Intellectual Property

Boston College Law School

January 29, 2009

Copyright – Exclusive Rights

Transfer

• 17 U.S.C. § 201(d)– (1) The ownership of a copyright may be

transferred in whole or in part by any means of conveyance …

– (2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights …, may be transferred as provided by clause (1) and owned separately…

Termination

• Post 1978 transfers - 17 U.S.C. § 203– Can be effective during 5 year period, 35 years from

original transfer

– Notice between 2 and 10 years from effective date

• Pre 1978 transfers - 17 U.S.C. § 304(c)– Can be effective during 5 year period after expiration of

original 56 year term under 1909 Act or 75 year term under 1976 Act (general rule)

Termination

• Important Limitations– Does not apply to works for hire– Derivative work exception

• Can still continue to use derivative work under grant

• But cannot prepare new works

Rights of Copyright Owners

• 17 U.S.C. §106– “Subject to sections 107 through 122, the owner of

the copyright … has the exclusive rights to do and to authorize any of the following:

• (1) to reproduce the copyrighted work …

• (2) to prepare derivative works …

• (3) to distribute copies … to the public …

• (4) … to perform the copyrighted work publicly …

• (5) … to display the copyrighted work publicly …

• (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission

Right to Reproduce

• Elements of infringement action– (1) Actual copying

• Independent creation is not infringing

• Factual issue for the jury

– (2) Improper appropriation• Perspective is the ordinary observer

• Did the copier copy “too much”?

Bright Tunes v. Harrisongs

Arnstein v. Porter

Access

Similarity

Actual Copying

Jury

No Jury

Striking Similarity

No Similarity

Arnstein

Webber

BeeGeesHarrison

Actual Copying

• Methods of proof– Direct evidence

– Circumstantial evidence• (1) Access

• (2) Similarity

• Procedural issues– Issue of fact: for the jury

– Expert testimony is often permitted

– Reviewed on appeal for clear error

Improper Appropriation

• Improper Appropriation– Standard: “substantial similarity”– Perspective: intended audience

• Types of cases– Fragmented literal similarity

• Literal copying of portions of original

– Comprehensive nonliteral similarity• Non-literal copying of ideas, structure, plot,

characters, etc.

Nichols v. Universal

• “Upon any work, … a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.

• “The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas,’ to which, apart from their expression, his property is never extended.

• “Nobody has ever been able to fix that boundary, and nobody ever can.”

Abstractions Test

Idea

Plot Outline

Subplots, Characters

Specific Scenes

Text

Not Protected

Protected

Nichols v. Universal

Idea

Plot Outline

Subplots, Characters

Scenes

Text

Abie’s Irish Rose The Cohens and the Kellys

No copying

No copying ofprotectible material

Not protectible

Shakespeare v. Laurents

Idea

Plot Outline

Subplots, Characters

Scenes

Text

Romeo & Juliet West Side Story?

Improper Appropriation

• Substantive issues– Standard is “substantial similarity”

– Both quantitative and qualitative

– Generally look to “ordinary observer”• Sometimes modify if intended for a specialized market

• Procedural issues– Issue of fact: for the jury

– Expert testimony generally not permitted

– Reviewed on appeal for clear error

Steinberg v. Columbia

Infringing?

Copyrighting Styles

Sampling

Statutory Limits

• Statutory limits on reproduction right– Public library exceptions– Broadcast exceptions– Compulsory licensing for musical works– Audio Home Recording Act– Fair Use

Derivative Work Right• 17 U.S.C. §106

– “Subject to sections 107 through 122, the owner of the copyright … has the exclusive rights to do and to authorize any of the following: …

• (2) to prepare derivative works based upon the original.”

• 17 U.S.C. §101– “A ‘derivative work’ is a work based upon one or more

preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version … or any other form in which a work may be recast, transformed, or adapted.”

Derivative Work Right

Anderson v. Stallone

Anderson v. Stallone

• 17 U.S.C. §103– (a) The subject matter of copyright as specified

by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which the material has been used unlawfully.

Why derivative work right?• Arguments in support

– Author created something of value; reward– Additional incentive for creating initial work– Provide for orderly exploitation of work– Preserve integrity of the work

• Arguments against– Gives too much control over downstream creativity– Hinders development of follow-on works– Existing incentives sufficient – No need for orderly exploitation

Public Distribution

• 17 U.S.C. §106– “Subject to sections 107 through 122, the owner of the

copyright … has the exclusive rights to do and to authorize any of the following:…

• (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending ...

First Sale Doctrine

• 17 U.S.C. §109– “(a) Notwithstanding the provisions of section 106(3),

the owner of a particular copy or phonorecord lawfully made under this title … is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.”

– Exceptions

• Recorded music rental

• Software rental

Public Distribution

• Proposals to limit first sale– Royalties for library lending– Royalties for video rentals– Royalties for CD re-sales– Royalties for textbook re-sales

Public Performance

• 17 U.S.C. §106– “Subject to sections 107 through 122, the owner of the

copyright … has the exclusive rights to do and to authorize any of the following:…

• (4) … to perform the copyrighted work publicly …”

– Sound recordings are excluded• No general public performance right

• But digital public performance right in 106(6)

Public Performance• 17 U.S.C. §101

– “To ‘perform’ a work means to recite, render, play, dance, or act it, either directly or by means of any device or process …”

– “To perform or display a work ‘publicly’ means -• (1) to perform or display it at a place open to the public or at any

place where a substantial number of persons outside of a normal circle of family and its social acquaintances is gathered; or

• (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process …”

Public Performance• Examples

– Live performance• Place open to public

– Showing a movie in a movie theater

– Performing a play on Broadway

• Substantial number of people outside normal circle– Performing play in a church or private club

– Performing music at a private dance club

– Transmission• Television broadcast• Radio broadcast of music• Reception of television in a public place (e.g. sports bar)

Public Performance

• 17 U.S.C. §110 Exclusions– (1) Face-to-face teaching activities

– (2) Instructional broadcasting

– (3) Religious services

– (4) Performances of music with no commercial advantage

– (5) Mere reception of broadcast in public

– (6) Agricultural fairs

– (7) In connection with sale of records or sheet music

– (8) Noncommercial broadcasts to deaf and blind

– (9) Certain charitable performances

Public Performance

• Compulsory licenses– Cable retransmissions of broadcast t.v.– Satellite retransmissions of broadcast t.v.– Jukebox performances of musical works– Digital performances of sound recordings

Collective Rights Organizations

• ASCAP, BMI, etc.– Given authority to license public perf. rights– Provide blanket licenses to users– Enforce licensing requirements– Distribute revenues to copyright owners

Sample Licenses

Public Display

• 17 U.S.C. §106– “Subject to sections 107 through 122, the owner of the copyright

… has the exclusive rights to do and to authorize any of the following:…

• (5) … to display the copyrighted work publicly …”

• 17 U.S.C. §109(c)– “Notwithstanding the provisions of section 106(5), the owner of a

particular copy lawfully made … is entitled … to display that copy publicly … to viewers present at the place where the copy is located.”

Moral Rights

• Berne Convention Article 6bis• Berne Convention Implementation Act (1988)• Visual Artists Rights Act (1990)

Visual Artists Rights Act

• 17 U.S.C. §101– A “work of visual art” is -

• (1) a painting, drawing, print, or sculpture, existing in a single copy [or] in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author … or

• (2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author ...

Visual Art

Visual Artists Rights Act

• 17 U.S.C. §106A:– (a) Subject to section 107 …, the author of a work of

visual art -• (1) shall have the right -

– (A) to claim authorship of that work, and

– (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create;

• (2) shall have the right to prevent the use of his or her name as the author of a work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation

Visual Artists Rights Act

• 17 U.S.C. §106A:– (a) Subject to section 107 …, the author of a work of

visual art -• ...

• (3) … shall have the right– (A) to prevent any intentional distortion, mutilation, or other

modification of that work which would be prejudicial to his or her honor or reputation … ; and

– (B) to prevent any destruction of a work of recognized stature ...

Visual Artists Rights Act

• Additional details– Right attaches regardless of ownership of

copyright or the actual copies– Can be waived, but only in a signed writing– Duration is generally life of the artist– Violation leads to an action for infringement

Administrative

• Next Assignment– Read II.F – Fair Use