I will focus on the basic concepts that form the foundation of U.S. Copyright law. It is my plan to present some practical aspects of the law in terms that are understandable and useful to all of you.
The Copyright laws provide the basis for the monopoly right a creator of work has in his or her creation. Those rights are not really interesting unless we talk about how to apply those rights in the real world and possibly make money from them. This discussion might swerve into contract law. Don’t be frightened; I know what I’m doing. Finally, I encourage you to ask questions as the questions arise.
You may recall that well known line from Shakespeare’s Henry the VI “first thing we do is kill all the lawyers...” You may not recall its context. It rises out of a conversation on Blackheath of guilds people. The guilds people are conspiring against the government and commiserating about their position.
The line following line about killing the lawyers refers to a bad contract one of them signed …“Some say the bee stings, but I say it’s the bee's wax, for I did but once sign to such a thing and have not been my own man since.”
CAVEAT: This presentation is an introduction into the complex area of copyright law. It is not possible in the brief time allotted to explore in depth the subtleties and fine points of copyright law. That task in best left to the attorneys practicing in this area. Anyone with a potential copyright problem or question should consult a legal specialist.
I BEGIN WITH A HISTORICAL REFERENCE: I do this to illustrate that the copyright law is an “organic” body of law. It changes with the times frequently to reflect the issues raised by new technology.
The roots of copyright developed in England with the printing press. Within a decade after William Caxton founded his press at Westminster in 1476, the Crown sought to control the new art through royal grants of patents for printing. In 1557, control was largely transferred to the printers themselves with the formation of the Stationers’ Company to prosecute printers who published seditious matter or who infringed other’s licensed works. Through a series of Star Chamber decrees, royal proclamations, legislation censorship, and the regulation of piracy became inseparable.
As censorship declined at the end of the seventeen-century, the Stationers petitioned parliament for aid. The response was the Statute of Anne, 8 Ann. C.19 (1709) the first English copyright law. The writer Jonathan Swift promoted the English law - the intent was to grant the artist the monopoly right to profit from his work, it was called the Statute of Anne. The statute of Anne states, in essence, and using very old terminology... to Every Cow its Calf. The Statute of Anne was written in response to an invention which represented a threat to writers and the control they could exercise over their works. The easier it was to print and market books the less likely the authors were to see any of the profit from the sales. The American copyright laws themselves are inherited from English Law.
That concept was incorporated in the Constitution of the United States. It is one of the few rights granted to individual citizens in the Constitution. It is found under Article III § 8. "...to secure for limited times, to Authors ... the exclusive Right to their respective Writings ... to promote the progress of [the] useful Arts."
The US copyright laws themselves came into being when Noah Webster, a writer and lawyer who supplemented his income by creating readers lobbied his associates in Congress to create the laws in 1790. On May 2, 1783, the Continental Congress passed a resolution urging: "the several states… to secure to the authors or publishers of any new books … the copy right of such books." At that time the Copyright Laws protected only charts, maps and of course readers (books). This initial period of protection lasted only 14 years.
The Copyright law has since been revised several times and is continually being reexamined. There is a remarkable coincidence between historic events and the changes in the law. Some have suggested that the changes are market driven. In Act of 1802, and the printing presses were rolling the law added prints to the list of protectable expression, in the Act of 1831 musical compositions, as traveling theater troupes became popular, as Brady took his camera onto the Civil War battlefields, the newspaper with photographs sold better than those that did not and in the Act 1865 photographs and negatives were added. Paintings, drawings and statuary were added in 1870 and motion picture were added in the Act of 1912 sound recordings were added in 1971. The Copyright Act remains wedded to the expansion of technology.
In 1870, the copyright office became part of the Library of Congress. The law was amended until it was rewritten in 1909. The 1909 law remained in force 68 years. Under that law, the maximum period of protection was 56 years. Two twenty-eight year terms requires a renewal. Some of the work you may be interested in may have been created under that law. Most recently, the law was revised 1978 and amended in 1998. Now an artist has protection for life plus 70 years.
Before we jump into copyright first a word from two related but different types of intellectual property. Basic Distinguishing Features of Copyright, Trademark and Patent Protection:
a) Copyright: The Copyright Office is part of the Library of Congress. The purpose of the copyright law is to encourage artistic creation and to enable the creators of artistic works to profit from those works. Prohibiting the unauthorized copying or use of the works of another provides the protection. Since 1998 copyright protection has been extended and lasts for the life of the author plus seventy years. By using that language it was the intent of Congress to create property the useful life would exceed the life of the author, it could be inherited.
The requirements for getting copyright protection include original works of authorship, which have been fixed in any tangible medium of expression.
The logo for the copyright office is a pen being lifted off the page. It symbolizes the moment when the copyright attaches... when the pen leaves the paper.
The Copyright Office is under the jurisdiction of the Library of Congress. Patent and Trademark are under the Department of Commerce. From this, you might assert some differences in the type of protection.
b) Trademark: Trademarks like Patents are regulated by the Department of Commerce. The purpose of the trademark laws is unlike the purposes of the patent and copyright laws. The trademark laws protect distinguishing marks, words, symbols, names, distinctive packaging and devices adopted and used by a manufacturer or merchant to identify the source of his goods or services and distinguish them from those of others. Consider the Nike “swoosh” the Coca-Cola “wave”. The trademark laws to protect the public from being confused about the source of goods and services offered in the marketplace. Trademark protection has the potential of lasting indefinitely and is acquired through adoption and use of the intended trademark.
c) Patents: The purpose of the patent laws are several and include an incentive to invent, the promotion of investment in new inventions, an incentive to disclose and disseminate new technology and to facilitate the sale and transfer of technology. To that end, a Patent application must describe in detail the subject of the patent. Patent protection extends to certain statutory classes of new and useful inventions, which are non‑obvious representing an advance over the prior art. Patents last for as long as twenty years. (GATT)
- Reprise: a copyright permits the copyright owner to exclude others from copying the copyrighted material; a trademark owner has the right to exclude others from using a confusingly similar trademark in commerce; and a patent owner has the right to exclude others from making, using or selling the invention covered by the patent anywhere in the United States.
1. WHAT IS A COPYRIGHT?
The right granted to creators of artistic works to prevent others from using or copying those works without the copyright owner's permission.
- Subject matter of Copyright: U.S.C.A. Title 17 §101 states... “copyright protection subsists ... in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated ...”
The key requirements are originality and fixation.
Originality means that the particular work is not copied and it owes its origin to the author, and means little more than a prohibition of actual copying. Artistic merit plays little role. Consider: the facts of the Case Mitchell Brothers Film Group v. Cinema Adult Theater (Cinema 69)(1979) The Film: Behind the Green Door.
The issue was, can an infringer copy work and profit with impunity relying on the belief that the work is an obscene work and as such would not be eligible for copyright protection? No. Today we are talking about copyright. I should also remind you that the standard of originality is a legal not aesthetic, its purpose is to prevent overlapping claim. Of course just because a work can be copyrighted doesn't change the any local or state rules against protecting obscene works. State law covers pornography. This copyright concept is complex enough wait until we discuss derivative works. However, I do not want to spoil the surprise.
Consider also Justice Holmes opinion in the 1903 case Bleistein v. Donaldson Lithograph warning against using aesthetic criteria in a legal question. Which amounts to, as the court so eloquently put it “the policy judgment that encourages the production of wheat also requires the protection of a good deal of chaff”?
- Fixation means that the embodiment of a work in a copy must be sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated by more than transitory duration. Examples of fixation: handwriting, tape recording, stored on a computer floppy disk, sculptures, and photograph. Recall the “I have a dream” speech.
The estate of Martin Luther King, Jr. had brought a copyright infringement suit against CBS for its use of about 60% of King's famous "I have a dream" speech, which he delivered 35 years ago on August 28, 1963 in front of the Lincoln Memorial during the march on Washington. King registered the text of the speech for copyright shortly thereafter and his estate renewed the copyright after his death. CBS used parts of the speech in a documentary it had produced.
The court granted CBS' motion for summary judgment. The court found that under the 1909 Copyright Act (which governed the claims in the case because the speech was created before the enactment of the 1976 Copyright Act), the speech was in the public domain because King had "published" the speech for copyright purposes without a notice of copyright, which under the 1909 Act meant that the work was injected into the public domain. The court noted that advance text of the speech was widely disseminated to the press by King, but without any copyright notice. The court also found that the performance of the speech was under the circumstances a general publication without notice, thereby depriving it of copyright protection. The later court expressly disagreed with the result in a suit King filed in 1963 in federal court in New York in which he was granted an injunction against unauthorized recordings of his speech. Copyright protects the expression of an idea, NOT the idea itself.
2. WHAT IS COPYRIGHTABLE?
Works of authorship that can be copyrightable include the following groups:
- Literary works defined as works expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material object in which they are embodied. “Literary” merit is not required.
- Musical works including any accompanying words.
- Dramatic works including any accompanying music.
- Pantomimes and choreographic works.
- Pictorial, graphic and sculptural works, including two and three-dimensional works of fine, graphic, and applied art, photographs, prints, charts, technical drawings, etc.
- Motion pictures and other audio‑visual works.
- Sound recordings.
- Compilations ‑ a compilation is a work formed by the collection and assembling of pre‑existing materials that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.
Work based on Copyrightable Work also Copyrightable
Derivative works: In copyright a derivative work is simply a work based to some degree upon one or more pre‑existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, etc. Derivative works must be identified as such on the copyright registration form.
1) Consider: the case, Morita v. Omni Magazine, a 1990 New York case. The artist commissioned the manufacture of a sculpted dove. The sculpture consisted of several pieces which when viewed together was an image of a broken dove. The arrangement of the pieces, the photograph and the final print was registered but when it came to question of Derivative Work the artist entered N/A.
2) The photographer sold one of the “out takes” to OMNI magazine to be included in an article. In this particular case because it was always the intention of all of the parties that is was Morita's work the court allowed a corrected (amended) registration to take place of the poster and the underlying sculpture from which it was derived. The photographers’ rights do not exist exclusive of the artist’s rights in the image.
3. WHAT IS NOT COPYRIGHTABLE?
Useful Articles - The design of a useful article is considered a pictorial, graphic or sculptural work in which a copyright can exist ONLY if the design incorporates pictorial graphic or sculptural features that can be identified separately and can exist independently from the utilitarian aspects. Consider: Mazer v. Stein (1950's) where the court decided the utility of the lamp base could exist separately from the sculptural aspects. A stylized and decorative bust (African Head)
4. WHAT ARE THE STATUTORY EXCLUSIVE RIGHTS?
Section 106 of the Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:
- right to reproduce Consider: the Banana Republic case, the safari apparel store, which originated in California. They had contracted with a sculptor to make zebra sculptures for the walls of their stores. When they wanted more but the sculptor's price was too high. Banana went elsewhere and sculptor tried to sue for infringement. If there is no copying, the Court ruled that one could not own the rights to a Zebra.
- right to perform and perhaps within the scope of the license and thereby not to have work altered; Consider: Gilliam v. Time-Life. The license to Time Life permitted a derivative work, which included commercials and adjustment for US government regulation. However, Defendant wanted to excerpt the 90-minute episodes to fit the 60-minute US format. In an opinion, which sounded, a lot like moral rights the Court ruled for Gilliam ( Monty Python fan?) Strict license interpretation.
- right to attribution: Consider also: Lahnam Act - misrepresentation and false designation of origin. Giesel v. Poynter. Dr. Suess product obtained by a license purchased from the publisher of the early work. Sadly, the successor to the license could make the toys because Suess did not “reserve any rights” when assigning the copyright. However, the inheritor of the rights could not use the Dr. Suess name on later produced toys. Cannot attribute what the artist did not create. Public is entitled to proper attribution.
- right to control performance: in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audio‑visual works, to perform the copyrighted work publicly; Case: 20th Century v. Aiken - music in a chicken fast food stand ... was the music available for the employees or was it apart of the business for the patrons, see also the Springsteen case. Suing the miniature golf course for playing the radio over the loudspeaker system.
- right to display: in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audio‑visual work, to display the copyrighted work publicly.
These above‑listed “bundle of rights” enumerate what it is that a copyright owner can prevent ‑‑ or authorize ‑‑ another from doing with the copyrighted material. Consider that Peggy Lee received $3,200 for her initial work (she wrote the song as well as performed it) on Lady and the Tramp. Forty years later she received $3.2 million from the videotape royalties, which were not limited by or to the original agreement.
Current interesting issue: The Wind Done Gone - derivative work or fair use?
5. WHAT IS THE DURATION OF COPYRIGHT PROTECTION?
Under the current law copyright protection begins with the creation of the work and lasts for the life of the author plus seventy years (Sonny Bono Extension) , unless the work is anonymous, pseudonymous, or a work for hire, in which copyright protection endures for ninety‑five years from the date of first publication or one hundred years from creation, whichever expires first.
Consider that before 1978 copyright protection lasted for 28 years with the option for another 28-year renewal. The first copyright's (1909) had a 14 year duration. There were many adjustments to the registrations in the sixties and seventies until the law was revised in 1978.
6. WHO OWNS THE COPYRIGHT?
Unless the work is a work for hire, the copyright vests in the author or authors of the work. Is the Artist an Employee or an Independent Contractor?
Co‑ownership: If two or more authors prepare a work with the intention that their contributions merge into inseparable or interdependent parts of a unitary whole, they have prepared a joint work, and are co‑owners of the copyright. As joint owners, they share equally in the ownership of the copyright in the joint work, even if their contributions to the work were not equal. Any joint owner may exploit the work himself, or grant a non‑exclusive license to third parties. However, the joint owner must account to other joint owners for his profits from the use of the work.
Works for Hire: A work for hire is a work prepared by an employee within the scope of his or her employment. In some states, this is taken very seriously. In California, I hear employers are asked to provide proof of employee status; this might include keeping tax records, a parking space, use your imagination. When the IRS investigates someone for failure to pay self-employment tax the first stem is the completion of the IRS form SS-8. From the answers supplied, the IRS determines if the individual situation bears further investigation. Those questions can prove some guidelines about the specific issues, which are considered.. Work for hire is only applicable in the following circumstances.
Under the definitions section of the copyright law a “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterworlds, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
The leading case has become commonly known by the as the Reid case. CCNV v. Reid (1989) . The Center for Creative Non Violence (CCNV), a non-profit homeless advocacy group and an artist.
The facts involved a commissioned sculpture, which was to be shown at the Reagan White House 1985 Christmas pageant. The theme was and Still There is No Room at the Inn” and the image was that of a homeless family standing over a heating grate. CCNV was to engineer and prepare the storm grate. CCNV worked closely with Reid in choosing the models, the poses and where the models would be placed. Did CCNV create the wax (actually Design Cast 62)
The story goes that CCNV wanted to display the sculpture around the country to raise money to cast it into bronze. The artist said that he had the copyright and there was to be no display after the holiday event. The Supreme Court told the both of them that the Laws of Agency would decide the ownership of the copyright.
The agency laws cover the situation when a person is authorized by another to act for him, to be entrusted with another’s business. A business representative.
The standards can be distilled to the following list: If the artists is working on a contract basis not under the direct supervision and employ of the employer then the artists and not the employer owns the copyright. There are however, exceptions toms this general rule.
Agency laws talk about the amount and type of control one person has to have over another before courts will considered than acting for the principal and not for themselves. The Supreme Court directed the lower court to figure out who owned what percentage of sculpture. The bad news for the artists is there may be cases where an artist may be presumed to be a partner with the person you have just sued. Neither of you would own the artwork.
To determine whether or not there really was a work for hire the courts have considered the manner of payment, amount of control, payment of taxes, structure of payments, who provided the materials, relationship of parties, number of meetings, type and quality of the work, the nature of the work, etc.
Warning: Watch yourself with a work specially ordered or commissions. Although you may assume this is not a work for hire, not produced by an employee. A work for hire can also be a contribution to a collective work, part of a motion picture, a translation, a supplementary work, an instructional text, a test, answer material for a test, or an atlas, and then only if the parties expressly agree in writing that the work shall be considered work for hire. A joint ownership is also a possibility. Are you confused? If so, be careful.
- Copyright of a work for hire vests in the owner or the person for whom the work was prepared unless the parties have expressly agreed otherwise in writing.
7. TRANSFERS AND LICENSING OF OWNERSHIP
The copyright owner may transfer the entire copyright, or may license any one or more of the exclusive rights contained in the owner's bundle of “rights” which make up the copyright.
A transfer of ownership of copyright must be in writing and signed by the owner of the copyright. (An oral agreement followed up with a confirming writing, which is not disputed, is also sufficient.) Licenses need not be in writing. (see Gracen v. Bradford Exchange. Gracen was an employee of Bradford and a talented artist.)
FACTS: The company had a contest re: the Wizard of Oz Commemorative Plate. Gracen won the contest but objected to Bradford putting the design into commercial production. Gracen sued for infringement of her design. The case was decided on the fact that Gracen only had the license to use the Wizard of Oz theme in here submission to the design contest. She had no copyrightable interest exclusive of the license that Bradford had to produce the plate.) Rule: A license is less than a transfer is. It implies something left.
Since 1989, the Oregon law requires a writing signed by the artists or the transfer is not effective.
Licenses may and transfers of copyrights must be recorded with the copyright office. Recording of a transfer of rights in a registered work gives constructive notice about the transfer. Notice of an existing transfer gives priority over other conflicting transfers.
Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object does not itself convey any rights in the copyrighted work embodied in the object; nor, without an agreement, does the transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object. Oregon Law is specific on this point. It states clearly that the sale of a work is merely that and not a transfer of a copyright.
By the way after 35 years, the author has the option to force the transfer to be reconveyed by recording the proper form within a narrow window of time.
8. HOW DOES ONE OBTAIN COPYRIGHT PROTECTION?
Maybe you have heard about the Berne Convention. It is old news now. It was big news in 1989. It is an international convention of copyright law. For our purposes, it says that a creator of protectable work does not have to do anything to get copyright protection under the convention.
Under the Berne Convention, you, as the artist, do not have to do anything to secure your rights. However, you will not be able to take advantage of the full power and extent of the U.S. Copyright law if you do nothing. The full protection is available only if you add the proper notice and register your copyright.
- Form of Notice: Notice, consisting of the following three elements, must be affixed to copies in such a manner and location as to give reasonable notice of the claim of copyright.1. The symbol © the word “copyright” or the abbreviation “copr,” unless the work is a sound recording, in which case only the symbol ® may is used. For recordings, we use the form SR while the transcription of music uses form PA.
2. The year of the first publication of the work.
3. The name of the owner of the copyright, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.
- Notice: Whenever the work is first published it should bear the proper notice of copyright. The purpose of this is to give notice to the public that copyright law protects the work. It also lets the world know that there is someone out there that considers this work his or her property. It also acts as a form of advertising for you.
- To obtain statutory copyright protection for a work, upon publication, it must bear the proper copyright notice.
- Omission of Notice ‑ Since 1989 publication of a copyrighted work without notice does not destroy the copyright and does not inject the work into the public domain unless the notice has been omitted from no more than a relatively small number of copies, or copyright for the work was registered before or within five years after publication without notice and reasonable effort is made to add the notice to all copies distributed to the public .
- All rights reserved is required for protection under “Other international copyright convention” South American, Buenos Aires
- Publication ‑ publication” is the distribution of copies or phono records of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies of phono records to a group of persons for further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication. Consider: Dr. King's ”I have a Dream” speech, which was not distributed in writing until after it was delivered. Consider the Internet being about to deliver a million copies at the push of a button.
A copyright may, but need not, be registered with the copyright office. Registration is required before a copyright infringement action can be filed. Proper registration will add presumption of damages and reimbursement of attorney fees of the infringed party..
Procedure for Registration ‑ A copyright is registered by completing an application form (see appendix for sample form), paying the $30.00 fee, and depositing two copies of the work with the copyright office. At one time, the copyright office required actual copies of a reproduced sculpture but the law was quickly changed when they filled a warehouse with concrete birdbaths.
Advantages of Registration ‑ although registration is not necessary in order for a work to enjoy copyright protection, it does confer several advantages.
1. If an infringement occurs after a work has been registered, the copyright owner can recover statutory damages and attorney's fees.
2. The registration is prima facie evidence of the validity of the copyright if it is registered within five years after first publication of the work.
3. Registration is necessary before recording a transfer. (constructive notice)
4. Registration is a prerequisite to bringing an infringement action. Must be within 3 months of publication.
Consider: Lish v. Harpers (1993) 807 F. Supp 1090. As an introduction to his college course Professor Lish sent a letter to students in his writing class. The letter was sent to Harpers Magazine, which in turn printed it. Lish sued for infringement and court found that, one, the letter had no real marketability and that claims that attributed to his name an edited version of the letter constituted defamation were false and thus awarded only fees.(actual damages) which were minimal ( no attorney fees were awarded either because the registration was not timely)
10. COPYRIGHT INFRINGEMENT
Infringement is defined as a violation of any of the exclusive “bundle of rights” conferred on the copyright owner. Once access is established the copying can be as little as one word. The leading case is Life Music v. Wonderful Music the word was supercalifragilisticespialidocious. Remember to win the case you must have both copying and access. Access must be proved, it is not presumed by the similarity. Consider the Pepsi case. The fact that a New York City minor DJ was using the broadcast jingle “You’ve got the Right One Baby”, was not sufficient to prove that someone else had been using the broadcast the jingle. They could not prove that Pepsi (their agency) had actual access to the jingle. Therefore, the case failed.
Once access is found a copy of a work is an infringement if it is “substantially similar” to the copyrighted work. Sometimes the court uses the lesser strikingly similar standard. Sid and Marty Krofft v. McDonald. Was Mayor McCheese too much like PuffinStuff. Substantially or strikingly?
Defenses to Infringement:
1. The copyrighted work was not copied. Rather the allegedly infringing work, even if identical to the copyrighted work, was independently created. Of course, this is often extremely difficult to prove.
2. Fair Use ‑ The “Fair Use” of a copyrighted work is not an infringement. “Fair Use” is a flexible term and is evaluated on a case by case basis. The term is not well defined in the copyright statute, but the statute does set forth several factors to be considered in determining whether a particular use is a fair use.
- The purpose and character of the use, including whether the use is of a commercial nature or is for nonprofit educational uses. In addition, the statute suggests that use of a work for criticism, comment, news reporting, teaching, scholarship, or research is a fair use.
- The nature of the copyrighted work. What was the work book, movie, song
- The amount and substantiality of the portion used in relation to the copyrighted work as a whole.
- The effect of the use upon the potential market for value of the copyrighted work.
The case law does not base the determination of fair use on profits alone - in Williams & Wilkins v. U.S., 420 U.S. 376 (1975) the publisher of medical journals sued the NIH and National Library of Medicine for copying articles and distributing the individual journal articles to interested third parties. The court’s decision to rule for the libraries stemmed more from the concern that medical research could be adversely effected by any restrain on the libraries ability to copy then any lost market for the work.
In Basic Books v. Kinko's Graphic Corp., 758 F. Supp. 1535 (S.D.N.Y. 1991) where Basic Books won the infringement action against Kinko's had sold excerpts from books and even though it was for university courses Kinko’s lost. In considering the “fair use”, standards the court determined that Kinko’s copying exceeded limitations of fair use for scholarly efforts by exceeding the limits of “brevity, spontaneity and cumulative effect”.
In Harper & Row Publishers v. Nation Enterprises, 723 F.2d 195 (2d Cir 1983), rev’d on other grounds, 471 U.S. 539 (1985) The Gerald Ford Presidential Memoirs case where the magazine excerpted too much of the book in a review of the book. The court ruled that was not fair use focusing on the amount of the work taken and the effect on the potential market. The amount was 300 out of 200,000 words but it was the entire part about Nixon’s pardon. Its not about size.
In Time, Inc. v. Bernard Geis Associates, 293 F. Supp. 130 (S.D.N.Y. 1968) the court ruled that the Zapruder film, even taken in its entirety was fair use. The court emphasized what was taken and that the effect on the potential market was minimal because the film was already widely displayed.
In American Geophysical v. Texaco, 37 F.3d 881 (2d Cir.1994) the publisher of the Journal of Catalysis sued Texaco. Texaco’s engineers were in the practice of making copying of Journal article and distributing them throughout the corporation’s research departments. Texaco had three subscriptions and eight readers. Even with such small number the court ruled for the Journal because “the copyright owner is not required to demonstrate that it has been reduced to poverty by the defendant’s copying.”
Consider: The 1992 case Rogers v. Koons. Jim Scanlon commissioned Art Rogers to photograph his eight new German shepherd puppies. Scanlon purchased copies of the prints for $200. Rogers retained the right to make further prints of the photograph and in fact made note cards which were distributed through the museum collection.
Mr. Koons picked up one, tore off the back section which held the copyright notice and sent it to his “factory” in Italy with notes indicating that he wanted this and that in his sculpture “just like” the photograph. Mr. Koons was to use the sculpture in his upcoming banality show at a gallery in New York. Held for Rogers. ( Sculptures sold for $125,000. Rogers got several hundred thousand dollars and the artist's copy of the sculpture.)
You might ask: Should the courts and LAWYERS be deciding the validity of movements in ART? Is there a first amendment issue here? On the other hand, did the court do the right thing in Koons?
Like the Kinko's case Basic Books v. Kinko's where Basic Books won the infringement action because Kinko's sold excerpts from books although it was for university courses. They sold too many copies, the copying exceeded limitations of fair use for scholarly efforts
See also Krofft v. McDonalds Corporation. Mayor McCheese looked too much like PuffinStuff. Mayor McCheese’s village looked too much like PuffinStuff’s island. MacDonald Corporation paid over $1,000,000 to settle the lawsuit. The advertising campaign was a good one.
But Consider: Consumers Union of the United States v. General Signal Corp 724 F2d 1044 (1983) advertising disclosing Consumers reports’ recommendation of “best buy” was fair use. And Consider Warner Brothers v. American Broadcasting Company 720 F2d 231 (1980) television series parodying Superman was fair use.
How much weight does the court give that “effect on the market” is it that Koons and Kinko's were too greedy. How does that square off with the following:
Consider: Recent case in this area which garnered some attention was the case Campbell v. Acuff-Rose Music, ____ U.S. ___,114 S. Ct. 1164 (1994). Acuff- Rose acquired the rights to the Roy Orbison song “Pretty Woman”. Luther Campbell is the lead singer in the hip-hop (Rap) band 2 Live Crew. 2 Live Crew recorded what was determined by the courts to be a parody of the Orbison song.
The Supreme Court, in a decision written by Justice Souter, determined that the 2 Live Crew version was a parody, and transformative of the original work, relying on the interpretation of what was taken. Additionally, although Campbell used substantially all of the song the effect on the market for the original was minimal. “Fair use sheep as opposed to infringing goats.”
The issue was whether the parody of the song and the reference to a pretty ugly woman is fair use. Let’s compare the issue and the test.? The court test included the concept of “transformative”.
Fair use Sheep v. Infringing Goats. Did the satirist take more than the essence of the work? The rule of thumb seems to be that the parody to succeed must be transformative of the original work and not merely using the original work as a vehicle to poke fun. Hence in the Dr Suess case the use of “Cat in the Hat” to make fun of the O.J. trial was not ruled to be a parody.
3. Satire: Mad magazine Parodies of Berlin songs. Berlin v. E.C. Publications 329 F.2d 822 (1964) and Saturday Night Live parody of “I Love New York (Sodom)” (Elsmere Music v. National Broadcasting Company 623 F2d 252 (1980) fair use.
4. Commentary, First Amendment issues, “NEWS” issues. Well established that newsworthiness falls into the fair use exception.
5. Educator Exemption. Educators are entitled to use materials in a manner which would otherwise be considered an infringement of the of copyright, interfering with the owners exclusive right to reproduce that material But remember the professor at Columbia, you can go too far. The professor copied parts of the books of others compiling them into one “required text”. He exceeds the limits of the “amount” which would have allowed a professor to copy entire text and destroying the market for textbooks. The court decided it would better serve all of use if textbooks would be updated. See also Kinko’s case.
Remedies For Infringement
1. Injunctions: An emergency court remedy when irreparable harm will occur if some act or action is not taken immediately ‑ Temporary or Permanent. But consider the free speech issues with an injunction for an unpublished work.
2. Impounding and disposition of infringing materials. (Air Pirates v. Disney)(1979) Exceeded fair use by taking more than what was needed to conjure up Mickey and his pals.
3. Damages and Profits ‑ The copyright owner can recover either actual damages or any additional profits of the infringer, or statutory damages. Statutory damages may be recovered only if the copyright was registered before the infringement and within three months of publication. If statutory damages are available, the court may award from $500 up to $20,000 as it considers just. If the infringement was willful, the court may increase the statutory damages to $100,000; if the infringement was innocent, the court may reduce the statutory damages to $100.
4. Costs and Attorney's Fees ‑ The copyright owner can recover its attorney's fees if the work was registered before the infringement and within three months of publication.
Copyright infringement can also be a criminal offense. There are criminal penalties to not only the willful and knowing use of a copyrighted design, but for as little as changing a copyright notice.
Collateral Issues: Unfair Competition, Trade Dress, Limitation of License
Trade Dress: Romm Art Creations v. Simcha International. Print maker made a print of person in a coffeehouse. Simcha liked the print but rather than license to copy it they made a new painting using similar positions with the sole difference that the person is holding a saxophone. Simcha loses.
Exceeding the Oral license: Rano v. Sipa Press, Inc. (987 F2d 580) 9th Cir (1993) Sipa is an international licensing agency for photographs. Rano is a photographer. Rano canceled the license of representation after a number of years with Sipa. Sipa continued to license the work. The license was exceeded by the acts of Sipa and the court considered such an infringement.
However reconsider: Gracen v. Bradford Exchange (1983). “Wizard of Oz” Dorothy Plate case. The 7th circuit suggested that an oral license to Gracen through Bradford to prepare copies for manufacture could also give right to permission to ultimately display the derivative work in the portfolio of the artist because she was invited to compete in the design competition. However, that artist did not have permission to register the copyright in the derivative work.
APPENDIX A: “Oh, Pretty Woman” by Roy Orbison and William Dees
Pretty Woman, walking down the street,
Pretty Woman, the kind I like to meet,
Pretty Woman, I don't believe you, you're not the truth,
No one could look as good as you
Pretty Woman, won't you pardon me,
Pretty Woman, I couldn't help but see,
Pretty Woman, that you look lovely as can be
Are you lonely just like me?
Pretty Woman, stop a while,
Pretty Woman, talk a while,
Pretty Woman give your smile to me
Pretty woman, yeah, yeah, yeah
Pretty Woman, look my way,
Pretty Woman, say you'll stay with me
'Cause I need you, I'll treat you right
Come to me baby, Be mine tonight
Pretty Woman, don't walk on by,
Pretty Woman, don't make me cry,
Pretty Woman, don't walk away,
If that's the way it must be, O.K.
I guess I'll go on home, it's late
There'll be tomorrow night, but wait!
What do I see
Is she walking back to me?
Yeah, she's walking back to me!
Oh, Pretty Woman.
“Pretty Woman” as Recorded by 2 Live Crew
Pretty woman walkin' down the street
Pretty woman girl you look so sweet
Pretty woman you bring me down to that knee
Pretty woman you make me wanna beg please
Oh, pretty woman
Big hairy woman you need to shave that stuff
Big hairy woman you know I bet it's tough
Big hairy woman all that hair it ain't legit
'Cause you look like 'Cousin It'
Big hairy woman
Bald headed woman girl your hair won't grow
Bald headed woman you got a teeny weeny afro
Bald headed woman you know your hair could look nice
Bald headed woman first you got to roll it with rice
Bald headed woman here, let me get this hunk of biz for ya
Ya know what I'm saying you look better than rice a roni
Oh bald headed woman
Big hairy woman come on in
And don't forget your bald headed friend
Hey pretty woman let the boys
Two timin' woman girl you know you ain't right
Two timin' woman you's out with my boy last night
Two timin' woman that takes a load off my mind
Two timin' woman now I know the baby ain't mine
Oh, two timin' woman
Oh pretty woman