CEIPI M2 21 - US & C 2

Fairness

Intro to US IP Law - Copyright

Originality

Individualistic

Present

BUT what don't we need?

Cultural

IP Theories

Personality

Independent Creation

Creativity

• well being of society at large

• to promote a just and attractive culture

• not limited to aggregate consumer welfare measure by what consumers want

(Fall 2021)

• but identify conditions which will support widespread human flourishing

Cour de cassation [Cass.] [supreme court for judicial matters] 1e civ., Oct. 20, 2011, No. 10-21251 (Fr.) (photos);

Cour de cassation [Cass.] [supreme court for judicial matters] 1e civ., June 12, 2006, Bull. Civ. I, No. 307 (Fr.) (perfumes);

Cour de cassation [Cass] [supreme court for judicial matters] 1e civ., May 2, 1989, Bull. Civ. I, No. 180 (Fr.);

Cour de cassation [Cass.] [supreme court for judicial matters] Mar. 7, 1986, Bull. Civ. No. 3 (Fr.) (computer programs)

• University of Waikato v. Benchmarking Services Ltd. [2004] NZCA 90, [2004] 8 NZBLC 101,561 at [27] (N.Z.);
• Henkel KgaA v. Holdfast [2006] NZSC 102, [2007] 1 NZLR 577 at [37] (N.Z.)

@GCFrosio

Collectivistic

Welfare

Perspectives

(1)

Utilitarianism: rights should be crafted to provide "greatest happiness of the greatest number"

(2)

Economic Analysis of Law (increasingly influential since 1980)

(a)

welfare of society at large

(b)

law should create a system of incentives which will induce creators to create

CEIPI M2

Fixation

What is Protected?

Dichotomy Idea/Expression

17 USC 101

TRIPs Art. 9(2)

Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.

Subject Matter

Permanent

To obtain a permanent injunction, plaintiff must show

(a)

the plaintiff has suffered an irreparable injury;

(b)

monetary damages are inadequate to compensate for that injury;

(c)

the balance of hardships favors the plaintiff; and

(d)

the public interest would not be disserved by a permanent injunction

Do I have defense from liability after infringement has occurred?

Injunctions

Impoundment and Destruction

Do I have defense from liability after infringement has occurred?

Preliminary

Do I have defense from liability after infringement has occurred?

To obtain a preliminary injunction, plaintiff must show

(a)

the plaintiff is likely to suffer an irreparable injury;

(b)

monetary damages will be inadequate to compensate for that injury;

(c)

the balance of hardships favors the plaintiff;

(d)

the public interest would not be disserved by an injunction; and

(e)

likelihood of success on the merits

Do I have defense from liability after infringement has occurred?

Equitable Relief

Do I have defense from liability after infringement has occurred?

Actual Damages

Defendant's Profits

Do I have defense from liability after infringement has occurred?

Statutory Damages

Punitive Damages

Remedies

Attorney's Fee

Costs

Do I have defense from liability after infringement has occurred?

What are the remedies available if my copyright was infringed?

Damages

Do I have defense from liability after infringement has occurred?

Criminal Charges

2nd Cir. 2006

Koons

V.

Blanch

2nd Cir. 2013

Cariou

V.

Rogers

Prince

Koons

V.

Estate of Hemingway v. Random House

23 N.Y.2d 341 (1968)

Assuming, without deciding, that in a proper case a common-law copyright in certain limited kinds of spoken dialogue might be recognized, it would, at the very least, be required that the speaker indicate that he intended to mark off the utterance in question from the ordinary stream of speech, that he meant to adopt it as a unique statement and that he wished to exercise control over its publication. In the conventional common-law copyright situation, this indication is afforded by the creation of the manuscript itself. It would have to be evidenced in some other way if protection were ever to be accorded to some forms of conversational dialogue.

Novel

"Borrowed the work must indeed not be, for a plagiarist is not himself pro tanto an "author"; but if by some magic a man who had never known it were to compose anew Keats's Ode on a Grecian Urn, he would be an "author," and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats's."

"No excuse that memory played a trick"

Fisher v. Dillingham (SDNY 1924)

Nichols v. Universal (2nd Cir. 1930)

Authors Guild v. Google (2nd Cir. 2015)

Sheldon v. Metro-Goldwyn Pictures Corporation (2d Cir. 1936)

Computer Associates v Altai (2nd Cir. 1992)

(1)

Embodiment Requirement

placed in a medium such that it can be perceived reproduced, etc from that medium

(2)

Duration Requirement

it must be embodied for a period of more than a transitory duration

Remote Storage DVR

Cartoon Network v. CSC Holdings (2nd Cir. 2008)

https://cyber.harvard.edu/people/tfisher/IP/Copyright.swf

2nd Cir. 1995

[20] In our view, the underlying basketball games do not fall within the subject matter of federal copyright protection because they do not constitute "original works of authorship" under 17 U.S.C. Section 102(a).

[21] Sports events are not "authored" in any common sense of the word.

• There is, of course, at least at the professional level, considerable preparation for a game. However, the preparation is as much an expression of hope or faith as a determination of what will actually happen.
• Unlike movies, plays, television programs, or operas, athletic events are competitive and have no underlying script. Preparation may even cause mistakes to succeed, like the broken play in football that gains yardage because the opposition could not expect it.
• Athletic events may also result in wholly unanticipated occurrences, the most notable recent event being in a championship baseball game in which interference with a fly ball caused an umpire to signal erroneously a home run.

[22] What "authorship" there is in a sports event, moreover, must be open to copying by competitors if fans are to be attracted. If the inventor of the T-formation in football had been able to copyright it, the sport might have come to an end instead of prospering. Even where athletic preparation most resembles authorship - figure skating, gymnastics, and, some would uncharitably say, professional wrestling - a performer who conceives and executes a particularly graceful and difficult - or, in the case of wrestling, seemingly painful - acrobatic feat cannot copyright it without impairing the underlying competition in the future.

V.

NBA v. Motorola (2nd Cir. 1997)

Alfred Bell v. Catalda Fine Arts (2d Cir. 1951)

(1)

the plaintiffs gather information at a cost,

(2)

that the information is timesensitive,

(3)

that the use of the information by the defendant is “free-riding,”

(4)

that the defendant is offering a service in direct competition with the plaintiff’s, and

(5)

that the capacity to free ride threatens the existence of the plaintiff’s commodity.

Did I regard Thomson as my joint author?

Gilliam v. American Broadcasting Companies (2nd Cir. 1976)

Was my contribution independently copyrightable?

Banian

Thomson v. Larson (2d Cir. 1998)

Vs

Boisson

(2nd Cir. 2001)

Castle Rock Entert. v. Carol Publishing (2nd Cir. 1998)

“in the digital world copying is such an essential action, so bound up with the way computers work, that control of copying provides, in the view of some, unexpectedly broad powers, considerably beyond those intended by the copyright law.”

National Research council, The Digital Dilemma: Intellectual Property in The Information Age 140 (National Academy Press, 2000).

Capitol Records v. ReDigi (SDNY 2013)

Alexander v. Haley (SDNY 1978)

Harrison is is unaware of copying

copyright infringement can be subconscious

Innocent copying is not excuse to infringement:

"intention to infringe is not essential to the copyright act"

Why?

Strict Liability Offense

Bright Tunes v. Harrison (SDNY 1976)

Warner Bros v. RDR Books (SDNY 2008)

Mannion v Coors Brewing (SDNY 2005)

“[s]everal provisions of the Copyright Act ... persuade us against the conclusion that animals have statutory standing to sue under the Copyright Act.”

the terms “children,” “grandchildren,” “legitimate,” “widow,” and “widower” used in the Statute necessarily imply that the Copyright Act excludes animals that “do not marry and do not have heirs entitled to property by law”

“If the humans purporting to act on Plaintiff’s behalf wish for copyright to be among the areas of law where nonhuman animals have standing, they should make that dubious case to Congress – not the federal courts”

Steinberg v. Columbia Pictures (SDNY 1987

"such a high degree of control over film operations such as the final products duplicates his conception and vision of what the film should look"

Lindsay v. The Wrecked and Abandoned R.M.S. Titanic (SDNY 1999)

Let it End

9th Cir. 2003

Mattel

How Deep is Your Love

Selle v. Gibb (7th Cir. 1984)

V.

Walking Mountain Productions

Sony

9th Cir. 2000

(1) exposition to the plaintiff work

and

(2) creation of a very similar work

defendant thinks to be original

but in fact he's not

V.

Flava Works v. Gunter (7th Cir. 2012)

Three Boys Music v. Michael Bolton (9th Cir. 2000)

9th Cir. 1992

Lee v. ART (7th 1997)

17 U.S.C. 117 amended to overrule this holding

V.

MAI Systems Corp. v. Peak Computer (9th Cir. 1993)

(1) Extrinsic Test: whether two works share similar ideas and expressions as measured by external, objective criteria (listed and analyzed)

(2) Intrinsic Test: subjective comparison whether the average reasonable audience would find the "total concept and feel" of the work similar

Pickett v. Prince (7th Cir. 2000)

Walt Disney Productions v. Air Pirates (9th Cir. 1978)

Kroft v. McDonald's (Cir. 1977)

VMG Salsoul, LLC v. Ciccone (9th Cir. 2016)

Federal

State

vs

Sweat of the Brow

Chamberlain V. Skylinked (Fed. Cir. 2004)

Love Break (horn segment) v. Vogue

Secondary

Louis Brandeis

William Randolph Hearst

International News Service v. Associated Press 248 U.S. 215 (1918)

Ty v. GMA Accessories (7th Cir. 1997)

Mirage Editions v Albuquerque ART (9th Cir. 1988)

"[Perfect 10] was unlikely to succeed in its claim that Google's in-line linking to full-size infringing images constituted a direct infringement [...] Google does not, however, display a copy of full-size infringing photographic images for purposes of the Copyright Act when Google frames in-line linked images that appear on a user's computer screen. Because Google's computers do not store the photographic images, Google does not have a copy of the images for purposes of the Copyright Act. In other words, Google does not have any material objects ... in which a work is fixed ... and from which the work can be perceived, reproduced, or otherwise communicated” and thus cannot communicate a copy."

17 U.S.C. ss. 101-810

U.S. Code 301. Preemption with respect to other laws

(a)

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

(b)

Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to— (1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression;

15 U.S.C. ss. 1051 et seq.

Perfect 10, Inc. v. Amazon.com, Inc. (9th Cir. 2007)

(1)

‘The Human Authorship Requirement’

limits registration to ‘original intellectual conceptions of the author’ created by a human being.

(2)

Section 313.2

‘Works that Lack Human Authorship’

works produced by nature, animal or plants and similarly, works created by a machine or by a mechanical process without intervention from a human author are not copyrightable.

Anderson v. Stallone (C.D. Cal. 1989)

U.S. 102(b)

U.S. 107

U.S. Patent Act - 35 U.S.C. ss. 1-376

Visual Artist Rights Act 1990

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, [...] for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

17 U.S. Code 106A

Rights of certain authors to attribution and integrity

In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1)

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2)

the nature of the copyrighted work;

(3)

the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4)

the effect of the use upon the potential market for or value of the copyrighted work.

Folsom v. Marsh (CCD Mass. 1841)

vs

Star Athletica v. Varsity Brands (2017)

The United States Congress shall have power "To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes."

(Article I, Section 8, Clause 3)

The Congress shall have the power "To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

(Article I, Section 8, Clause 8)

(1)

A “useful article” is an object having an intrinsic utilitar¡an function that is not merely to portray the appearance of the article or to convey information.

(e.g. clothing, furniture, machinery, dinnerware, and lighting fixtures)

(2)

Copyright does not protect the mechanical or utilitarian aspects of such works of craftsmanship. It may, however, protect any pictorial, graphic, or sculptural authorship that can be identified separately from the utilitarian aspects of an object. Thus, a useful article may have both copyrightable and uncopyrightable features.

Common

Statutory

Bleinstain v. Donaldson (1903)

Under what circumstances aesthetic elements of "useful articles" can be protected by copyright law?

two-prong "separability" test

granting copyrightability on conditions of

(1)

separate identification

the aesthetic elements must be identifiable as art if mentally separated from the article's practical use

(2)

independent existence

the aesthetic elements must qualify as copyrightable pictorial, graphic, or sculptural works if expressed in any medium

Burrow-Giles v. Sarony (1884)

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Harper & Row v. Nation Enterprises (1985)

Lexmark Int'l

v.

Static Control

(6th Cir. 2004)

Fonovisa

The Trademark Cases

v.

(2006)

Vs

apply traditional rules of equity in determining whether to grant injunctions in patent casee

Traditional Approach in Copyright Cases

more favorable to plaintiff than the general rules

demonstration of likelihood of success on the merits gives rise to presumption of irreparable harm

Feist v Rural

(1991)

9th Cir. 1996

(1)

Patent v. Copyright

(2)

Method of Operation

(3)

Functionality

(4)

Merger

Campbell v. Acuff-Rose Music (1994)

...and, of course, in using the art, the ruled lines and headings of accounts must necessarily be used as incident to it.

Vicarious Infringement

6th Cir. 1996

Contributory Infringement

Baker v. Selden (1879)

Sony v. Universal (1984)

(1)

Prepared by

(a)

employee

(b)

in the scope of employment

V.

MGM Studios v. Grokster (2005)

(2)

9 types of commissioned works by independent contractors, when parties agree in writing

Michigan Document Services

Case law

(1)

the skill required;

(2)

the source of the instrumentalities and tools;

(3)

the location of the work;

(4)

the duration of the relationship between the parties;

(5)

whether the hiring party has the right to assign additional projects to the hired party;

(6)

the extent of the hired party's discretion over when and how long to work;

(7)

the method of payment;

(8)

the hired party's role in hiring and paying assistants;

(9)

whether the work is part of the regular business of the hiring party;

(10)

whether the hiring party is in business;

(11)

the provision of employee benefits; and

(12)

the tax treatment of the hired party

Community for Creative Non-Violence v. Reid, 490 US 730 (1989)

Agency Law

Avtec Systems, Inc. v. Peiffer (4th Cir. 1994)

(1)

it is the kind of work that the employee has been hired to perform;

(2)

the work is created substantially within the authorized work hours and space; and

(3)

creation of the work is motivated, at least in part, by a purpose to serve the employer.

Dastar v. Twentieth Century Fox (2003)

Requirements

Tort Law

• direct infringement
• financial interest in the infringement
• right or ability to supervise the direct infringement

Respondiat Superior: a branch of the law of agency that governs responsibility of employers for misconduct of employees

Who directly contributes to a tort should be held liable along with the tortfeaser himself

• direct infringement
• knowledge (actual or constructive) by the defendant
• material contribution

Golan v. Holder (2012)

In re Aimster (7th Circ. 2003)

AM Records v. Napster (9th Cir. 2001)

Disclosure

ONE-WAY Importation

Omega Watch v Costco Wholesale (9th Cir. 2008)

Droit de Suite

ONE-WAY

Importation

ROUND-TRIP Importation

Attribution

authors retain the right to control and license their works, when those works are re-compiled or re-distributed electronically in the digital environment

Kirtsaeng v. John Wiley (2013)

Quality King v. L'Anza Research Int'l (1998)

The New York Times v. Tasini (2001) 

(Freelance writers)

National Geographic v. Greenberg (2001) (Freelance photographers)

Moral Rights

Withdrawal

Integrity

Bridgeport Music v. Dimension Films (6th Cir. 2005)

“[…] the public has always had, and should have, a right to cite. Referring to a copyrighted work without authorization has been and should be legal. Referring to an infringing work is similarly legitimate […] Drawing a map showing where an infringing object may be found or dropping a footnote that cites it invades no province the copyright owner is entitled to protect even if the object is blatantly pirated from a copyrighted work. Posting a hypertext link should be no different.”

Liability

Roworth v. Wilkes,

1 Campbell 94, 98 (1807)

Is there any secondary infringer?

9(3) of the Copyright, Designs and Patents Act (CDPA)

“In the case of a literary, dramatic, musical or artistic work which is computer-generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken.”

“It wasn’t serendipitous monkey behavior, [...] It required a lot of knowledge on my behalf, a lot of perseverance, sweat and anguish, and all that stuff.”

(k) use for the purpose of caricature, parody or pastiche;

(A)

essential characteristics of parody, are,

(1)

to evoke an existing work, while being noticeably different from it, and

(2)

to constitute an expression of humour or mockery.

(3)

The concept of ‘parody’ is not subject to the conditions that the parody should display an original character of its own, other than

(a) that of displaying noticeable differences with respect to the original parodied work;

(b) that it could reasonably be attributed to a person other than the author of the original work itself;

(c) that it should relate to the original work itself or mention the source of the parodied work.

(B)

However, the application, in a particular case, of the exception for parody, must strike a fair balance between copyright and freedom of expression

(C)

This fair balance is for the national courts to determine

CJEU, 3 September 2014, Deckmyn, C-201/13

Is Article 4(1) to be interpreted as meaning that “any form of distribution to the public by sale or otherwise of the original of their works or copies thereof” as referred to therein includes the making available remotely by downloading, for use for an unlimited period, of e-books (being digital copies of books protected by copyright) at a price by means of which the copyright holder receives remuneration equivalent to the economic value of the work belonging to him?

If question 1 is to be answered in the affirmative, is the distribution right with regard to the original or copies of a work as referred to in Article 4(2) of [Directive 2001/29] exhausted in the Union, when the first sale or other transfer of that material, which includes the making available remotely by downloading, for use for an unlimited period, of e-books (being digital copies of books protected by copyright) at a price by means of which the copyright holder receives remuneration equivalent to the economic value of the work belonging to him, takes place in the European Union through the rightholder or with his consent?

"the supply of e-books by downloading online for permanent use is not covered by the distribution right within the meaning of Article 4 of that directive but is covered by the right of communication to the public within the meaning of Article 3(1) of that directive"

(29 July 2019)

C-476/17 Pelham v. Hütter

(1)

Is there an infringement of the phonogram producer’s exclusive right under Article 2(c) of Directive 2001/29 to reproduce its phonogram if very short audio snatches are taken from its phonogram and transferred to another phonogram?

(2)

Is a phonogram which contains very short audio snatches transferred from another phonogram a copy of the other phonogram within the meaning of Article 9(1)(b) of Directive 2006/115?

(3)

Can the Member States enact a provision which — in the manner of Paragraph 24(1) of [the UrhG] — inherently limits the scope of protection of the phonogram producer’s exclusive right to reproduce (Article 2(c) of Directive 2001/29) and to distribute (Article 9(1)(b) of Directive 2006/115) its phonogram in such a way that an independent work created in free use of its phonogram may be exploited without the phonogram producer’s consent?

(4)

Can it be said that a work or other subject matter is being used for quotation purposes within the meaning of Article 5(3)(d) of Directive 2001/29 if it is not evident that another person’s work or another person’s subject matter is being used?

(5)

Do the provisions of EU law on the reproduction right and the distribution right of the phonogram producer (Article 2(c) of Directive 2001/29 and Article 9(1)(b) of Directive 2006/115) and the exceptions or limitations to those rights (Article 5(2) and (3) of Directive 2001/29 and the first paragraph of Article 10(2) of Directive 2006/115) allow any latitude in terms of implementation in national law?

(6)

In what way are the fundamental rights set out in [the Charter] to be taken into account when ascertaining the scope of protection of the exclusive right of the phonogram producer to reproduce (Article 2(c) of Directive 2001/29) and to distribute (Article 9(1)(b) of Directive 2006/115) its phonogram and the scope of the exceptions or limitations to those rights (Article 5(2) and (3) of Directive 2001/29 and the first paragraph of Article 10(2) of Directive 2006/115)?

‘sampling’ constitutes a form of artistic expression which is covered by freedom of the arts, as protected in Article 13 of the Charter.

“In exercising that freedom, the user of a sound sample, when creating a new work, may decide to modify the sample taken from a phonogram to such a degree that that sample is unrecognisable to the ear in that new work.”

TITLE III

MEASURES TO IMPROVE LICENSING PRACTICES AND ENSURE WIDER ACCESS TO CONTENT

CHAPTER 1

Out-of-commerce works

Article 8

Use of out-of-commerce works by cultural heritage institutions

Member States shall provide that when a collective management organisation, on behalf of its members, concludes a non-exclusive licence for non-commercial purposes with a cultural heritage institution for the digitisation, distribution, communication to the public or making available of out-of-commerce works or other subject-matter permanently in the collection of the institution, such a non-exclusive licence may be extended or presumed to apply to rightholders of the same category as those covered by the licence who are not represented by the collective management organisation

Article 3

Text and data mining

Article 2

Ownership of economic right of the employer for software created during employment contract in the execution of employee’s duties or following employer’s instructions

DIRECTIVE 2012/28/EU

on certain permitted uses of orphan works

Mandatory Exceptions and Limitations in the DSM

Article 4

Use of works and other subject-matter in digital and cross-border teaching activities

Article 5

Preservation of cultural heritage

Digital

(1)

Functionality, programming language and data files not protected

(2)

Copying allowed for reverse engineering (study, observe, test)

Vs

(c) freedom of the press

and (d) quotation

(1)

The Federal Republic of Germany prepares a military status report every week on the deployments of the Bundeswehr (Federal armed forces, Germany) abroad and on developments at the deployment locations (known as ‘UdPs’)

(1)

Resale of user licence

(2)

Software downloaded from Internet

(3)

for unlimited time

(2)

Funke Medien obtained, by unknown means, a large proportion of the UdPs, which it published in part as the ‘Afghanistan Papiere’ (‘the Afghanistan papers’) and could be read online as individually scanned pages accompanied by an introductory note, further links and a space for comments

Copyright infringement?

(c)

reproduction by the press, communication to the public or making available of published articles on current economic, political or religious topics or of broadcast works or other subject matter of the same character, in cases where such use is not expressly reserved, and as long as the source, including the author’s name, is indicated, or use of works or other subject matter in connection with the reporting of current events, to the extent justified by the informatory purpose and as long as the source, including the author’s name, is indicated, unless this turns out to be impossible;

(d)

quotations for purposes such as criticism or review, provided that they relate to a work or other subject matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author’s name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose;

originality

vs

artistic/

aesthetic

value

Freedom of information and freedom of the press, are not capable of justifying, beyond the exceptions or limitations provided for in Article 5(2) and (3) of Directive 2001/29, a derogation from the author’s exclusive rights of reproduction and of communication to the public, referred to in Article 2(a) and Article 3(1) of that directive respectively.

In striking the balance, a national court must, having regard to all the circumstances of the case before it, rely on an interpretation of those provisions which, whilst consistent with their wording and safeguarding their effectiveness, fully adheres to the fundamental rights enshrined in the Charter of Fundamental Rights of the European Union.

G-Star Elwood

precluding

national legislation that gives an approved collecting society the right to

authorise the reproduction and communication to the public in digital form of

(1)

‘out-of-print’ books, namely, books published in France before 1 January 2001 which are no longer commercially distributed by a publisher and are not currently published in print or in digital form,

(2)

while allowing the authors of those books, or their successors in title, to oppose or put an end to that practice, on the conditions that that legislation lays down.

Nur Mir

C-128/11 (2012)

Cofemel, C-683/17

by

Moses Pelham

Sporting events cannot be regarded as intellectual creations … especially football matches, which are subject to rules of the game, leaving no room for creative freedom (Par. 98)

Marc Soulier v Premier ministre, C-301/15, 16 November 2016

Metal auf metal I-III

It is clear from Article 10(2) and (3), read together, of Directive 93/98 harmonising the term of protection of copyright and certain related rights that the Directive provides for the possibility that copyright and related rights which had expired under the applicable legislation before the date of its implementation could be revived, without prejudice to acts of exploitation performed before that date, while leaving it to the Member States to adopt measures to protect acquired rights of third parties. Such measures must be regarded as measures which the Member States are under an obligation to adopt, but the details of which are left to the discretion of the Member States, provided, however, that those details do not have the overall effect of preventing the application of the new terms of protection on the date laid down by the Directive.

Art & Allposters International BV v Stichting Pictoright, C-419/13 (2015)

In view of the foregoing, a portrait photograph can be protected by copyright if, which it is for the national court to determine in each case, such photograph is an (1) intellectual creation of the author (2) reflecting his personality and (3) expressing his free and creative choices in the production of that photograph.

(c) in respect of specific acts of reproduction made by publicly accessible libraries, educational establishments or museums, or by archives, which are not for direct or indirect economic or commercial advantage;

1.

3.

2.

(1)

As regards a portrait photograph, the photographer can make free and creative choices in several ways and at various points in its production.

(2)

In the (a) preparation phase, the photographer can choose the background, the subject’s pose and the lighting. (b) When taking a portrait photograph, he can choose the framing, the angle of view and the atmosphere created. Finally, (c) when selecting the snapshot, the photographer may choose from a variety of developing techniques the one he wishes to adopt or, where appropriate, use computer software.

(3)

By making those various choices, the author of a portrait photograph can stamp the work created with his ‘personal touch’.

(4)

Consequently, as regards a portrait photograph, the freedom available to the author to exercise his creative abilities will not necessarily be minor or even non-existent.

(1)

As regards to realistic photographs, particularly portrait photographs, copyright is liable to apply only in relation to a subject-matter, such as a photograph, which is original in the sense that it is its author’s own intellectual creation.

(2)

an intellectual creation is an author’s own if it reflects the author’s personality.

(3)

That is the case if the author was able to express his creative abilities in the production of the work by making free and creative choices

(1)

where there is a "change" to the physical medium on which the work is incorporated (e.g. from paper to canvas), the distribution right is not exhausted in respect of that second work because it is now incorporated on a different physical medium.

(2)

such a "change" to the physical medium may result in a new reproduction of the work which potentially infringes the author’s reproduction right, and thus requires a separate authorisation.

(1)

A graphic user interface is not a form of expression of a computer program within the meaning of Article 1(2) of Council Directive 91/250/EEC and cannot be protected by copyright as a computer program under that directive.

(2)

Nevertheless, such an interface can be protected by copyright as a work by Directive 2001/29/EC if that interface is its author’s own intellectual creation.

Lex Specialis

Enumerated Permissible Uses

(1)

Mandatory Exception

(3)

Voluntary exceptions both to the right of reproduction and to the right to communicate or make works available to the public

(2)

Voluntary Limitations to the Right of Reproduction

Art. 9(2)

"Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder."

Three-Step Test

What are advantages and disadvantages?

Art. 13

"It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works

(a)

in certain special cases, provided that

(b)

such reproduction does not conflict with a normal exploitation of the work and

(c)

does not unreasonably prejudice the legitimate interests of the author."

(1)

Defendant's activity must fall within one of the enumerated categories

Fair Use

Hybrid

(2)

To determine whether the activity is permissible, consider list of factors

201. Ownership of copyright

Initial Ownership

Copyright in a work protected under this title vests initially in the author or authors of the work.

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

201-204 Transfer of Ownership

The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.

What is an author?

Sole Authorship

Who owns the copyright?

Who owns the copyright?

Multiple

Authorship

Art. 11 (1)(i)

Article 5(2): [...] The enjoyment and the exercise of these rights shall not be subject to any formality

What don't we need to own a copyright?

Is it true everywhere?

Do "no formalities" still make sense?

Why drop them in the first place?

Work for hire

Fair Use

What is the extent of my rights?

Do I have defense from liability after infringement has occurred?

Exclusive

Copying

How can an infringer copy?

How can you prove copying?

Common Errors

Mechanical Reproduction

Inadvertent

Deliberate

Direct Evidence

Striking Similarity

Substantial Similarity

Probative Similarity

sufficiently striking similarity between unusual aspects of the two works

+

Similarity

Translation of the work to a different medium

+

What do you need for infringing the right of reproduction?

Copy

“Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.

Reproduction

Intelligible

Tangible

Fixed

Improper Appropriation

To "display" a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.

Character and amount of the material taken trigger copyright infringement

Comprehensive Non-literal Similarity

Fragmented Literal Similarity

Comprehensive Copying

How much similarity is necessary to trigger liability?

How do you separate protected from unprotected materials?

Taken Protected Expression

Taken Substantial (?) Portion

De Minimis Doctrine

Display

Which exclusive rights have been infringed?

Moral

Modification

Term of Protection

Communication to the Public

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 a 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, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

Distribution

a copyright owner "exhausts his exclusive statutory right to control its distribution" once he or she has sold the copyrighted item

Performance

Vs

Opposing Forces

To "perform" a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.

Rights

Why were formalities so sticky in the U.S.?