Intellectual Property Law

Chapter 14 Discussion Answers

1. Jeff asks Grace to make a photocopy of Andrew’s copyrighted short story. Grace
believes Jeff is the author of the story, so she makes the copy for Jeff. Who has
committed infringement? Discuss.

Both have committed infringement. Grace is a direct infringer. Grace
is an innocent infringer (she had no intent to infringe). Innocent
infringement is no defense to copyright infringement; it may,
however, reduce damages. Jeff is a contributory infringer because he
encouraged and induced the act of infringement.

2. Elliott is a photographer who published a book last year that consisted of 30
photographs of impoverished families. Tom is an avant-garde artist with a
wealthy clientele. He has taken 25 of the photos and altered them by using the
head shots from Elliott’s photos and superimposing them onto others’ bodies in
colorful collages, primarily to make a comment on the needs of the poor in
America. Analyze the fair use factors and indicate whether you believe the use is
infringement or fair use.

This fact scenario is taken from Cariou v. Prince, 714 F.3d 694 (2d Cir.
2013). In that case, the court found no infringement of 25 photos for the
following reasons (the fair use analysis): (1) Although the artist’s use was
for commercial purposes, the photos were highly transformative in that
they added something new, resulting in a fundamentally different
aesthetic; (2) the nature of the photographer’s work was expressive and
protectable, but this factor is of less importance when a work is highly
transformative as was the case here; although key portions of the
original photos were used, the transformative nature of the use weighed
in favor of the avant-garde artist; the works appeal to different
audiences—those who would buy the photos would be unlikely to refrain
from buying the photos in favor of buying the high-end and likely
expensive collages. The transformative use here (for social commentary)
is the type of creative use favored by the purposes of copyright law.

3. Allison, a newspaper reporter and media critic, has quoted several lines from
Mason’s new book in her review of the book. Discuss whether this conduct might
constitute infringement and any defenses Allison might assert.

News reporting and criticism are a type of use that is expressly
mentioned by 17 U.S.C. § 107 as a fair use. Thus, a fair use defense
would likely be successful if Allison were sued for copyright
infringement. Critics routinely quote from (and need to quote from)
original material in order for their critiques to refer to and discuss the
original work.

4. In a televised report on the resurgence of Broadway musicals, Marissa, a reporter,
stands in front of a copyrighted poster for the musical Beautiful while she
provides her 20-second report. Discuss whether this conduct might constitute
infringement and any defenses Marissa might assert.

Once again, news reporting is specifically mentioned in 17 U.S.C. §
107 as a type of fair use. Marissa might also assert that any use was de
minimis—the poster was displayed for only 20 seconds—thus, any
viewers of it would likely have only a “fleeting glance” of the work.

5. Sean released his documentary in July and registered the copyright for it in
December. If the work is infringed in August, what damages might Sean recover?
Discuss.

17 U.S.C. § 412 provides that the owner of a copyrighted work may
not recover statutory damages or attorneys’ fees for any copyright
infringement that begins after the work is published and before it is
registered unless the work is registered within three months of
publication. In this case, Sean registered his work five months after its
publication. Thus, he can recover actual damages but he cannot elect
statutory damages and may not recover attorneys’ fees. (He should
have registered the work within three months of publication—by
October—in order to recover statutory damages and attorneys’ fees.)

6. Hillary published an article in a newspaper listing all restaurants in San Jose by
category (Italian restaurants, Mexican restaurants, and so forth). Ellen claims this
infringes her book Dining in San Jose, which also lists all of the city’s restaurants
by category. Discuss whether Hillary’s article infringes Ellen’s book and any
defenses Hillary might assert.

Hillary should assert that there can be no copyright infringement
because the original work, Dining in San Jose, lacks sufficient
originality and creativity to be protectable. This situation would seem
to be governed by Feist, in which the Supreme Court held that an
alphabetically arranged directory lacked sufficient originality to be
protectable. Listing all restaurants by category or type is the sort of
factual and “ordinary” presentation that was found unprotectable in
Feist. (Moreover, there is no selection in deciding which restaurants to
list—the facts state that both individuals simply listed all restaurants.)
If Ellen’s book included additional material (reviews of the
restaurants’ food, etc.), it might qualify for copyright protection, but
this routine listing of restaurants in an expected and predictable
manner likely does not show sufficient originality to be protectable.

7. Nell, a songwriter, submitted Wings, her recent musical composition, to her agent,
Philip. Nell believes that another songwriter, Ray, has infringed Wings. Nell
recently discovered that Ray is also represented by Philip. Of what importance is
this fact to Nell?

To prevail in a copyright infringement case, a plaintiff must show
ownership of a copyright and copying of his/her work. Assuming Nell
can show ownership of a valid copyright (and assuming she has no
direct evidence of copying), Nell can show copying by circumstantial
or indirect evidence, which requires proof of two things: access to the
copyrighted work by the defendant and substantial similarity of the
two works. The fact that Nell and Ray are both represented by Philip
might well show that Ray had access to the work (perhaps while
visiting the agent, Ray heard Nell’s song). When a plaintiff and a
defendant are “connected” through a third party, such as this agent,
such might well show access. Once Nell shows this access then she will
need to show substantial similarity of the two works.