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November Notes Copyright


November 2, 1999


whoever is the actual or beneficial owner of a copyright at the time of infringement is entitled to remedies


legal or beneficial owner has the cause of action IF they have the legal or beneficial ownership at the TIME of infringement

-         should also buy rights for past infringements if you are purchasing a copyright from somewhere

-         make sure you put this in the contract and discuss with client


beneficial owner - not the legal owner, but someone who has an economic interest in the copyright and that particular interest is being infringed by someone else

-         ex: you are author of a novel; sell novel to someone; the buyer gets royalties for the future; someone infringes the copyright on the novel; the buyer who collects royalties will be upset that someone is infringing; the buyer can go after infringer on own name




What must you allege the cause of action for copyright infringement? 

-         federal court jurisdiction - designate statute for where court gets jurisdiction

-         why are you in that particular court? Venue

-         infringement of one of the straws of copyright


This question might come in the form:

What must you allege for:

-         contributory infringement cause of action

-         copyright infringement cause of action



the suit should be filed in federal court; make sure you mention jurisdiction; you also must mention venue.


You want an injunction - motion for preliminary injunction; preliminary to the trial; get the injunction BEFORE the trial; this is called an extraordinary remedy

Must prove:

-         irreparable harm (no matter how much money you get, could not solve harm)

-         likely to prevail on the merits

-         (9th Circuit - in public interest)

These requirements vary from circuit to circuit


Plaintiff must put up a bond to cover himself in case the plaintiff is wrong.  When they have a trial the plaintiff might loose.  Want to make sure that the defendant will be covered in case the plaintiff loses.

-         next question is how much to put up for bond?

-         Look at proof of how much defendant will be out because of the injunction

-         Need to make sure you question client to see if he has enough money for bond; if he cannot afford the bond, it is best not to continue


Must next prove case

-         had the copyright

-         infringement (access and substantial similarity)

Irreparable harm is automatically presumed if this is the case


What are remedies you can get for copyright infringement? DEFINITELY ON FINAL

-         temporary and final injunctions

-         order impounding and disposing of infringing goods

i.. civil - discretionary

ii.. criminal action - automatic

An injunction MAY get an injunction at the end of the trial.  Will not automatically get an injunction.  THIS IS LIKELY TO BE A TRUE/FALSE QUESTION ON THE FINAL


Courts are starting to indicate that if the infringing work is a transformative (brings out new work besides stuff infringed on) the courts may find it is not reasonable or necessary to grant an injunction.  This is a trend, not yet law. 


If you win the trial, and get an injunction, you can go after past earnings:


-         actual damages you suffered as a copyright owner PLUS the infringer’s profits (much more liberal than patent law)

-         OR

-         Statutory damages


Sec. 504. Remedies for infringement: Damages and profits


     (a) In General. - Except as otherwise provided by this title, an infringer of copyright is

     liable for either -

          (1) the copyright owner's actual damages and any additional

          profits of the infringer, as provided by subsection (b); or

          (2) statutory damages, as provided by subsection (c).


When determining whether you need permission to use a copyrighted work, ask the following questions:

1.. is the work protected?

2.. if the work is protected, are you going to exercise one of the exclusive rights of the copyright owner?

3.. is you use exempt or excused from liability infringement?


Difference in copyright from torts:

 In torts anyone who commits the tortuous act is liable

In plaintiff’s copyright damages everyone who participated in the infringement, is jointly and severally liable.

In copyright, where you have multiple infringers, as to the profits portion of the damages, only the person that realized the profits is liable.  


Statutory damages - judge can increase damages to $100,000 if the copyright was willful

-         proven by intent, gross negligence,


No statutory damages if the alleged infringer had a reasonable belief that there was a fair use, was an educational institution,




November 4, 1999


Argument was that the states gave up their right to immunity because of the commerce clause; now it is different


1996 - Seminole case held that the commerce clause did ; that states did not give up their immunity because of participating in commerce and because of the commerce clause


1998 - College savings case - dealt with a patent


whether a school (state school) that licenses out patents, can sue for patent infringement


right to jury trial for statutory damages - YES, you are entitled to a jury trial on statutory damages portion.  Costs and attorney’s fees are discretionary.  9th Circuit used to take the position that attorney fees were automatic if the plaintiff won.  If the D won, they would have to prove a higher burden. 


Must register timely in order to get attorney’s fees (discussed earlier in the course); don’t get attorney fees for unpublished and unregistered works


Statute of limitations:

3 years for civil

5 years for criminal

Statute is tolled during period that copyright owner was aware or had reason to be aware of the infringement

-         courts are divided as to the rolling infringement

Rolling infringement:


Date of complaint is what SOL is measured against; look to date of accident, tort, infringement to see if you are in SOL DEFINITELY ON FINAL

-         split in courts as to how far back you can go (can go back farther some courts say, if you did not know about the infringer)

-         P can revert back further than 3 years, if the defendant fraudulently concealed the infringement, OR if the facts were such that even if it was not fraudulent concealment, that a reasonable copyright owner would not have known of the infringements

-         9th Circuit does not allow you to back if the statute is not tolled

-         other courts say if you filed suit within any of the infringements, you can go all the way back

-         years are counted by specific date (from when complaint is filed)

Optional for court to order destruction of infringing copies




-         is a criminal liability for infringing copyright (unlike patents)

qualifications: KNOW THESE

-         must be willful infringement

-         for purposes of commercial advantage or private financial gain

if these qualifications are met, then the SOL is 5 years

-         in all cases where there is criminal liability, even if you don’t have all the requirements, it is still subject to potential prison time up to one year

types of punishments: fines, prison time of 1 year or less, but if 10 acts over 180 days value of $2500 or more up to 5 years, second offense or more is up to 10 years

fines: $250,000 or less for individual, $500,000 or less for an organization

Court can order destruction of infringing works and manufacturing equipment used to make them

Must show intent to infringe (don’t need this for civil)

VARA (moral rights) - infringement of these rights are not subject to criminal

Also a criminal offense to place a false copyright notice, or to alter or remove copyright notices



A.. civil

            1.. lack of knowledge or intent may not be a defense

            2.. two types of potential infringement for such a party

a.. contributory infringement - may be liable if you have knowledge of infringing activity and you either induce or contribute to i

                        b.. vicarious liability - if you actively operate or supervise the operation of

a place or performance and you have control or you expect a commercial advantage, then you may be liable even if you did not know there was infringement


Fonovisa, Inc. v. Cherry Auction, Inc., p753




Flea market allowed people to sell copyrighted materials.




Whether vicarious and contributory liability should be imposed.  Whether plaintiff adequately alleged that Cherry Auction materially contributed to the infringing activity.






The district court’s dismissal of the vicarious liability claim in this case was not justified on the ground that the complaint failed to allege sufficient control.




The plaintiff has sufficiently alleged direct financial benefit. 

VICARIOUS: there was vicarious liability ***

Elements: control over the acts of the infringer PLUS defendant generate some sort of financial gain;

CONTRIBUTORY: have to show you had knowledge or should have known of the infringement to cause, induce, the infringement


*** in Silicon Valley there are lots of start ups - if one of the employees goes out and copies a program, and you have stock options (potential gain), and you are his boss, this meets the elements for vicarious liability 


A&M Records, Inc. v. Abdallay, p759




Time loaded cassettes were manufactured for a pirate recorder.







Defense is that the tapes have uses for things other than infringement.  D argued that the tape could be used for recording things that are not copyrighted.  Court held that D knew the tape was specifically being created to accommodate infringing copies.  Therefore D is a contributory infringer even though the tape could theoretically have some other uses.



Religious Technology Center v. Netcom On-Line, p 761




Is Netcom liable for hosting infringing BBS discussion messages?






Once you have knowledge of the infringement, you must take steps to remove the infringing work from the system.




As far as contributory, if you had knowledge that the work was infringing and you still went forward you do not have liability.  If not, you don’t have liability until the time you found out that it was infringing.  Then, when you found out it was infringing, you should have taken steps to remove the infringing messages from the system. 




November 9, 1999


Operating system provider - an entity offering for transmission routing or providing of connections for digital online communications between or amount points specified by a user of material of the user’s choosing, without modification to the content of the material as sent or received.

-         applies equally to private and commercial


Temporary stores on network -


If OSP notified:

-         must sever link expediouscly

-         OSP notifies subscriber

-         Subscriber may then send OSP ___ notification

READ 17 USC 512 -- he went over this in detail, but wrote too small on the board; especially sections k, a, d, c


Tampering with copyrighted material is actionable


How do you use the copyrights?  Misuse of copyright


Don’t lose a copyright by misuse automatically - just lose rights to enforce them until you discontinue misuse and make amends for harm created


Don’t have to establish an anti trust violation to raise the misuse as a defense; even if you are not harmed, it does not matter; show this by a preponderance of evidence



Will often have situations where there is IP and conflicting state and federal laws

-         important in advising clients as to rights

-         makes a different to plaintiff in how to frame complaint


INS v. AP case - protection of unfair competition; under state laws you don’t know what unfair comp is until you look at the particular circumstances between the parties; don’t know it until you see it




November 11, 1999


Statement in Compco case caused chaos for a long time (until Supreme Court finally fixed it).  The language: “When an article is unprotected by a patent or a copyright, state law may not forbid others to copy that article…” NOT TO BE INTERPRETED LITERALLY



Subject Matter

Fed. Stat.

State Stat.

State C/L



Art. Manufacture






Art. Manufacture






Sound recording





Bonito Boat

Art. Manufacture






Art. Manufacture process







Whenever you are looking at a preemptive right look at:

1.. rights

2.. subject matter


Sec. 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.


In the NBA case, the court made it clear that the performance on the field is NOT copyrightable.  KNOW THIS

-         takes lots of people to put on a game (not just the people on the field)

-         is each person a co-author?

-         Secondly, if a team comes up with a new formation or defense, if it were copyrightable, then everyone else would be excluded from using it.  This would be ridiculous.

-         SO performance in an athletic event is not an authorship





November 18, 1999


Berne convention


Two main computer treaties are the Berne (140 countries) and the Universal Copyright Convention (95 countries)


Berne convention deals with moral rights but the UCC does not.


Make sure you know that neither the Berne nor the UCC address sound recordings.


Since there are so many countries that are members of the conventions, there are not many bilateral agreements between the USA and other countries.  We have a deal with Viet Nam, Taiwan, all of the countries that were part of the former Soviet Union. These are countries that are not members of the above mentioned conventions. 


NAVARA rights do not affect works for hire. 


Make sure you know about semiconductor mass protection law: hybrid between patent and copyright; when making an integrated circuit board, the name of the game is to get all the components on the smallest space as possible.  The way the board works is generally not patentable.  Frequently you cannot get copyright protection because of 102B - just a structure, nothing artistic.  However, in preparing these boards it takes millions of dollars to do it. 

Ø      Semi Conductor chip Protection Act (1984) - covers integrated circuit chips, boards.  Register them in copyright office.  There is a special form you use.  Rights are good for a maximum of 10 years.  Protection starts from day of registration or day of commercial expoltation, which ever is first

Ø      Rights are limited to people reproducing, importing, or distributing copies of it. 

Ø      NO rights against person reverse engineering it

Ø      Can get statutory damage but NO criminal liability

Ø      A circle with an “m” means it is a registered mass works under the Act.


Tuesday will be review and exam prep session.




November 23, 1999


Review of cases we skipped last time:

Suba films case - international distribution rights; infringing actions that took place outside of USA were not actionable under copyright; authorization to distribute films internationally was not an infringement but should be contributory; because they authorized international infringement there could not be any action

-         RULE: merely authorizing from within the USA, acts outside of the USA does not constitute contributory infringement


Ronbo case - act in the USA: original production of the poster; here you did have an act within the USA which violated the copyright laws (first straw of 106 - the copying); then sent it to Israel where more copies were made; HELD: since there was an action in the USA, you can bring an action in foreign countries for all infringements;  Here you have a direct link which tied act in outside of USA to foreign acts.  Need this direct link


Kurb case - master copies were made in the USA; but only had license to make masters for the UK.  Did not have the right to make masters in any other country.  Here they used those masters for other countries and they found there was an infringement.  Did not have the right to make copies for any other purpose than USA or Canada.



Concept of 1

1.. constitutional provision

-         article 1, Sec 8, clause 8

-         promote progress of arts

-/- provide economic gain to authors from users

-/- get information to public

2.. copyrightable subject matter

3.. ownership

4.. duration, termination of transfers

5.. formalities

6.. exclusive rights

7.. fair use

8.. enforcement

-         civil remedies

-         criminal

-         contrib./inf.




Four parts

A.. fifty questions. Short answer, 3 or less sentence (50%); recommends 90 minutes; one point each

B.. Multiple choice 40 (15%); recommends 27 minutes

C.. True false 30 (10%); recommends 18 minutes

D.. One essay (25%); recommends 45 minutes; 25 points


Make sure you know § 101 definitions


Do parts A, B, C, on the final itself.  Can type section A if you want but recommended to do on the actual test.  HIGHLY Recommended to do on test.


Part D.  Hypo case broken into many issues; ask how you would address these issues;  Each issue is broken into point values.  Look at each issue. 


If you want to gripe about grade, go through the final and write about exactly where you think he graded wrong. 


Last page is a true false question which is truly bonus.  Get a point no matter what you mark. 


Multiple choice can have from 4 to 6 possible answers. 


Entire book will be covered. 


Know bundle of rights, infringements, fair use forward and backwards, all the definitions. 


What is a compilation, basis for copyright act (article 1, sec 8, cl. 8), four factors, requirement for copyrightable subject matter, what are remedies for civil, etc  CHECK TAPE


Know the terms for copyrights - see chart


Questions on Acts - know term lengths of copyrights


Know formalities under 1949 act in order to have a valid copyright


If published work members of the convention, berne, UCC, or countries in which we have bilateral agreements, if unpublished work protection from any country.





Damages - damages plus profits; copyright holder only has to show infringer’s gross sales, duty of infringer to show expenses related to copyrighted subject matter


Know contributory infringer stuff.  Do have to have knowledge


Know vicarious liability - with digital recording and Internet never had to worry much about access; one of the purposes of the copyright act was to get info out, but now, especially with Sony case (video cassette) there must be some mechanisms to control access (encryption, 1999 digital millennium act)


After Sony case, with enactment of the laws, a home recording was no longer an infringement, but then after 1992 act, must be some sort of copying management mechanism

-         also recorder providers have to pay a royalty

-         compulsory licensing


Difference between registration and non-registration

-         if first publication in USA or copyright holder is a USA domicile, then before they can sue, they have to register

-         if you are a foreigner, you do not have to register before you sue

-         if you have a work and you timely register (within 3 months of registration) then you are entitled to statutory damages and attorney fees options; keep in mind that attorneys fees are subject to the discretion of the court

-         if you do not register within that time frame you are not entitled to attorney fees or statutory damages at all

-         damages start at time of infringement

-         registration does not preclude or deprive you of copyright; only relates to remedies (always can get an injunction, copyright infringement due to irreparable harm and you get the injunction)


There WILL BE a question - what must you plead for a cause of action? 

-         jurisdiction (federal question, title 17), venue (why this suit is being brought here)

-         alleging ownership of copyright, defendant infringed


As long as you register timely so that you are entitled to statutory damages; you can make this choice up until judgement is entered


Entitled to a jury trial under statutory damages (7th Amendment, Constitution)


Know the first sale doctrine - once the item is sold, with authority, or permission of the coyright holder, the holder of the item may do with it whatever they damn well please

-         but, keep in mind that they might violate one of the other rights by making a public performance, derivative work


Compilation - know that copyright holder has copyright in compilation but not individual articles (the original authors hold the copyrights still); because the only original contribution to the compilation is the selection and arrangement


Attorneys fees - the circuits must apply this even handenly - can’t put more burden on the plaintiff than you do on the defendant. 


Focus of the USA copyright act is towards economic return for the copyright holder; the theory is that the incentive for a creative individual to do the individual works is economic.  Title 17 is not focused towards moral rights.  Altough nAvara does provide some moral rights (know this)


Two conventions we are members of - Berne and Uinversal Copyright Convention, have bilateral agreement with some countries, but is pretty limited.  There is an overlap between Berne and UCC.


Online Service Providers - generally not liable, but once they know, if copyright holder notifies them, then the OSP must pull it off and notify customer.  If customer says it is not in violation,  Copyright holder has 10 days to file a suit if they want the OSP to continue to keep information off the service.


Termination of license agreements.  5 year window between 35th and 40 th year.  Cannot be waived, different than renewal rights


Renewal rights were separate right in themselves from the original rioght;  28 years if the original copyright owner was still alive, then his grant of renewal right still effective, now automatically terminates.  CHECK THIS  Any license or agreement relating to the copyright is terminable during 5 year window provided notice is given

-         can have agreement for lesser term than 35 years but CANNOT have agreement for longer term


Joint work - 2 or more authors that have agreement between them that the joint work will be a joint work and each joint author must make a copyrightable contribution



What is a compilation?

What is the basis for the copyright act?  Article I, Sec I, Clause 8

What are the four factors for determining fair use?

What is the requirement for copyrighted subject matter? Original expression placed on a

fixed medium

What are the remedies for civil suits?  Actual damages plus profits, discretionary, etc..

What are the terms for copyright protection?  Work for hire, etc…

What are the formalities under 1909 act?

USA will respect copyrights from which countries?  For unpublished works, from any

country in the world.  If published members of the Berne and UCC conventions.  If first published in the USA must be registered before sue.

What are the available damages?  Can elect to go for pure damage plus profits

What must copyright holder shows?  Only has to show the infringer’s gross sales,

infringer has to show expenses related to the copyrighted subject matter.  Damages will be minus expenses.

What are the requirements for contributory infringement?  Can’t have infringement unless it is a direct infringer and knowledge. 

What is a difference between what must be shown for direct infringement and contributory infringer?  For direct infringer you don’t have to show knowledge.

What are the elements for vicarious liability?  Must be some mechanisms to control access under 1999 DMA

Is home recording an infringement?  NO - under 1992 Act there must be some sort of restriction on recorders. 

What benefits does copyright registration bring?  Statutory damages, attorneys fees. 

Does not affect ability to get an injunction. 

What must you allege for a copyright cause of action?  Jurisdiction (federal question Title

17, or diversity), venue, ownership of copyright, infringement

By when must the choice be made whether to ask for statutory damages or damages plus

profits?  Up until the time of judgment. Entitled to a jury trial for statutory damages.

What is the first sale doctrine?

What copyrights are in a compilation? Individual authors retain their rights; only have

copyright over the compilation selection and arrangement. 

Circuits must apply what standard to plaintiffs and defendants for recovery of attorney’s fees?  The standard must be applied even handedly - the same to both. 

What is the focus of the United States Copyright Act? Economic return for the copyright

holder.  The incentive for person to create is economic.  Title 17 is not focused on moral rights.  Not much of a focus on moral rights.  VARA does imply some moral rights.

What moral rights are imposed by VARA?

What copyright conventions do the United States belong to? The Berne Convention and

the Universal Copyright Convention (UCC). 

Does the United States have bilateral copyright agreements?  A few, but mostly not

needed since most countries are a member of the Berne or UCC (and there is some overlap between the conventions).

Are online service providers (OSP) liable for violations of the users?  Generally no.  But

once they know of the violation, if the copyright holder notifies them of the violation, the OSP must pull the material and notify the user.  If the user says the material is not in violation, the copyright holder has 10 days to file suit if he wants the OSP to continue to keep the material offline.

How does a copyright license agreement terminate?  During the 5 year window after the 35th year.   CHECK THIS

How do renewal rights work?  28th year  CHECK . . . difference in work for hire; Can’t have agreements for more or less than 35 years

What is a joint work?  Two or more authors intend to make a joint work.  Each author

must make a copyrightable contribution.