245 F. Supp. 451 (SDNY 1965), 360 F.2d 928, 149USPQ 799). See also, S.D.N.Y. 1969, 295 F. Supp. 1366, 161 USPQ 119; S.D.N.Y. 1972,354 F. Supp. 121, 175 USPQ 471.

Criteria for Infringement.—Similarity or resemblance does not violate copyright inanother work, since similarity may result from fact that both deal with same subject orhave same source; but availability of common source is not defense if there was actualcopying. Since copying is essential, proof of access to work copied is necessity, thoughaccess may be established circumstantially. In addition there must be substantial copying.For analysis of various criteria. See topic Infringement.

Overall Arrangements.—Infringement by access to and copying of copyrighted greet-ing cards containing uncopyrightable words, and art work which was imitated but notcopied, was nevertheless found by protecting overall arrangement of text, art work, andassociation of art work to text (relying upon 2d Cir. 1940, 111 F.2d 432, 45 USPQ 291,‘‘Superman’’ case). (9th Cir. 1970, 429 F.2d 1106, 166 USPQ 291, with one judgedissenting, disagreeing as to applicability of ‘‘Superman’’ case).

Degree of Infringement Differs Depending Whether Changes Added to Public DomainMaterial or Work Wholly Original.—Where basic copyrighted design was not originalwith plaintiff, small variations added by subsequent other designers to public domainmaterial may protect them from charges of infringement, so as to deny preliminaryinjunction. (S.D.N.Y. 1971, 328 F. Supp. 554, 171 USPQ 42, citing S.D.N.Y. 1971, 328F. Supp. 1030, 169 USPQ 470, latter in turn citing other cases, and distinguishing 2d Cir.1960, 274 F.2d 487, 124 USPQ 154, where plaintiff’s design was original).

Similarities in Expression of Public Domain Idea Not Necessarily Infringing.—Allevidence being before appellate court without any credibility issue, where defendant tookadvantage of plaintiff’s underlying medical research (not here copied) by circulatingmanual and charts for teaching exercises and muscles involved for course in trainingweight lifters (which idea was in public domain), and similarities with plaintiff’s copy-righted manual were due to describing ‘‘idea’’, rather than slavish copying, (there alsobeing substantial differences as well in treatment), appellate court was in position todetermine there was no appropriation, other than of unprotectable idea. Thus, it reversedsummary judgment by District Court of copyright infringement, as well as prior civiljudgment for contempt in same case for circulating defendant’s manual training chart inviolation of preliminary injunction. (3d Cir. 1975, 511 F.2d 904, 185 USPQ 76, andvacating W.D. Pa. 1974, 182 USPQ 274, 278; see, also, same case, 173 USPQ 790).

To similar effect as above case, of no infringement where both plaintiff and defendantdeal with same subject, or have common sources (citing many cases), where complainedof infringing broadcast and plaintiff’s copyrighted script were each based on story of lifeand death of notorious gangster and woman in his life. (S.D.N.Y. 1975, 390 F. Supp. 877,185 USPQ 460).

Common Historical Sources.—While repetition of common errors is ordinarily pro-bative of copying, unsubstantial errors traceable to common erroneous sources wherehistorical works or incidents are involved, will not be deemed probative of copying, andplaintiff was denied injunctive relief on his claim of common law appropriation of hisliterary property. (N.Y. Sup. Ct. 1968, 56 Misc.2d 1071, 290 N.Y.S.2d 637, 159 USPQ699, citing 2d Cir. 1966, 366 F.2d 303, 150 USPQ 715). See also, to same effect, thatthere is no infringement as between two biographies, similar in context, but withoutappropriation of form of expression, involving historical facts and events in Rosenbergtreason trial many years ago. (S.D.N.Y. 1975, 391 F. Supp. 940, 185 USPQ 485).

Test of Ordinary Observer.—Using test of ordinary observer, and noting that slightdifferences between plaintiff’s and defendant’s textile designs tended to emphasize thatthere was copying, and that slight differences were deliberately made to conceal copying,Court of Appeals, per curiam, reversed denial of preliminary injunction by District Court.(2d Cir. 1969, 409 F.2d 1315, 161 USPQ 3, rev’g S.D.N.Y. 1969, 296 F. Supp. 736, 161USPQ 31).

Test for infringement by copying copyrighted dolls does not require examination detailby detail by court, but rather looks to overall appearance to see if creates generalimpression of substantial similarity, and whether average lay observer would find sub-stantial similarity. (S.D.N.Y. 1974, 385 F. Supp. 218, 184 USPQ 376).

Expert Testimony.—In affirming judgment for defendant, Appellate Court held thatDistrict Court could and did properly rely on expert testimony as to absence of plagia-rism. (7th Cir. 1967, 376 F.2d 467, 153 USPQ 493, cert. denied 389 U.S. 832).

Criteria in Determining Music Infringement.—Where there is no direct evidence ofaccess of defendant infringer to plaintiff’s copyrighted musical composition, there isnothing in prior art precisely resembling either work, and defendant admitted not goingback to prior sources, court by dissection and analysis is warranted in inferring thatdefendant had access to plaintiff’s tune, and infringed the same by copying. Injunctionwas granted against not only infringing publisher, but broadcasters of infringing tune, andlatter’s claim of performing license from plaintiff’s performing rights society was of noavail to cover such tortious infringement by defendant. (S.D. Cal. 1959, 171 F. Supp.580).

Where the lower court’s findings of fact as to infringing appropriation of musicalcompositions was assisted by instrumental and vocal musical demonstrations by theparties in analyzing the tunes, but such instrumental and vocal assistance was unavailableto the appellate court, the latter would not reverse the court below which found noinfringement because the respective tunes conveyed substantially different musical sound,feeling and impression to the average listener as well as those skilled in music. (9th Cir.,1959, 264 F.2d 942).

REMOVAL:Any action where exclusive jurisdiction is in Federal Court, such as copyright in-

fringement, may be removed from State Court to Federal Court along with one or moreotherwise non-removable claims originally joined with removable claims. (28 U.S.C.§1441). State court actions relating solely to contractual issues concerning copyright maynot be removed.

RENEWAL OF COPYRIGHT:Renewal is not required for copyrights obtained subsequent to Jan. 1, 1978 since such

copyrights do not have original and renewal terms as did pre-1978 registrations. Priorto June 26, 1992, there was need to renew pre-1978 copyrights before expiration of initial

term of copyright. Failure to renew placed work in public domain. Subsequent to June26, 1992, renewal is automatic for all copyrights secured between Jan. 1, 1964 and Dec.31, 1977, §304(a). Copyrights secured prior to Jan. 1, 1964 shall be governed by §304(a)as it existed prior to June 26, 1992. There remain, however, substantive and proceduraladvantages to filing renewal application. Renewal applications may be filed until Dec.31st in year in which they come due. (17 U.S.C. §§304, 409). Renewal term registrationsare possible even if there was no original term registration. For renewal duration ofcopyrights secured under pre-1978 Act, see topic Duration.

Certain foreign works which lapsed into public domain for failure to renew wererestored to copyright on Jan. 1, 1996. (§104A).

RENTAL:It is illegal to rent or lend publicly for commercial advantage without permission of

copyright owner, phonorecords or computer programs. (17 U.S.C. §109[b]). Rental ofauthorized copies of videotapes is permitted.

REPRODUCE:Reproduction is one of exclusive rights granted to owner of copyright. (§106). It is

copying of work in such manner and amount as to be substantial taking. Substantialtaking is found if ordinary observer, looking at similarities rather than dissimilarities,would believe accused work was copied from plaintiff’s.

RESTORATION OF COPYRIGHT:On Jan. 1, 1996, in compliance with Berne and GATT obligations, copyright was

restored to certain foreign works still under copyright in foreign country that went intopublic domain in U.S. for failure of compliance with U.S. formalities or for absence ofproper subject matter. Limited protection is afforded to those who relied on earlier publicdomain status. (§104A).

RIGHTS UNDER COPYRIGHT:It is important to know what exclusive rights are conferred upon copyright owner in

order to determine what he may prevent others from doing with his work. Copyrightowner is thus enabled to market these rights, by assigning individual rights or partsthereof or granting licenses, for fee or other consideration, permitting licensee to do, inwhole or in part, in limited or extended territories, for limited or extended periods oftime, what owner would otherwise have exclusive right to do.

No Right to ‘‘Use’’ Generally.—Exclusive rights, being statutory, are determined byprovisions of §106. They do not include every conceivable ‘‘use’’ of copyrighted work,but only those which are expressly provided in section or by judicial construction canbe deemed to have been intended by section.

Rights Granted.—Exclusive rights granted in copyright work are (§106): (1) Toreproduce work in copies; (2) to prepare derivative works based on work; (3) to distributecopies to public by sale, transfer, rental, lease or loan; (4) to perform work publicly ifliterary, musical, dramatic, choreographic, pantomimic works or motion picture or otheraudiovisual works; (5) to display work publicly if literary, musical, dramatic, choreo-graphic, pantomimic, pictorial, graphic or sculptural works; (6) in case of sound re-cordings, to perform work publicly by means of digital audio transmissions. No otherexclusive rights under copyright exist. Additional rights (quasi-moral rights) are grantedto authors under §106A, to performance of phonorecord by Digital Audio Transmission,§§114, 115, and to fixation and trafficking in fixations of live musical performances.(§1101).

Limitations.—§§107 through 118 set out specific limitations on exclusive rights.First Vending Only.—Exclusive right to vend copyrighted work is included in rights

to distribute. Vending right, however, includes only first vending. Copyright owner hasexclusive right to vend, and thus to withhold from vending, any copies of work. Copy-right owner may not thereafter control vending except for importation controls allowedby §602. This is referred to as ‘‘Doctrine of First Sale’’. Vending of copyrighted workdoes not carry with it right in purchaser to exercise other exclusive rights of copyrightowner. Owner of physical copy has right to display it or to re-vend it. (§109).

If copy is vended or title thereto as physical material passed by other disposition, byor with consent or authorization of copyright owner, particular object as physical ma-terial, passes out of further domain of copyright. Copyright owner cannot thereaftercontrol, under copyright, subsequent resale, gift, or other disposition of physical materialemployed in particular copies so sold or to which title has been transferred. (§109). Firstsale doctrine does not, however, allow rental of purchaser’s computer programs orphonorecords. Copyright owner still controls exclusive right to sell any other copy as towhich there has not already been authorized sale. Incorporeal exclusive rights of copy-right being distinct from property in physical objects in which copyright is embodied,loss of control by copyright owner over physical objects, as they pass in commerce afterauthorized first sale, does not extend to his incorporeal exclusive rights under copyright.Retail purchaser of book authorized to be sold by copyright owner can do as he pleaseswith physical material of book, but acquires none of incorporeal rights of copyright bywhich he can print, reprint, dramatize, make motion picture, or publicly perform it if itbe drama.

Sale and Moral Rights.—Sale of work of fine art does not waive author’s rights under§106A, thus purchaser cannot violate rights of paternity or integrity without expresswaiver by author.

Involuntary First Sales.—Since copyrighted goods are not immune from the normalremedies of unpaid creditors until the copyright owner has made a truly voluntary sale,a reasonable and recognized form of compulsory transfer, such as a judicial sale or Courtcompelled assignment, may be effective and non-infringing. However, a manufacturer ofgoods for the copyright owner cannot by self-help assert an unpaid seller’s lien againstsuch owner by selling the goods before a Court has adjudicated that the manufactureris entitled to do so. (2d Cir. 1963, 315 F.2d 847, 137 USPQ 268).

It should be noted that with regard to mechanical rights in copyrighted musicalcompositions, the copyright owner can withhold the composition from recording, but ifhe records it or authorizes another to do so, a compulsory license takes effect permittingothers to record at a statutory rate per recording. See infra, subhead Mechanical Rights(Recordings), catchline (c) Musical Recordings.

UNITED STATES COPYRIGHT LAW DIGEST RIGHTS UNDER COPYRIGHT


RIGHTS UNDER COPYRIGHT . . . continuedTransformation Rights.—These exclusive rights depend upon nature of particular

copyrighted work. Owner is given exclusive right to prepare derivative works based oncopyrighted work such as translations into other languages or dialects, or make any otherversion thereof, if it be literary work; to dramatize, if it be nondramatic work; to convertit into novel or other nondramatic work if it be drama; to arrange or adapt it if it bemusical work; to complete, execute and finish it if it be model or design for work of art.(§106).

Paraphrasing.—See topic Paraphrasing.

Performing Rights.—Exclusive rights in these instances depend not only upon natureof copyrighted work, but whether it was performed publicly. (§106). Profit issue stillremains as to certain exceptions to exclusive performance right. (§110[1]-[4]).

The exclusive right to perform copyrighted dramatic works covers only those per-formances which are public. Whether a performance was public would be governed byfactors spelled out in §101 (see topic Perform), controlling factor being availability ofperformance to general public rather than selected audience.

Exclusive right to perform copyrighted musical compositions depends upon perfor-mance being public. If not public one is able to perform without license any copyrightedmusical composition.

It is immaterial whether performance is given by living performers or by acousticrecordings of musical composition, or whether such performances are broadcast oraccomplished by radio reception.

Right to perform sound recordings in digital audio is now one of exclusive rights ofowner. (§106[b]).

Rights of Performers.—Unauthorized fixation in sound recordings or musical videosor trafficking in such fixations of live musical performances shall be treated as infringe-ment of performers’ rights. (§1101).

Marketing of Non-Dramatic Commercial Performing Rights in Copyrighted Mu-sical Compositions.—Marketing commercial public performing rights of copyrightedmusical compositions, by way of license, to broadcasters, motion picture producers,concert managers, dance halls, and others who provide public performances thereof, islargely done by so-called performing rights societies such as, e.g., ASCAP (AmericanSociety of Composers, Authors and Publishers), or BMI (Broadcast Music, Inc.). Indi-vidual lyric writers and music composers, and their publishers could not, as practicalmatter, conceivably police and license every potential public performance of everymusical composition throughout U.S. Performing rights societies were formed to meetthis need. It was believed, however, that individual copyright owners could appropriatelypolice and license rarer and more publicized performances of musical shows or operas.

ASCAP and BMI operate under consent decrees growing out of prior federal anti-trustactions, and grant nonexclusive performing licenses to applicants under provisionsthereof. These are ordinarily granted on a blanket basis for vast repertory in theirrespective catalogues. Compositions may also be negotiated for on a per program basis.

‘‘Juke-Box’’ Exception.—An express exception, by statutory definition, is that whererendition of musical composition is accomplished by or upon coin-operated machine(so-called ‘‘juke boxes’’). Statute grants compulsory license for such performances. Seetopic Juke Boxes.

Mechanical Rights (Recordings).—The Act expressly provides for instrumentalitiescapable of preserving in a permanent record, a performance or rendition of dramatic ormusical works from which such performances or renditions can be mechanically repro-duced. By these rights, the copyright owner of dramatic or musical works is given controlover the making and distribution and performances from such instrumentalities, althoughthe rights substantially differ for dramas and music.

(a) Dramatic Recordings.—The right to make records or transcriptions of copyrighteddramatic works from which it may be exhibited or performed or reproduced, and toexhibit, perform or reproduce it in any manner, are given by §106. This type of recordingcould be either visual in form of motion picture film, or sound recording, or combinationof both such as synchronized sound motion picture. While film recording may be in-fringement if made without consent of copyright proprietor of source material used inproducing film, motion picture film is itself independently copyrightable subject, ifproduced with consent of proprietor of source material or if based on source materialswhich are in public domain.

(b) Nondramatic Literary Recordings.—See discussion above under topic Rights Un-der Copyright, subhead Performing Rights.

(c) Musical Recordings.—The control of musical recordings is given to the copyrightowner of the musical manuscript, but subject to a compulsory license feature. (§114).

(d) Rental.—Public rental of phonograph records for profit is infringement withoutpermission of copyright owners. (Rental Amendment Act 1984, §§2, 109, Tit. 17). Publicrental or loaning of computer programs is also infringement. (17 U.S.C. §109[b]).

Motion Picture Sound Tracks.—Reproduction of sound tracks that accompany mo-tion picture is considered infringement of motion picture copyright.

Copyright in Sound Recordings Fixed, Published and Copyrighted after Feb. 15,1972.—Works recorded in a form capable only of perception audibly, such as perfor-mances or renditions of musical, literary or dramatic materials, have not, prior to Feb.15, 1972, been deemed protected under Tit. 17 U.S.C., Copyright Act. By specialcopyright legislation, captioned in House and Senate Judiciary Committee Reports rec-ommending its passage, as ‘‘Prohibiting Piracy of Sound Recordings,’’ Congress, in1972, amended Tit. 17 to create, for first time, limited copyright in sound recordings forpurpose of protecting against their unauthorized duplication in any kind of sound re-cording, and distribution of so-duplicated recordings. (P. L. 92-140, 92nd Cong., ap-proved Oct. 15, 1971). This has been carried over into new Act. (§§102, 106). Rightgranted to reproduce sound recordings does not prohibit simulations of original work butonly transfer of original sounds to copy.

Non-Retroactive to Recordings Fixed before Feb. 15, 1972.—Amendment of 1972 didnot affect prior state law rights relating to recordings fixed before 1972. Such rightsexpire in 2047. (§301[c]).

Foreign source recordings fixed prior to 1972 were in public domain in U.S. untilrestored to copyright on Jan. 1, 1996. (§104A).

Contributing to Making Duplicates of Copyrighted Musical Sound Recordings.—De-fendant store sold pre-recorded as well as blank tapes, but kept a special supply ofpre-recorded musical tapes (copyrighted under above Act effective Feb. 15, 1972), notfor sale but to loan to customers while they re-recorded same at store on blank tapespurchased by customer, using a taping machine furnished by store. Same was held notto be fair use. A preliminary injunction was granted to complaining copyright owners oftapes so loaned for such re-recording purpose. (E.D.N.Y. 1973, 360 F. Supp. 821, 179USPQ 617).

State Remedies.—Several states have enacted record or tape piracy statutes to protectpre Feb. 15, 1972 recordings. Those state statutes would continue in effect as to re-cordings fixed before Feb. 15, 1972 until 2047. (§301[c]).

ROYALTIES:See topic Licenses.

SALE:Sale of copyrighted work does not carry with it transfer of copyright in work. See also

topic, First Sale Doctrine.

SAMPLING:Unauthorized taking of small sound portions from copyrighted phonorecord and in-

clusion in subsequent recording. May be actionable infringement. (780 F. Supp. 182).

SCENES A FAIRE:Certain fact patterns automatically follow from certain ideas and are not protectable

as expression.

SCULPTURAL WORKS:See discussion under topic Pictorial, Graphic and Sculptural Works.

SECRETS:See topic Unfair Competition, subhead Trade Secrets.

SEIZURE, IMPOUNDING AND DESTRUCTION:Infringing Copies.—§503 gives court power to order seizure and impounding during

pendency of action, as well as destruction of all infringing copies or devices. SupremeCourt rules specially prescribing procedure for seizure and impounding of infringingarticles may no longer be in effect (see annotation to §501 of Act for these rules):

Contempt to Conceal Copies from Ordered Seizure.—Fines for civil contempt becausearticles, covered by served seizure order, were withheld or concealed from U.S. Marshall,were made payable to plaintiffs. (E.D. Pa. 1963, 140 USPQ 17).

Destruction of Music Matrices Withheld.—Where infringement of a copyrighted mu-sical composition by manufacture of records, without service of the statutory notice toexercise the compulsory license, was admitted, destruction of matrices or other meansfor producing the recordings will not be ordered by the court in its decree, if thecopyright owner of the musical work has theretofore used or permitted use of his workfor mechanical reproduction. This is because the infringing owner of the matrices, bysubsequently giving notice of his intention to use, and by paying the required royalties,can at any time thereafter establish for himself a right to use his matrices lawfully.However, if damages are awarded the copyright owner arising out of the prior infringinguse of such matrices, the matrices may be impounded by the court until such damagesare paid in full or satisfied (125 F. Supp. 348).

Importation of Prohibited Copies.—Importation into U.S., of any piratical copies ofany book copyrighted in U.S., or of any book bearing false notice of copyright wherethere is no existing U.S. copyright, or of any other copies (unless authorized by authoror proprietor) is prohibited. (§§601, 602).

Any of the above described copies which are brought into the United States from anyforeign country, are subject to seizure and forfeiture by like proceedings as those pro-vided by law for seizure and condemnation of property imported into U.S. in violationof the Customs Revenue Laws. (§603). Such articles when forfeited, may be destroyedin such manner as Secretary of Treasury, or court, shall direct. (§603).

Secretary of Treasury and U. S. Postal Service are empowered by Act to make andenforce individually and jointly such rules and regulations as are necessary to preventimportation into U. S. of articles prohibited importation by Act. See topic Importation.

SEMICONDUCTOR CHIPS:Ten year protection is given to mask works of computer programs embodied in

semiconductor chips. Protection is quasi-copyright and not true copyright protection.(Semiconductor Chip Protection Act of 1984, Tit. 17 §§901-914).

SERVICE PROVIDERS:Those entities that provide access to Internet are, with certain limitations, free from

liability for material transmitted over their services by consumers. (§512).

SLOGANS:Slogans, names, and listing of contents, are not ordinarily deemed subject matter of

copyright. (D. Del. 1965, 244 F. Supp. 785, 147 USPQ 188).

SOFTWARE:Computer software or programs are copyrightable subject matter as literary works.

Once sold they may be resold but not rented or lent. But question arises whether licenseagreement may deem transfer less than title to program thereby making licensee non-owner.

License agreement for software will be strictly construed to grant only rights specifiedtherein. Thus, license agreement which neither permitted nor prohibited defendant tooutsource technical support work to third party, which necessitated copying of softwareby third party, held to have been breached by such outsourcing. (Beckman Instruments,

RIGHTS UNDER COPYRIGHT MARTINDALE-HUBBELL LAW DIGEST - 2007


SOFTWARE . . . continuedInc. v. Cincom Sys., Inc., 232 F.3d 893 [9th Cir. 2000], Copyr. L. Rep. ¶ 28,127, cert.denied, 531 U.S. 1150, 121 S.Ct. 1093).

Assuming access, in determining whether software is “substantially similar” and there-fore infringing copy, court employs “abstraction-filtration-comparison” test which: (1)Separates non-protectable ideas from particular expression of work; (2) then filters outnon-protectable components of product from original expression; and (3) finally com-pares remaining protected elements to allegedly copied work to determine if two worksare substantially similar.

In one litigation involving software license, court dismissed plaintiff’s copyright in-fringement claim arising out of Sun Microsystem’s allegations that Microsoft exceededscope of license for Sun’s Java Virtual Machine Technology. License provided thatMicrosoft could make derivative works of licensed Java technology so long as derivativeworks passed compatibility tests. Microsoft argued that copyrighted code itself waslicensed. It also argued compatibility obligations were independent covenants whichbecame applicable only after termination of agreement. Court agreed with Microsoft,finding language and structure of agreement suggested compatibility requirements wereindependent covenants, and not conditions or restrictions on scope of Microsoft’s licenseprior to termination. Where parties intended to condition or limit scope of license, theydid so expressly in agreement. Compatibility section of agreement, however, containedno express limitation. (Sun Microsystems, Inc. v. Microsoft Corp., No. C97-20884 RMW[PVT], 2000 U.S. Dist. LEXIS 20222 [N.D. Cal. May 8, 2000]).

SOUND RECORDINGS:For many years sound recordings were not protectable under copyright until amend-

ment to prior act in 1971 which made sound recordings fixed after Feb. 15, 1972 subjectto protection. This protection is continued under current statute. (§102[a][7]). Soundrecordings are fixed in phonorecords and rights therein are set out in §106(1), (2) and(3) only. (§114).

Protection granted does not include imitation of sounds but only direct or indirectcapture of actual sounds.

Motion picture sound tracks are not considered as sound recordings but are includedwithin scope of motion picture copyright. (§101).

Proper notice of copyright for publicly distributed sound recordings is the letter C ina circle, ©, year of first publication and name of copyright owner. (§402).

While current statute preempts most common law and State statutory law, it expresslyprovides that with respect to sound recordings fixed prior to Feb. 15, 1972 any rights orremedies granted by common law or by State statute shall not be preempted until Feb.15, 2047.

Foreign sound recordings fixed prior to Feb. 1972 or which lapsed into public domainfor failure to comply with U.S. formalities were restored to copyright on Jan. 1, 1996.(§104A).

See also topics Digital Recording and Transmission, Phonograph Records (Phon-orecords) and Tapes.

Analog performance of sound recordings is permissible but not by digital audio.

SPEECHES:These are copyrightable if fixed in tangible medium of expression. Broadcast or other

giving of speech, lecture, or sermon is not publication. One who records speech withoutpermission and distributes it is infringer. (224 F. Supp. 101). Unlimited distribution offixed copy of speech may place speech in public domain.

STATE ACTIONS:Actions in state court may be brought for enforcement of contracts and for any other

matters involving copyright not preempted by federal statute.

STATE LAWS:Although most of state copyright laws in area of common law copyright have been

preempted, there are still areas in which states may legislate. For example, in areas notcovered by federal copyright statute; in pre-1972 record piracy statutes; in author’s rightto share in resale price of his work or other statutes designed to protect consumer; in postdeath moral rights area. See topic Preemption.

STATES:In 1990, states and their employees were made liable for infringement. (§511). See

topic Infringement.

STATUETTES (THREE-DIMENSIONAL WORKS):If the material for which copyright is sought is nonutilitarian and nonmechanical,

copyright may be secured for three-dimensional work of art such as, for example,statuette of figures of ballet dancers (S.D. Cal., 1952, 103 F. Supp. 227), or of figure ofdog (1st Cir., 1951, 193 F.2d 162), or of cartoon character (2d Cir., 73 F.2d 276).Protection of three-dimensional work so copyrighted is not dissipated by thereafterintegrating it into commercially valuable merchandise, such as, for example, usingstatuettes of dogs as bookends, dance figures as base for electric lamp (347 U.S. 201),or of cartoon character as toy doll (73 F.2d 276). Work qualifies for registration by reasonof its purely artistic character, which need not necessarily be of fine arts, and itspotentiality for utilitarian use is not matter of concern.

§§101 and 113 of current statute make clear that copyright is not obtainable on usefularticles but only upon works that may be incorporated in said articles, and which mayexist independently of useful article.

Dolls and Toys.—Despite their utilitarian purpose, dolls and toys are copyrightable.(302 F.2d 623).

Copying abstract idea of a doll on a pole in display box; kissing monkeys or SantaClause without copying plaintiff’s tangible expression of such idea, would not warrantpreliminary injunctive relief. (S.D.N.Y. 1965, 241 F. Supp. 675, 145 USPQ 326, aff’d perCuriam, 2d Cir. 1965, 353 F.2d 788, 148 USPQ 7).

For method of registration, see topic Classification of Works for Registration. See alsotopic Works of Art.

STATUTORY DAMAGES:See topic Remedies for Infringement.

STOLEN PROPERTY:Transportation of infringing works of or stolen copyrighted works in commerce may

constitute crimes under National Stolen Property Act (18 U.S.C. §2314), or under in-dividual state penal laws.

SUBJECT MATTER OF COPYRIGHT:Defined in §102 as original works of authorship fixed in tangible medium of expres-

sion. §102 lists recognized types of such works but list is not exhaustive.

TAPES:See topic Phonograph Records (Phonorecords) and Tapes.

TAPING:Ordinarily refers to recording of sounds of readings, renditions or performances of

literary, dramatic and musical materials (copyrighted or uncopyrighted), on magnetic tapein reel or cassette form, from which original reading, rendition or performance may bereactivated in sound. Where recording on tape is of visual aspects of readings, renditionsor performances of literary, dramatic or musical materials, with or without synchronizedaccompanying sounds, such recordings are called videotapes. Such taping and tapes areconsidered as copying and copies under new Act. (§101).

Home taping of television program for later viewing does not constitute copyrightinfringement. (1984, 464 U.S. 417, 220 USPQ 665, 17 U.S.C. §§1001; 1008).

Unauthorized taping of live musical performances is infringement. (§1101).

TELEVISION INFRINGEMENT:See topics Cable Television Systems; Community Antenna Television (CATV); and

Remedies for Infringement, subhead Joint and Several Liability, catchline Sponsors.

TERMINATION OF TRANSFER:See topic Assignment, subhead, Rescission of Assignment.

TERM OF COPYRIGHT:

See topic Duration.

TRADE CATALOGS:

See topic Catalogs (Trade).

TRADE RESTRAINTS:

See topic Monopoly and Trade Restraints.

TRADE SECRETS:

See topic Unfair Competition.

TRANSFER OF RIGHTS:

See topic Assignment.

TRANSITIONAL PROVISIONS:

Current statute provides for certain transitional matters between prior and current Acts,including: (a) Current statute does not provide copyright protection for any work goinginto public domain prior to Jan. 1, 1978; (b) notice provisions of old Act or current statuteshall apply to all copies publicly distributed after Dec. 31, 1977; (c) all causes of actionthat arose under old Act shall be governed by old Act.

TRANSLATIONS, ADAPTATIONS, DRAMATIZATIONS, OTHER VERSIONS,ETC.:


TRANSMISSIONS:

Transmissions by various means are considered part of exclusive rights to perform ordistribute. (§106).

UNCOPYRIGHTABLE MATERIALS:

See topic Non-Copyrightable Works.

UNFAIR COMPETITION:

See topic Common Law Rights.A cause of action for unfair competition does not arise under the copyright statute.

However, if the same facts necessary to prove an infringement of copyright establish acause of action for unfair competition, the jurisdiction of the federal court to hear theinfringement suit, despite absence of diversity of citizenship of the parties and therequisite minimum jurisdictional amount, will be sufficient to carry the additional causeof action for unfair competition. (28 U.S.C. §1338[b]). Otherwise, diversity of citizenshipand minimum jurisdictional amount or qualification under 15 U.S.C. §1125(a) is nec-essary to sustain unfair competition cause of action in federal courts. (289 U.S. 238; 139F.2d 895; 59 F. Supp. 13).

Where such unfair competition counts claim rights that are equivalent to exclusiverights of §106 and come within subject matter of copyright (§§102 and 103) they arepreempted (§301). Such counts include misappropriation and unjust enrichment.

The name or title of a copyrighted work is not protected under the copyright, beingmerely an identification. However, the name or title may be protected, under principlesof unfair competition, where used on another work under such circumstances as toindicate a ‘‘passing off’’ or deception of the public (70 F.2d 310).

UNITED STATES COPYRIGHT LAW DIGEST UNFAIR COMPETITION


UNFAIR COMPETITION . . . continuedViolations of trade secret obligations, fraud and similar causes of action which require

proof of elements beyond copyright infringement may not be preempted. See topicPreemption.

Appropriation of Title Names: Secondary Meaning.—Titles are not copyrightablesubject matter. Titles for series of books or programs may be protected under trademarklaw. Titles for works not part of series may be protected against another’s use if publicconfusion is likely to occur under general concept of unfair competition.

Trade Secrets.—Cause of action for misappropriation of trade secrets does not ariseunder copyright statute.

There are several federal and numerous state statutes dealing with misappropriation oftrade secrets.

Imitating Performers.—Courts have variously treated imitations of performances,style or image of well known performers. Where protection is afforded, it is not undercopyright law but unfair competition or state privacy or publicity statutes or forms ofunjust enrichment or commercial piracy. See 610 F. Supp. 612 (Woody Allen).

False Designation of Origin.—Where copyrighted work is infringed by copies bear-ing infringer’s name, this constitutes violation of Trademark Statute. (15 U.S.C. §1125[a],33 USPQ2d 1266).

UNFIXED WORKS:

Until work is fixed in tangible medium of expression no copyright exists. (§102). Suchunfixed ideas may be protectable under state laws such as implied contract.

UNIFORM COMPUTER INFORMATION TRANSACTIONS ACT:

Uniform Computer Information Transactions Act (UCITA) is standalone uniform lawpromulgated by National Conference of Uniform Law Commissioners in 2000. UCITAcovers computer information transactions and treats them differently from transactions ingoods and services governed by Art. 2 of Uniform Commercial Code. Particularly where“securitization” of loans and where “due diligence” issues are involved in respect tomergers and acquisitions, “due diligence” and transactional work of practitioners in U.S.have long been governed by provisions of Uniform Commercial Code (“U.C.C.”) which,in various ways, has been adopted by all of states in U.S. in order to provide commercialcontext for laws relating to sale, lease and lending of goods and services. Art. 2 of U.C.C.was particular focus for various committees desiring to update Code to allow for sub-stantial changes that “electronic” contracts involving, among other things, copyrightedworks, have made in modern commercial marketplace. Legal underpinnings of economyof so-called “hard goods and services” has been, to degree, eclipsed by new forms ofexpectations, industry practices and different policies in respect to software, new mediaand telecommunications industries, among others. After series of unsuccessful effortsrelating to amendment of Art. 2b of U.C.C., on Aug. 20, 2000, National Conference ofCommissioners of Uniform State Laws passed Uniform Computer Information Trans-actions Act (“UCITA”) as “a commercial contract code for computer information trans-actions”. However, UCITA is complex and controversial law raising significant consumerissues and copyright law issues, particularly extent to which private parties may altereffect of federal law by contract. While adoption and implementation of UCITA by eachstate will doubtless take time and undergo further political debate, UCITA is likely toform key part of foundation for future commercial transactions in U.S. involving copy-righted works. Virginia and Maryland have adopted UCITA. While nearly every one of50 states has had some level of activity involving UCITA, most of this occurred in 2001.2002 and 2003 state legislative sessions have largely been dormant and without anypassage of UCITA as presented. Iowa, North Carolina, Vermont and West Virginia haveactively considered UCITA “bomb shelter” legislation, statutes designed to protect state’sresidents from unfair and overreaching provisions of UCITA. Others, such as New York,are considering following this trend.

UNIVERSAL COPYRIGHT CONVENTION:

Signatories.—This Convention was adopted at Geneva Switzerland, on Sept. 6, 1952.It is not effective, however, as to any signatory (or later accessant, if not a signatory),until its instrument of ratification or accession is deposited with UNESCO in Paris.

See also Introduction—The Statutory Copyright System, on first page of this digest.

Ratification by United States.—The Convention was ratified by the United StatesSenate June 25, 1954. The instrument of ratification was signed by the President on Nov.5, 1954, and deposited with UNESCO in Paris on Nov. 6, 1954.

Countries as to Which in Force.—Convention is in force in following countries asof 1990: Algeria, Andorra, Argentina, Australia, Austria, Azerbaijan, Bahamas, Bang-ladesh, Barbados, Belarus, Belgium, Belize, Bolivia, Bosnia and Herzegovina, Brazil,Bulgaria, Cambodia, Cameroon, Canada, Chile, China, Colombia, Costa Rica, Croatia,Cuba, Cyprus, Czech Republic, Denmark, Dominican Republic, Ecuador, El Salvador,Fiji, Finland, France, Germany, Ghana, Greece, Guatemala, Guinea, Haiti, Hungary,Iceland, India, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Korea (Republic of),Laos, Lebanon, Liberia, Liechtenstein, Luxembourg, Macedonia, Malawi, Malta, Mau-ritius, Mexico, Moldova, Monaco, Morocco, Netherlands, New Zealand, Nicaragua,Niger, Nigeria, Norway, Pakistan, Panama, Paraguay, Peru, Philippines, Poland, Portugal,Russian Federation, Rwanda, Saudi Arabia, Saint Vincent and The Grenadines, Senegal,Slovakia, Slovenia, Spain, Sri Lanka, Sweden, Switzerland, Tajikistan, Trinidad & To-bago, Tunisia, Ukraine, U.K., U.S., Uruguay, Vatican City, Venezuela, Yugoslavia, Zam-bia.

UNESCO has advised the U.S. Government that on Nov. 14, 1955, a letter wasreceived from the Philippine Minister in Paris stating that the Philippine President haddirected the withdrawal of the instrument of accession prior to Nov. 19, 1955, the dateon which the Convention would become effective in respect of the Philippines. Nodetermination has been reached as to the legal effect of this communication. CopyrightOffice considers no U.C.C. relations exist. However, the Philippines still continue to beincluded, each year to date, in status listings of Ratifications and Accessions to U.C.C.(Geneva 1952), as having acceded effective Nov. 19, 1955. (9 Copyright [WIPO-BIRPI]29, No. 1, Jan. 1973; VI Copyright Bulletin [UNESCO] 6-8, No. 1, 1972).

Text of Convention.—The text of the Universal Copyright Convention, the AppendixDeclaration as to Art. XVII, the Resolution as to Art. XI, and the three Protocols arepublished in U.S. Code, Congressional Service, 1954, Vol. 3, pp. 5419-5428. The sameare also published in Senate Executive Report No. 5 (83d Cong., 2d Sess., June 11, 1954)on Executive M, from the Committee on Foreign Relations, recommending that theSenate consent to its ratification. See also annotations to §9 of the Act, 17 U.S.C.A.,pocket supplement.

National Treatment Without Formalities.—The basic purpose of the Convention isa harmonization of existing national systems, on a simplified reciprocal national treat-ment basis, rather than the creation of a new substantive international code of copyright.It seeks equality of treatment, within any given member country, whatever its internallaw might be, as between the nationals of that country and nationals of other membercountries seeking protection under the Convention in the given country. In essence, eachcountry agrees to provide a regime of protection not less than that given to its ownnationals, for the unpublished works of nationals of other member countries, withoutformalities, as well as for works either first published in another member country (re-gardless of the author’s nationality), or by a national thereof (regardless where pub-lished). As to published works, formalities conditioning the acquisition or enjoyment ofthe right are deemed to be satisfied, as to works first published outside the country bya non-national, if from first publication the copies bear a notice of copyright using thesymbol ‘‘c’’ enclosed in a circle (as an international symbol in lieu of the word ‘‘Copy-right’’ or the abbreviation ‘‘Copr.’’) accompanied by the name of the copyright proprietorand the year date of first publication. Such notice of copyright need merely be placedin such manner and location as to give reasonable notice of claim to copyright. Exceptfor further requirement of filing of application for renewal of copyright if renewal ispermitted, no other formality may be required, insofar as nonnational seeking protectionunder Convention in member country is concerned which could affect acquisition andenjoyment of copyright. This eliminates formalities such as deposit, registration, notice,notarial certificates, fee payment, domestic manufacture, or first publication in contract-ing State (latter being required in British Commonwealth countries), as condition uponacquisition or right to enjoy copyright.

Procedural Formalities Still Retained.—While formalities conditioning the right(other than the above described ‘‘c’’ in a circle form of notice of copyright) are eliminatedas to nonnationals seeking protection in a member country, procedural formalities maystill have to be observed as a condition precedent to securing remedies for an infringe-ment in the country where the right is sought to be enforced. Such procedural require-ments, however, as the use of domestic counsel, or deposit of copies of the work, maynot affect the validity of the copyright or the right to continued enjoyment of copyrightprotection in the country.

Inapplicable to Nationals or Domiciliaries, or Works First Published in Coun-try.—The Convention expressly provides that as to works first published in any particularmember country (regardless of nationality of the author), or as to works of its ownnationals wherever published, the particular member country may still retain for domesticenforcement as to such works all of its former formalities and conditions upon the right,regardless of the Convention, although it may not otherwise do so as to nonnationalsseeking protection under the Convention. (Art. III, subd. 2). Under Art. II, subd. 3, theConvention permits each member state, by its domestic legislation to treat (as the U.S.does) any nonnational domiciled in the country as if he were a national. The Conventionwould thus be inapplicable for protection thereunder in the U.S. to its nonnationaldomiciliaries. Likewise, with regard to works first published in a non-Convention coun-try, and as to aliens of non-Convention countries (whose works have not been firstpublished in a Convention country), to which the Convention would not be applicable,the contracting State could also, if desired, preserve its formalities or other conditionsupon the acquisition and enjoyment of copyright as to such aliens.

Stateless Persons Deemed Nationals.—By Protocol 1, annexed to the Convention,stateless persons and refugees, who have their habitual residence in a member country,are for the purposes of the Convention, treated as if assimilated to the nationals of thatcountry. This Protocol is separately signed and subject to ratification or acceptance bythe signatories, or may be separately acceded to by non-signatories when they accede tothe Convention.

Published and Unpublished Works.—Unpublished works, and published works(wherever published), of nationals of any member country, as well as works first pub-lished in any member country (regardless of the nationality of the author), enjoy in eachother member country the same substantive protection as that country accords to pub-lished and unpublished works of its own nationals. Under Art. III, this protection is tobe afforded, when a nonnational seeks protection under the Convention for his publishedor unpublished work, without any formalities excepting only that, for published works,the country may require the formality of publication with the ‘‘c’’ in a circle form ofcopyright notice. There is no obligation upon the country to require any such notice ofcopyright, before recognizing and protecting the work, if it chooses to do so without suchnotice. The Convention merely provides that if member countries do have any formalityrequirements conditioning acquisition or enjoyment of copyright, the same are to bedeemed satisfied by the use of such notice of copyright.

Duration of Protection.—In Art. IV dealing with the term of copyright protection, wefind one of the few instances where there is a provision of a substantive nature by callingupon the member countries to have certain minimum terms of copyright. These minimaare less than the terms now in effect in most countries including the United States. Theduration of protection is governed by the law of the country in which protection isclaimed, but such country is not obligated to give a period of protection longer than thatfixed for the class of works by the law of the country of which the author is a nationalin the case of unpublished works, and the law of the country in which first publishedin the case of published works. In the event of simultaneous (i.e., within 30 days) firstpublication in two or more member countries, the work is treated as though first pub-lished in the country which affords the shortest term. If a work is protected during arenewal term, the period of protection is considered to be the aggregate of the originaland the renewal term.

Translation Rights.—This is another of the few instances where the Conventionprovides certain minimum substantive rights. Under the provisions of Art. V, the membercountries are called upon to recognize the exclusive right, for at least seven years, of the

UNFAIR COMPETITION MARTINDALE-HUBBELL LAW DIGEST - 2007


UNIVERSAL COPYRIGHT CONVENTION . . . continuedauthor to make, publish and authorize the making and publication of translations of worksprotected under the Convention. Like the United States, most of the major countries ofthe world do recognize and protect such exclusive translation rights for the full term ofcopyright. However, certain of the smaller countries have objected in the past to anyrecognition, or have given slight recognition, to exclusive translation rights. The Con-vention secures protection for the author’s exclusive right, as part of the copyright, inall member countries, to make, publish, and authorize the making and publication oftranslations, but in obtaining the consent of these smaller countries certain compromiseswere made as to so-called ‘‘writings.’’ A country may legislate, if desired, so that if afterseven years of exclusive translation right from the date of first publication of a ‘‘writing’’(as distinguished from motion pictures, music, etc.) a translation thereof had not beenpublished in the national language or languages of the particular member country by theowner of the right of translation or with his authorization (or all previous editions of atranslation in such language were out of print), any national of such member country canobtain a nonexclusive nontransferable license from the competent authority thereof totranslate the work and publish the work so translated in any of the national languagesof the country in which it had not been published. The applicant would have to showthat he had sought to procure, and was unable to find the owner of the right, and domesticlegislation would have to assure to the owner of the right of translation appropriatecompensation. The license is not grantable if the author had withdrawn from circulationall copies of the work. Copies of such translation may be imported and sold in othermember countries officially using the same language, if the domestic law of such othercountry has such a license system and does not prohibit such importation and sale.

‘‘Publication’’ Under the Convention.—The terms ‘‘published,’’ ‘‘unpublished,’’‘‘publication,’’ etc., being used throughout the Convention, which provides separately forpublished and unpublished works, it was necessary for the Convention to have a defi-nition of ‘‘publication.’’ Under Art. VI, as used in the Convention, publication means thereproduction in tangible form and the general distribution to the public of copies of awork from which it can be read or otherwise visually perceived. This definition isapplicable only to claimants who, as nonnationals not domiciled therein, seek protectionin a member country, under the Convention, for works first published in another membercountry, or because the author of the work was a national of another member country.The definition is not necessarily applicable to domestic claims which are not made underthe Convention, such as, for example, where a national seeks protection in his owncountry. The requirement of distribution to the public of copies of a work from whichis can be read or otherwise visually perceived would appear to exclude from the defi-nition of publication gramophone records, or other sound recordings on wire, tape, discs,etc. This does not mean that the source manuscripts of musical or dramatic compositions,for example, so recorded acoustically, would not necessarily obtain protection, under theConvention as unpublished works, if the manuscripts had not been otherwise published.To the extent, if any, that the substantive law of the country where enforcement is soughtprotects the recording of a rendition or performance, either as published or unpublished,the Convention would call for the same substantive protection, but as for an unpublishedwork.

No Retroactivity.—Under Art. VII, the Convention does not apply to works or rightsin works which are permanently in the public domain in the contracting States. If, whenthe Convention shall have come into force as to a given country, a work, or rightthereunder, shall have fallen permanently into the public domain in that country on thatdate, the same will not be subsequently restored. In some countries of the world, otherthan the United States, works may be temporarily in the public domain. In certaincountries, such as those of the British Commonwealth, for example, a work, whileunpublished, may be unprotected because the author is not a national of that country orof a country with which it has treaty relationships in such regard. Yet, since such countryis a member of the Berne Union, it must subsequently give copyright protection to suchwork under the Berne Convention, regardless of the author’s nationality, if its firstpublication happens to take place in any Berne Union country. At the time of such firstpublication the unpublished work will come out of the public domain in that country andgo into protection as a Berne protected work. In certain other countries, a failure toregister may temporarily throw a work into the public domain, subject to restoration ofprotection by a registration within a prescribed statutory period.

Protection for U.S. Works Automatically Abroad.—The Universal Copyright Con-vention will provide automatic protection in all other contracting States of works firstpublished in the United States, or in any other member country, with the proper formof notice.

Advantages for U.S. Nationals.—This Convention has advantage of extending U.S.rights to countries which are not members of Berne Convention but are members ofUniversal Convention.

The Convention will furthermore supplement protection now obtainable under bilateralarrangements by providing for certain minimum standards in the way of term of copy-right and translation rights. Furthermore, the protection will definitely be afforded so longas the Convention is in force between the United States and any specific country, whichis a definitely ascertainable period, as distinguished from the nebulous state of bilateralarrangements announced many years ago by proclamation.

Notice of Copyright.—It is important to note that for Convention purposes the noticeof copyright must be in the form of a ‘‘c’’ in a circle accompanied by the year in whichfirst published and the name of the proprietor. The word ‘‘Copyright’’ or ‘‘Copr.’’ wouldnot be sufficient, although sufficient in the U.S. for domestic purposes. While the yeardate may not be necessary for certain classes of copyright under U.S. law, it is necessaryunder Convention. (See Notice of Copyright). Since Sept. 16, 1955, when Conventioncame into force, U.S. law also authorizes use for domestic protection of ‘‘c’’ in circlein lieu of words ‘‘Copyright’’ or ‘‘Copr.’’ Reasonable course for U.S. nationals who desireprotection, after Sept. 16, 1955, under Convention in other countries, as well as underdomestic law in U.S., will be to use, for every class of work, ‘‘c’’ in circle formaccompanied in every instance by year in which first published and name of proprietor.Further, notice should continue to be placed in such position and manner as will complywith present requirements of U.S. statute (see Notice of Copyright), since such will alsosatisfy Convention requirement of place where it will serve to give reasonable notice of

claim to copyright. Some who are especially cautious are adding words ‘‘Copyright’’ or‘‘Copr.’’ immediately preceding or following encircled ‘‘c’’.

Implementing Legislation.—The necessary implementing legislation, Public Law No.743 (Act of Aug. 31, 1954), became effective upon the Convention coming into forceas to the United States and 11 other countries on Sept. 16, 1955. The implementinglegislation necessary for Convention purposes to enable nondomiciled nationals of othermember countries to enforce their rights in the United States, under the Convention, iscontained in an amendment added as subsection (c) to §9 of our statute then in effect.This amendment is expressly made applicable to nondomiciled nationals of other coun-tries who can claim under the Convention, by granting them certain exemptions fromrequirements of our statute still retained: (a) For citizens, (b) for aliens domiciled here,and (c) for works first published here. These exemptions are granted only to nonnationalsof member countries when Convention shall be in force between United States andcountry of which author is national, or in which work was first published. Provisions ofthis amendment expressly do not extend to works of author who is citizen of UnitedStates, or alien domiciled here, regardless of place of first publication, or to works firstpublished in United States, so that domestic law would apply exclusively to thesesituations.

Protection for U.C.C. Works of Foreign Origin Within the U.S.A.—As to publishedor registered works, the above exemptions from provisions of the United States copyrightstatute, by the implementing legislation, Public Law 743, are given exclusively, as aboveindicated, to works of an origin foreign to the United States coming within the purviewand mandate of the U.C.C. Such foreign works of U.C.C. origin, if first published withU.C.C. notice of copyright, are entitled to protection within the United States, as abovedescribed, exclusively in the federal courts, under our copyright statute. The substantiverights accorded to these protectible published works of U.C.C. origin are the same asthose accorded by the statute to United States citizens (with the exemptions in favor ofU.C.C. claimants above indicated).

As to unpublished, unregistered works, although the Convention also requires theirprotection without formalities, subject to its definition of publication and other require-ments, implementing legislation was expressly enacted by Congress in this respect.(§104[a]).

UNPUBLISHED WORKS:Unpublished works as well as published works are protectable under copyright. (§104).

At Common Law.—Under prior Act unpublished works were protected under conceptof common law copyright. This theory will still apply to those few works involvingsubject matters that are not covered by current statute. Current statute in effect grantsstatutory copyright protection to all copyrightable works from moment of their fixationin tangible copy, whether or not published.

Under current statute copyrights can be registered as soon as fixed and there is no needto publish before registration as was case for several types of works under prior Act.

USE (MECHANICAL) FOR MUSIC:Where phonorecords of nondramatic musical work have been distributed to public

under authority of copyright owner, any other person may obtain compulsory license tomake and distribute phonorecords of work. Any person wishing to obtain such licenseshall serve notice to such effect on owner of work or if this is not feasible, on CopyrightOffice. Said compulsory license requires payment of royalties set by statute. (§115). Thiscompulsory license gives limited right to rearrange music and does not give right topublish lyrics separately. (§115).

USEFUL ARTICLES:Useful articles are those that have intrinsic utilitarian function. Design on useful article

shall be copyrightable only if and only to extent that such design incorporates pictorial,graphic or sculptural features that can be identified separately from and can exist sepa-rately from utilitarian aspects of article. (§§101, 113). Thus, lamp even though attractivein design cannot be copyrighted but independent frieze on lamp base may be copyrighted.

Similarly, typefaces are not copyrightable.There are currently substantial differences among Courts on what design features may

be separately identified from useful object. (632 F.2d 989).Case law has made exceptions for certain useful items, including toys, fabric, build-

ings, computer programs.See, however, §1301 which provides for non-copyright protection for new and original

vessel hull designs. This new right will be administered by Copyright Office althoughnot copyrightable.

VIDEOTAPES:On Apr. 19, 1961, Copyright Office for first time accepted for deposit motion picture

of operatic performance, recorded on video tape, when it received copies of such tapeon three reels, accompanied by playbill, similar to programs distributed in legitimatetheatres, which had been distributed to Canadian pay-TV viewers of broadcast of suchmotion picture performance. While tape itself is incapable of being so perceived throughdirect observation, symbols embodied thereon can be perceived visually and acousticallyin synchronization, in form of typical screening of sound motion picture performance,when electronically activated in appropriate projection apparatus.

Videotapes are recognized under current statute as suitable tangible medium of ex-pression of copyrightable work. (§§101, 102[a]).

VISUAL ART:Painting, drawing, print, sculpture, photographic image as defined and limited in §§101

and 113(d).

Visual Artists Rights Act of 1990.—Principally codified in §106A of Copyright Act,these provisions created certain rights for authors relating to attribution and integrity inrespect to their works and limited certain transfers and waivers in respect to these works.These affirmative legal rights were part of U.S. Copyright Act’s protection of “moralrights” in accordance with certain U.S. treaty obligations under provisions of BerneConvention.

UNITED STATES COPYRIGHT LAW DIGEST VISUAL ART


WARRANTIES:

Implied warranty of merchantability found in Uniform Commercial Code and statestatutes adopting it, includes warranty that product sold is free from infringement ofcopyright. However, with respect to license agreements deeming transfer not sale, ques-tion of Art. 2’s applicability to software licensees is not clear. See also topic Assignment,subhead No Implied Warranty of Title.

WEBCASTING:

Use of copyrighted works for streaming and other transmissions over Internet iscomplex and evolving area of copyright law and regulation. See http://www.loc.gov/copyright for June 20, 2003 “Announcements on Rates and Terms for Webcasting Statu-tory Licenses” and regarding administrative proceedings relating to “Notice and Re-cordkeeping” for webcasting performances for partial coverage of this complicatedsubject matter.

WIDOW OR WIDOWER:

Author’s surviving spouse under law of author’s domicile at time of his or her death,whether or not spouse has remarried will be considered widow or widower. (§101).

WORKS FOR HIRE:

Works for hire are defined by §101 of statute as works prepared by employees withinscope of their employment or, in case of work specially ordered or commissioned, wherethere is written agreement signed by both parties expressly providing that work shall beconsidered as work for hire and subject matter of work is within narrow limits definedby statute.

Controversy over when work would be considered as prepared by employee wasresolved by Supreme Court in 1989 in U.S. Community For Creative Non-Violence v.Reid, 10 USPQ2d 1985, where it held that general principles of law of agency must beused.

In true cases of works for hire, hiring party is considered author. Such works have ownduration provision (§302[c]) and are not subject to termination of grant provisions ofstatute (§203[a]).

Where there is some doubt whether there is true work for hire arrangement, assignmentof copyright should be obtained.

See topic Author, subheads Employers Who Hire, as Authors; Works for Hire.

WORKS OF ART:

Works of art come within statutory class of pictorial, graphic and sculptural works(§102[a][5]) and include works of fine and applied art. Copyright Office has set ourguidelines as to copyrightable subject matter in this class at c. 500 of Compendium IIof Copyright Office Practices (1984).

Authors of works of fine art as defined in §101 are entitled to quasi-moral rightsgranted under §106A.

Important decision by U.S. Supreme Court in Mazer v. Stein (1954, 347 U.S. 201)holding that statuette registrable as copyrighted work of art did not lose its right toprotection against infringement, because it had utilitarian features intended to permit itsuse as base for electric lamp, resulted in flood of applications to Copyright Office toregister claims to copyright in costume jewelry, artistic designs applied to various articlesof utility such as cloth, dishes, toys, glassware, silverware, etc. Regulations of CopyrightOffice promulgated in 1956 attempt to delineate criteria under which Copyright Officeis attempting to exercise its discretion in accepting registrations of such works (see‘‘works of visual arts’’, under Classification of Works for Registration). Artistic jewelry,enamels, glassware and tapestries, as well as works belonging to fine arts such aspaintings, drawings, and sculpture are acceptable, whether published or unpublished,insofar as their form but not their mechanical or utilitarian aspects are concerned. Whereobject is clearly work of art in itself, according to Reg. §202.10, fact that it is also usefularticle will not preclude its registration. If sole intrinsic function of article is its utility,fact that it is unique and attractively shaped will not qualify it as work of art. Regis-trability is not affected by intention as to use of work or number of copies to bereproduced.

Courts will not judge artistic merit of work to determine copyrightability. They willonly look to see if there is creative authorship.

Criteria as to Copyrightability of Slight Version of Public Domain Materials as Workof Art.—For a review of landmark cases from early to modern times, in denying plain-tiff’s motion for an injunction in connection with infringement claim on a Teddy Beardoll as a work of art, see (E.D.N.Y. 1974), 183 USPQ 642.

For current law in 2d Cir. re: need for more than unsubstantial modification of priorwork see 189 USPQ 753.

Fabrics.—The courts are sustaining copyrights of works of art as applied to fabrics andhave been granting preliminary injunction against infringement and distribution wheredesigns have been unauthorizedly copied upon other fabrics that went into articles ofclothing. (Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090).

Originality, not novelty, was the test in sustaining the ‘‘Byzantium’’ design, eventhough the same was suggested by ancient art forms. (S.D.N.Y. 1962, 207 F. Supp. 563,133 USPQ 678).

With plaintiff’s copyright design fabric before it, as well as defendant’s alleged in-fringing design, Court of Appeals felt that it was in a position to make a comparison inwhich ultimate test in case of this sort is whether an average lay observer would finda substantial similarity in designs so as to recognize copy as an appropriation of copy-righted work. Very nature of minor differences only tended to emphasize to court extentto which defendant had deliberately copied from plaintiff. With same record before it,court found that District Court in its discretion should have awarded preliminary in-junction and reversed denial thereof. (2d Cir. 1969, 409 F.2d 1315, 161 USPQ 3,reversing S.D.N.Y. 1969, 296 F. Supp. 736, 161 USPQ 31).

Embellishment or expansion of an original design ‘‘in repeat’’ so as to broaden designand thereby cover a bolt of cloth, together with beginning pattern in a particular way soas to avoid having unsightly joint when pattern is printed on textiles on a continuousbasis, constitutes modest but sufficient originality so as to support copyright. In reversingDistrict Court’s finding of no infringement, 2nd Circuit felt court below had ignored

purpose for which fabric was to be used, namely dresses, and had ignored color simi-larities observable from comparatively short distances, by concentrating on black andwhite reproductions of design itself, apart from uses to which intended. (2 Cir. 1974, 490F.2d 1092, 180 USPQ 545, rev’g S.D.N.Y. 1973, 365 F. Supp. 1199, 180 USPQ 362).

Jewelry.—Costume jewelry in the form of pair of earrings, claim to copyright in whichwas duly registered as work of art in Copyright Office, was upheld as copyrightable anddefendant found to have infringed such work. (2d Cir. 1958, 253 F.2d 948, cert. denied,357 U.S. 936). See, also, 2d Cir. 1962, 309 F.2d 745, 135 USPQ 234). Copyright Officewill reject applications for jewelry which do not show sufficient sculptural authorship.

Artificial Flowers.—Artificial lilac was upheld as copyrightable, and a preliminaryinjunction was awarded against infringement of its copyright and importation of piratedcopies from Hong Kong. (S.D.N.Y. 1962, 201 F. Supp. 287, 132 USPQ 350). Other courtshave similarly conceded possible validity of copyrights secured in ‘‘cactus dahlia’’(S.D.N.Y. 1962, 203 F. Supp. 649, 133 USPQ 75), or in sprays of boxwood and chineseasters (S.D.N.Y. 1962, 206 F. Supp. 192, 134 USPQ 70), although preliminary injunctionswere denied therein (and such denial sustained per curiam in ‘‘cactus dahlia’’ case, 2dCir. 1962, 301 F.2d 286, 133 USPQ 58), on ground that alleged similarities of defendant’sartificial flowers were not striking enough to justify finding of copying in absence ofproof of access. See also topic Importation.

Copyright Notice.—As to the quantity, nature and position of copyright notices to beattached to copyrighted works of art applied to jewelry, garments containing the fabricdesign, etc., see various subheads under topic Notice of Copyright.

WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO):See topic Foreign Rights, subhead World Intellectual Property Organization (WIPO),

supra.

WORLD TRADE ORGANIZATION (WTO):Organization formed under Gatt Treaty in 1994. Citizens of member states of WTO

are granted some rights under Berne Convention. Also such citizens have right to restorecopyright in some public domain works. See topic Restoration of Copyright.

FORMS:Complaint for Infringement of Copyright and Unfair Competition.—(Official

Form No. 17, Federal Rules of Civil Procedure, as amended in 1963). Form should bemodified to fit facts of controversy.

1. [Allegation of jurisdiction].2. Prior to March, 1936, plaintiff, who then was and ever since has been a citizen of

the U. S., created and wrote an original book, entitled . . . . . .3. This book contains a large amount of material wholly original with plaintiff and is

copyrightable subject matter under the laws of the U.S.4. Between March 2, 1936, and March 10, 1936, plaintiff complied in all respects with

the Act of (give citation) and all other laws governing copyright, and secured theexclusive rights and privileges in and to the copyright of said book, and received fromthe Register of Copyrights a certificate of registration, dated and identified as follows:‘‘March 10, 1936, Class . . . . . ., No. . . . . . .’’

5. Since March 10, 1936, said book has been published by plaintiff and all copies ofit made by plaintiff or under his authority or license have been printed, bound, andpublished in strict conformity with the provisions of the Act of . . . . . . and all otherlaws governing copyright.

6. Since March 10, 1936, plaintiff has been and still is the sole proprietor of all rights,title, and interest in and to the copyright in said book.

7. After March 10, 1936, defendant infringed said copyright by publishing and placingupon the market a book entitled . . . . . ., which was copied largely from plaintiff’scopyrighted book, entitled . . . . . . .

8. A copy of plaintiff’s copyrighted book is hereto attached as ‘‘Exhibit 1’’; and a copyof defendant’s infringing book is hereto attached as ‘‘Exhibit 2.’’

9. Plaintiff has notified defendant that defendant has infringed the copyright of plain-tiff, and defendant has continued to infringe the copyright.

10. After March 10, 1936, and continuously since about . . . . . ., defendant hasbeen publishing, selling and otherwise marketing the book entitled . . . . . ., and hasthereby been engaging in unfair trade practices and unfair competition against plaintiffto plaintiff’s irreparable damage.

Wherefore plaintiff demands:1. That defendant, his agents, and servants be enjoined during the pendency of this

action and permanently from infringing said copyright of said plaintiff in any manner,and from publishing, selling, marketing or otherwise disposing of any copies of the bookentitled . . . . . . .

2. That defendant be required to pay to plaintiff such damages as plaintiff has sus-tained in consequence of defendant’s infringement of said copyright and said unfair tradepractices and unfair competition and to account for

(a) all gains, profits and advantages derived by defendant by said trade practices andunfair competition and

(b) all gains, profits, and advantages derived by defendant by his infringement ofplaintiff’s copyright or such damages as to the court shall appear proper within theprovisions of the copyright statutes, but not less than two hundred and fifty dollars.

3. That defendant be required to deliver up to be impounded during the pendency ofthis action all copies of said book entitled . . . . . . in his possession or under his controland to deliver up for destruction all infringing copies and all plates, molds, and othermatter for making such infringing copies.

4. That defendant pay to plaintiff the costs of this action and reasonable attorney’s feesto be allowed to the plaintiff by the court.

5. That plaintiff have such other and further relief as is just.Comment on Offıcial Form of Complaint.—The foregoing form is intended primarily

as a guide for an appropriate complaint. It must necessarily be adapted to fit the particularsituation. It is not required to be followed verbatim. If injunctive relief is not desired,or would not be available, by reason of expiration of the copyright or otherwise, it is notnecessary to include allegations or prayers with reference to such relief. This is similarlyso with respect to allegations of unfair competition. The allegation of paragraph 5 is nolonger necessary because of demise of manufacturing requirement in 1986. Allegation of

WARRANTIES MARTINDALE-HUBBELL LAW DIGEST - 2007


FORMS . . . continuedjurisdiction should be to the effect that the cause or causes of action arise under Tit. 17of the U.S. Code entitled Copyrights. Rescission by U.S. Supreme Court of Rule 2 ofCopyright Rules, as of July 1, 1966, eliminates necessity of allegation No. 8 in abovesample form of copyright infringement complaint. The allegation in paragraph 9 thatplaintiff has notified defendant of the infringement and defendant has continued toinfringe, is not necessary, but would be important in recovering maximum damages.Allegation in paragraph 10 that defendant is continuing to infringe is not essential,although important if injunctive relief is sought. Defendant would nevertheless be liablefor damages or profits, as well as subject to seizure, impounding and destruction remediesin appropriate situation, if he committed single infringement which he did not continue.Pleading request for actual damages allows defendant to seek jury trial.

Complaints under Notice Pleading.—Complaint will be sustained as sufficient whereit simply alleges issuance of registration certificate, ownership of copyright by plaintiff,and that defendant is infringing copyright, without alleging ‘‘copying’’ (which is im-

plied). Litigants are not obligated to follow Form No. 17. Any further information canbe developed by discovery. (S.D.N.Y. 1970, 166 USPQ 396, [citing Judge Ryan’s ref-erence in such regard to 301 U.S. 168, 33 USPQ 247], in S.D.N.Y. 1948, 79 F. Supp.515, 516, 77 USPQ 155, 156). Adherence by U.S. to Berne Convention eliminates needto plead Certificate of Registration for non-U.S. Berne Works.

Copyright Office Application Forms.—Forms of application for registration of aclaim to copyright, either for a published or unpublished work, in the respective classesof copyright, will be supplied free. (For list of such forms, see Application for Regis-tration, supra.)

All requests for applications and information, as well as deposits and other materialfor the Copyright Office, should be addressed to ‘‘Register of Copyrights, Library ofCongress, Washington, D. C. 20559.’’

For the particular form of application used for each separate classification, see Ap-plication for Registration, supra.

UNITED STATES COPYRIGHT LAW DIGEST FORMS
