Intellectual Property Law

Chapter 14 Lecture Notes

Major points addressed in the chapter materials include the following:

1. Registration (or preregistration) of a copyright is a requirement for initiating an action
for infringement (although registration is not required for works not originating in the
United States or for VARA works). Thus, although registration is not required to
obtain copyright protection for a work, the failure to register will preclude a copyright
owner from seeking redress for infringement.

2. Anyone who violates any of the exclusive rights of a copyright owner (such as the
right to reproduce, adapt, perform, distribute, or display the work) is liable for direct
infringement.

3. To prevail in an infringement action, a plaintiff must prove two things: his/her
ownership of the copyright and copying or some other impermissible invasion by the
defendant of one of the exclusive rights afforded to copyright owners.

4. Ownership is fairly easily established. A party may prove ownership by
demonstrating authorship of the work or that the copyright has been transferred to
him/her.

5. If copyright has been transferred (in writing) to another, that party is now the owner
of the transferred rights and can bring an infringement action. Thus, if the copyright
owner has transferred rights to perform the work and the work is infringed by
impermissible performance, the transferee may bring the action; however, if the work
is infringed by unauthorized distribution, the original author’s rights have been
infringed and he/she is the proper plaintiff. If a copyright owner has transferred rights
to another and yet retains some rights in the work (such as the right to collect
royalties on the work), the rights of both parties have been infringed.

6. Copying may be proven by direct or indirect evidence. Direct evidence exists when
the defendant admits copying or an eyewitness can testify that copying took place.
Because it is usually very difficult to show direct evidence of copying, most cases
rely on indirect or circumstantial evidence of copying, which requires proof of two
elements: that the defendant had access to the copyrighted work and that there is
substantial similarity between his/her work and that of the defendant. The infringing
work must derive from the copyrighted work. An independently created work cannot
infringe even if it is identical to the plaintiff’s work.

7. Infringement does not require an intent to infringe; even innocent infringement gives
rise to liability.

8. Access is generally interpreted to mean that a party had the opportunity to perceive or
review a work. Access may be inferred if the copyrighted work has been widely
disseminated. If two works are identical or nearly so, it may be presumed that the
defendant had access. Generally, the greater the similarity between two works, the
less access must be shown. Conversely, if the works are entirely dissimilar, no
amount of access will result in a finding of copying.

9. Infringement is usually shown by demonstrating that the allegedly infringing work is
substantially similar to the copyrighted work. The traditional test used (although there
are other tests as well) is often referred to as the ordinary observer test and focuses on
whether the accused work is so similar to the copyrighted work that an ordinary
reasonable person or lay observer would recognize that the copyrighted work was
appropriated by the defendant.

10. The lay observer test has been refined to take into account the intended market for the
works. Moreover, when the works are complex, such as computer programs, expert
testimony is often used to prove/disprove substantial similarity because such
programs are highly technical and unfamiliar to most lay observers.

11. Many courts use a two-step analysis to determine if there is infringement: The first
step analyzes copying. Once copying is established, the second step requires that a
determination be made whether copying was an impermissible appropriation, namely
whether the copying was so extensive that it rendered the offending and copyrighted
works substantially similar. Some courts and circuits focus on the extrinsic
similarities and then the intrinsic similarities of the works when determining
substantial similarity.

12. More than literal copying is prohibited; otherwise someone would be able to make
minor and immaterial changes to a copyrighted work with impunity.

13. If part of a work is copied, courts usually examine not only the quantity of the work
taken but also its characteristics. Thus, taking only a small portion can be
infringement if what is taken is the heart of the work.

14. Once copying is shown, examination focuses on whether the elements taken were
protected by copyright. It is permissible to take ideas but not the expression of those
ideas.

15. Some courts use the abstraction-filtration-comparison test. First, a court dissects the
accused work and isolates each level of abstraction in it. Second, unprotectable
elements (such as ideas, facts, and public domain matter) are filtered out. Third, a
comparison is made of the remaining protectable elements. This test is most often
used in cases involving infringement of computer programs.

16. Persons can be liable for the infringing acts of others. If one knows of infringing
activity and causes or contributes to the infringing conduct, liability can be found for
contributory infringement. Thus, a photocopy shop that allows its customer to copy
substantial portions of textbooks is a contributory infringer. A party that places a
product on the market can be liable for infringement if the product’s main use is for
infringement (rather than legitimate purposes). Generally, contributory infringement
requires either personal conduct that furthers the infringement or contribution of
goods or machinery that provide the means of infringement. If the equipment
supplied is capable of significant noninfringing uses, no contributory infringement
will be found (unless an intent to infringe can be shown).

17. Vicarious infringement typically occurs when one party shares a special relationship
to another and fails to stop infringement. For example, universities and employers
have duties to ensure their employees do not infringe copyrighted works of others.

18. There are a variety of defenses a defendant in an infringement action can assert. One
significant defense is that the use was a fair use. The Act provides that fair use of a
copyrighted work for purposes such as criticism, comment, news reporting, teaching,
scholarship, or research is not infringement. Fair use is thus a privilege to use
copyrighted material without the owner’s permission because it benefits the public
and promotes the arts and sciences.

19. Examples of fair use include the following: quoting excerpts of copyrighted works in
reviews or criticisms; use for parody; a summary for news purposes; and use of a
small portion of a work by a teacher to illustrate a lesson.

20. The Act identifies and courts consider four factors in determining whether a use is a
permissible fair use (all four factors are considered and each case is determined on its
own merits):

• The purpose and character of the use (generally, noncommercial use for comment
or criticism is acceptable; commercial use will not automatically defeat a fair use
defense but is less likely to be permissible than noncommercial use; similarly,
adding new material or transforming the copyrighted work weighs in favor of
finding fair use because it benefits the public)

• The nature of the copyrighted work (the more creative the work, the more
protection it deserves, thus, use of factual works is more likely to be viewed as a
fair use and unpublished works generally receive more protection than published
works)

• The amount and substantiality of the portion used (even when the amount taken is
quantitatively small, the use may still be impermissible if what is taken is pivotal)

• The effect of the use on the market for the copyrighted work (if the defendant’s
use causes a loss of revenue to the copyright owner or usurps the market for the
copyright owner’s work, such weighs against a finding of fair use)

21. Parodies are viewed as productive forms of social commentary and criticism and are
often protected under the fair use doctrine. The parodist, however, must conjure up
the original work and target the parody or link the parody to the original work to
make social comment or criticism. If the parodist merely copies a work to make
social comment on some other topic, the use is not a fair one.

22. Libraries and educators have agreed on guidelines for classroom copying. Established
guidelines help teachers determine how much of a work they may use in connection
with their teaching or scholarship activities. Generally, libraries are protected from
liability for infringement for unpermitted copying by their patrons so long as a notice
is placed on the copying equipment that the making of copies may be subject to
copyright law.

23. Other defenses to infringement include the following:

• Fraud or invalidity of copyright, namely that the material sought to be protected is
uncopyrightable (such as useful matters, facts, ideas, material which has no
originality, etc.)

• Estoppel (namely, that the copyright owner knew of the infringing use and
acquiesced in it)

• Misuse or unclean hands (wrongful acts of the plaintiff may preclude relief)

• Improper copyright notice (prior to March 1, 1989, that misidentifies the
copyright owner

• Statute of limitations (three years from the date of infringement)

• De minimis (or minor) use of copyrighted materials may be acceptable

24. Federal courts have exclusive jurisdiction over copyright infringement matters.
Actions are governed by the Federal Rules of Civil Procedure. Just as is the case for
trademarks (and patents), as an alternative to suing for infringement in federal court, a
party whose work has been infringed may bring a Section 337 proceeding before the
International Trade Commission to block infringing goods from entering the United
States.

25. Remedies for infringement include the following:

• Injunctive relief

• Impoundment of infringing copies

• Damages:
o Actual damages to compensate the plaintiff for lost sales and revenues; or
o Statutory damages (statutory damages may be elected by a plaintiff,
generally because actual damages are difficult to prove and are only
available if the copyright owner has secured registration within three
months after publication or, for unpublished works, before the defendant’s
infringement)

• Costs and attorney’s fees (within the discretion of the court)

26. Criminal sanctions can be imposed against willful infringers and to prevent electronic
copyright piracy even if there is no profit motive.

27. Fines may be imposed for fraudulent use or removal of copyright notices.

28. Under the DMCA, those who circumvent measures designed to protect certain works
(for example, disabling computer encryption programs) may be subject to both civil
and criminal penalties.