Copyright Law

Second Edition

Robert A. Gorman

Kenneth W. Gemmill Professor Emeritus

University of Pennsylvania Law School

Federal Judicial Center

2006

This Federal Judicial Center publication was undertaken in furtherance 

of the Center’s statutory mission to develop and conduct education 

programs for the judicial branch. The views expressed are those of the 

author and not necessarily those of the Federal Judicial Center.
Dedication

To the Honorable Edward R. Becker—

a distinguished jurist

in his case opinions and in chambers, an inspiring teacher

an innovative judicial administrator

piano player extraordinaire

a generous friend
iii 

Contents 

Bibliographic Note, vii 

Chapter 1: History and Background, 1 

 The Copyright Statutes, 1 

 British antecedents and the 1790 Act, 1 

 The Copyright Act of 1909, 2 

 The Copyright Act of 1976 and its frequent amendments, 3 

 Copyright as an Element of Intellectual Property Law, 5 

 Patents, 6 

 Trademarks, 7 

 Copyright and property law, 8 

 Copyright Office and Judicial Review, 10 

Chapter 2: The Subject Matter of Copyright, 13 

 General Principles, 13 

 Original authorship, 13 

 Tangible medium of expression, 18 

 Categories of works, 22 

 The Distinction Between Idea and Expression, 23 

 Copyrightability of computer materials, 29 

 Compilations and Derivative Works, 32 

 Compilations, 35 

 Derivative works, 40 

 Pictorial, Graphic, and Sculptural Works, 42 

 Useful articles, 43 

 Architectural works, 47 

 Works of visual art, 48 

 Pictorial and Literary Characters, 50 

 Government Works, 52 

Chapter 3: Duration and Renewal, 55 

 The Renewal Format, 56 

 Derivative works prepared during the initial term, 60 

 Duration of Copyright Under the 1976 Act, 62 

Table: Duration and Renewal: The Transition from the 1909 Act to the 1976 

Act, 67 
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iv 

Chapter 4: Ownership of Copyright, 69 

 Initial Ownership of Copyright, 69 

 Joint works, 69 

 Works made for hire, 72 

 Collective works, 75 

 Transfer of Copyright Ownership, 76 

 Termination of Transfers, 80 

Chapter 5: Copyright Formalities, 85 

 Formalities Under the 1909 Copyright Act, 85 

 “Publication,” 86 

 Copyright Notice Under the 1976 Act, 89 

 “Publication,” 90 

 The notice requirement, 90 

 Effect of noncompliance for 1978–1989 publications, 92 

 Deposit and Registration, 93 

Table: Formalities Under the 1909 Act and Under the 1976 Act 

Before and After Berne Convention Implementation Act, 97 

Chapter 6: Exclusive Rights of the Copyright Owner (herein of 

Infringement), 99 

 The Right of Reproduction, 101 

 Reproduction in copies or phonorecords, 101 

 Proving copying and infringement, 102 

 Idea versus expression, 106 

 Reproduction of Music and Sound Recordings, 110 

 Reproducing musical works in phonorecords, 111 

 Reproducing sound recordings in phonorecords, 114 

 The Right to Prepare Derivative Works, 116 

 The Right of Public Distribution, 118 

 First-sale doctrine, 119 

 The Right of Public Performance, 121 

 Performance, 122 

 Public performance, 124 

 Performing rights societies, 126 

 The Right of Public Display, 127 

 Visual Artists’ Rights, 129 

 Secondary Liability: Contributory and Vicarious Infringement, 131 
Contents 

v 

Chapter 7: Fair Use and Other Exemptions from the Exclusive Rights of 

the Copyright Owner, 139 

 Fair Use, 139 

 Statutory uses and factors, 141 

 Supreme Court fair use jurisprudence, 143 

 Fair use and the creation of new works, 148 

 Fair use and new technologies of copying and dissemination, 151 

 Exemptions and Compulsory Licenses, 156 

 Library copying, 156 

 First-sale doctrine and direct displays, 157 

 Educational, nonprofit and other performances and displays, 157 

 Cable television and other retransmissions, 161 

 Musical compulsory licenses: recordings and jukeboxes, 162 

 Sound-recording performance and digital-transmission 

rights, 164 

 Other exempted uses, 165 

Chapter 8: Enforcement of Copyright, 167 

 Jurisdictional and Procedural Issues, 167 

 Jurisdiction, 167 

 Who may sue, 170 

 Registration as a prerequisite to suit, 171 

 Limitations on liability: statute of limitations and sovereign 

immunity, 172 

 Remedies, 175 

 Technological Protection Measures, 181 

Chapter 9: State Law and Its Preemption, 185 

 State Anti-Copying Laws, 185 

 Federal Preemption, 187 

Glossary, 197 

Table of Cases, 203 

Index, 217 
Blank pages inserted to preserve pagination when printing double-sided copies.
vii 

Bibliographic Note 

The purpose of this monograph is to serve as an introduction to, and a 

starting point for research about, the law of copyright. It cannot feasibly be minutely detailed in its text or heavily annotated in its footnotes. 

Fortunately, there are a number of longer works of high quality that 

can be recommended to serve those latter purposes. For over forty 

years, the masterful multi-volume treatise, constantly cited by the 

courts, has been that of the late Professor Melville Nimmer: Melville & 

David Nimmer, Nimmer on Copyright. It has now been joined by an 

equally outstanding multi-volume treatise by Professor Paul Goldstein, 

titled simply Copyright. Both works are regularly updated. A singlevolume treatise that can be recommended, and that is somewhat more 

detailed than this monograph, is Understanding Copyright Law (4th ed. 

2005), by Marshall Leaffer. 

 There are two research services that provide current updates on 

copyright developments and decisions. These are published by Commerce Clearing House and by the Bureau of National Affairs (BNA 

Patent, Trademark & Copyright Journal). The United States Patent Quarterly also publishes advance sheets containing decisions in the fields of 

patents, trademarks, and copyright. The relatively few federal district 

court copyright decisions that are not published in the Federal Supplement can usually be found in full text in either the CCH or USPQ reports. 

 The Copyright Office website contains a wealth of information 

about the substance and administration of the Copyright Act 

(http://www.copyright.gov). One can find there not only the text of the 

Act (not always up-to-the-minute, however), but also pending copyright bills, the rules and regulations promulgated by the Copyright 

Office, news of the activities of the Office, its very useful reports and 

studies, speeches and statements by the Register of Copyrights, the 

various application forms, informational circulars, and access to registration records. 

 The law journal articles written about copyright have vastly proliferated over the past decade, and are published in general law reviews 

as well as in an increasing number of specialty journals devoted to 
Copyright Law 

viii 

intellectual property or to allied fields (such as computer law and entertainment law). 

 Throughout this monograph, the provisions of the copyright statute now in effect—the Copyright Act, most of the provisions of which 

went into effect on January 1, 1978—are referred to by their section 

numbers within title 17 of the U.S. Code. Pertinent definitions from 

section 101 of the Act are set forth in a glossary at the end of this 

monograph. 

 Many courts and scholars have come to regard the report of the 

House Committee on the Judiciary, H.R. Rep. No. 94-1476, 94th Cong., 

2d Sess. (1976), as the most comprehensive, exhaustive, and authoritative legislative source of the history and purposes of the Copyright Act. 

This monograph makes frequent reference to this significant document, which is denoted simply as “House Report.” 

 Excerpts from most of the cases discussed in this book, and from 

the House Report, can conveniently be found in Robert Gorman & 

Jane Ginsburg, Copyright: Cases and Materials (7th ed. 2006). The 

chapters in this monograph are organized to correspond with that 

book. 

 The coverage of this monograph is complete as of May 1, 2006. 
1 

Chapter 1 

History and Background 

Copyright is the body of law that deals with the ownership and use of 

works of literature, music and art. The basic purpose of copyright is to 

enrich our society’s wealth of culture and information. The means for 

doing so is to grant exclusive rights in the exploitation and marketing 

of a work as an incentive to those who create it. The Founding Fathers 

phrased this more elegantly—and provided the constitutional source 

for Congress’s power to enact copyright laws—in Article I, section 8, 

clause 8 of the Constitution: “The Congress shall have 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.” This provision is both a source of and a 

limitation on Congress’s power to enact copyright and patent statutes. 

The Copyright Statutes 

British antecedents and the 1790 Act 

Oddly, U.S. copyright law traces its source to British censorship laws of 

the sixteenth century. In 1556, the King granted to the Stationers’ Company, made up of the leading publishers of London, a monopoly over 

book publication, so as better to control the publication of seditious or 

heretical works. Publishers were given an exclusive and perpetual right 

of publication of works that passed muster with the Government and 

the Church (by way of the Star Chamber); there was no intention to 

protect or reward authors. After nearly a century and a half, licensing 

laws were left to expire and publishers sprang up independent of the 

Stationers’ Company. The Company turned to Parliament for protective legislation and in 1710 the Statute of Anne was enacted. The basic 

philosophy and contours of that statute have dominated the U.S. law of 

copyright for most of our history as a nation. Its purpose was stated to 

be “for the Encouragement of Learning,” which was threatened by the 

damage done to authors and their families by unauthorized copying of 

their books. This purpose was to be promoted by granting to authors 
Copyright Law 

2 

an exclusive right of publication to last for 21 years for existing works 

and for 14 years (subject to renewal by a living author for an additional 

14 years) for works published in the future. A condition of copyright 

was the registration of the title at Stationers’ Hall and the deposit of 

nine copies at official libraries. 

 The Statute of Anne, and the copyright laws later adopted in the 

former Colonies, set the stage for the Copyright and Patent Clause of 

the Constitution and for the enactment by the first Congress in 1790 of 

the first federal statutes governing copyrights and patents. In the handful of major copyright revisions over the past 200 years, Congress has 

gradually increased the kinds of works that are eligible for copyright 

and the kinds of exclusive rights afforded to the copyright owner. Congress has also gradually extended the period of copyright protection 

and reduced the significance of compliance with statutory formalities. 

It should be noted that Copyright protection is not limited to works of 

“high culture,” and that its coverage embraces such mundane works as 

business directories and such technologically oriented works as computer programs. 

The Copyright Act of 1909 

The Copyright Act that dominated the twentieth century was enacted in 

1909. Inartfully drafted and lacking important definitions—and enacted 

before the invention or widespread commercial use of the phonograph, motion pictures, radio and television, the photocopy machine, 

the computer, and a wide array of communications media including, 

of course, the Internet—the 1909 Act was subjected to frequent ad hoc 

amendment and to unguided judicial interpretation. 

 A principal feature of the 1909 Act was the preservation of state 

copyright protection (known as common-law copyright) for unpublished works; once a work was published by dissemination to the public, however, either federal copyright formalities were satisfied or the 

work fell into the public domain. If the familiar copyright notice was 

placed on all copies of a published work, federal copyright protection 

attached, exclusively enforced in federal courts (provided the copyright 

owner registered the work in the Copyright Office prior to commencing 

suit). Such federal copyright lasted for 28 years and was subject to re-
Chapter 1: History and Background 

3 

newal upon timely registration for an additional 28 years. The most 

significant exclusive rights accorded to the copyright owner under the 

1909 Act were those of printing or otherwise copying, of making adaptations or versions, of selling, and of publicly performing (for musical 

compositions, publicly performing for profit). 

 Although the 1909 Copyright Act is no longer in effect, it does govern important aspects of transactions that took place between 1909 and 

1978, and many of those transactions continue to be a source of litigation today. Knowledge and application of the 1909 Act will therefore 

continue to be pertinent to resolve disputes concerning, for example, 

whether a work published prior to 1978 complied with statutory formalities or was thrust into the public domain,1

 and who is the owner of 

copyright when claims are traced back to transfers that took place while 

the 1909 Act was in effect.2

The Copyright Act of 1976 and its frequent amendments 

After a major effort in the Copyright Office and the Congress to restudy 

and revise the law, an effort lasting more than 15 years, U.S. copyright 

law was drastically overhauled in the Copyright Act of 1976, which in 

most pertinent respects took effect on January 1, 1978. That statute 

abolished common-law copyright and made federal copyright exclusive from the moment a work is “created,” that is, “fixed in a tangible 

medium of expression,” whether in published or unpublished form. 

Works then in the first term or the renewal term of copyright under the 

1909 Act had their term of protection potentially extended to 75 years. 

Works created on or after January 1, 1978, or first published thereafter, 

were to be protected for 50 years after the death of the author, and 

corporate works were to be protected for 75 years after publication. If a 

work was published after January 1, 1978, it was still required to bear a 

copyright notice, but failure to use the notice would be subject to cure 

 

1. E.g., Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211 (11th Cir. 

1999); Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 

944 F.2d 1446 (9th Cir. 1991). 

2. Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (work made for hire); Forward v. Thorogood, 

985 F.2d 604 (1st Cir. 1993) (transfer of physical object embodying musical work). 
Copyright Law 

4 

and would not necessarily thrust the work into the public domain. 

Congress has since eliminated the notice requirement altogether for 

works published after March 1, 1989. In 1998 20 more years were added 

to the term of copyright for all works still under copyright protection. 

 The exclusive rights accorded the copyright owner under the 1976 

Act are essentially the same as those given by the 1909 Act, with the 

addition of the right of “public display” to take account of transmissions by television and computer. A host of intricately delineated exemptions are incorporated in the 1976 Act, so that a variety of uses of 

copyright-protected works may be made, without securing the authorization of the copyright owner, for certain nonprofit, charitable and 

educational purposes. The well-known doctrine of fair use, judicially 

devised in the middle of the nineteenth century, was expressly incorporated in the text of the statute. 

 In almost every year after the Copyright Act was amended in 1989 

to eliminate the requirement of placing a notice on all publicly distributed copies, the statute has been amended further, principally in order 

to take account of new technological developments or to conform to 

the provisions of international treaties that have come increasingly to 

harmonize the copyright laws throughout the world. Only the most 

significant amendments are noted here. 

 In 1990 Congress granted to visual artists certain limited rights of 

attribution and integrity in the original physical copies of their works; 

expanded the rights of architects in their plans and buildings; and 

granted commercial-rental rights covering computer programs (as it 

had done in 1984 for musical recordings). In 1992 the Act was 

amended to provide for automatic renewal of the copyright terms of 

pre-1978 works then in their first term of copyright; and to ensure 

compensation to recording companies and performers in connection 

with the sale of digital recording machines and media (the Digital 

Audio Home Recording Act, which also expressly immunized home 

recording for noncommercial purposes). In 1994, Congress restored 

copyright protection to non-U.S. works from treaty-signatory nations 

(the Berne Convention and the World Trade Organization) if those 

works were still protected in their “countries of origin” but had lost 

their U.S. protection because they had been published here without the 
Chapter 1: History and Background 

5 

notice required under the 1909 Act or had not been timely renewed 

under that Act. In 1995 and again in 1998, Congress extended to sound 

recordings the exclusive right of digital public performance (e.g., by 

being played over the Internet), resulting in the copyright owner’s full 

rights over interactive digital transmissions and a compulsory-license 

regime for most other digital transmissions. In 1998, as noted above, 

the term of copyright protection was extended from 75 years to 95 years 

(for corporate works and for works still protected under the 1909 Act), 

and from “life plus 50” to “life plus 70” for other works created or published after January 1, 1978. In 2003 the Supreme Court sustained this 

“Sonny Bono Copyright Term Extension Act” against constitutional 

attack.3

 In 1998 Congress took a significant step beyond conventional 

copyright in the provisions of the Digital Millennium Copyright Act 

that prevent the circumvention of technological protections (such as 

digital encryption) of copyrighted works. 

Copyright as an Element of Intellectual Property Law 

The general domain of copyright law is often misunderstood. In particular, its boundaries are often confused with those of the law of patents and trademarks. These three fields are commonly grouped together as “intellectual property,” but they are quite different in important respects, which are summarized here. 

 The purpose of copyright and patent is to provide incentives to 

“promote the progress of science and useful arts” and the constitutional source of Congress’s power to legislate is the Copyright and Patent Clause. The purpose of trademark law is to prevent confusion in 

the commercial marketplace—and thereby to ensure accurate information and the maintenance of quality of goods and services—and the 

constitutional source of Congress’s power to legislate is the Commerce 

Clause. 

 

3. Eldred v. Ashcroft, 537 U.S. 186 (2003). 
Copyright Law 

6 

Patents 

The law of patents4 embraces the subject matter of products and processes. To be eligible for protection, an invention must be useful, and 

novel, and—even though it might not have been known before—also 

“nonobvious,” that is, not reasonably anticipatable by a person versed 

in the current state of the pertinent art. Before a patent is issued by the 

Patent and Trademark Office, the invention must be determined by an 

examiner, after a detailed search of prior art, to satisfy these three 

statutory conditions. Patent protection begins only when the Office 

issues the patent at the end of the examining process, and the patent 

lasts for 20 years as measured from the date on which the patent application was initially filed. 

 The exclusive right granted by the patent law is much more powerful than that accorded by copyright, in two important respects. Copyright infringement requires that the work of the copyright owner have 

been copied, so independent origination of a similar or identical work 

is not an infringement; but patent infringement can arise even from a 

later independently created invention. Copyright gives the author exclusive rights to copy and otherwise exploit only the pattern of expression in the copyrighted work and not the underlying ideas, concepts or 

systems; patents protect against replication of chemical or mechanical 

processes as usefully embodied. For example, copyright in a book that 

describes a newly invented medical device will afford protection only 

against those who copy or closely paraphrase the author’s prose depiction. It will not prevent another person from manufacturing, selling, or 

using the medical device; only a patent can provide that protection to 

the inventor. 

 Similarly, copyright in a computer program protects only against 

copying or paraphrasing the sequence of commands (whether in 

“source code” intelligible to humans or in “object code” which directly operates the computer). It does not prevent a person from replicating the process that the computer program implements, provided 

there is no copying of the program. Thus, a computer program might 

be designed to run certain tests and move certain machinery compo-

 

4. 35 U.S.C. §§ 101 et seq. 
Chapter 1: History and Background 

7 

nents in the course of producing a particular product. Copyright will 

prevent another from copying the program, but anyone is free—even 

by means of decoding the program (which has been held to be a “fair 

use”)—to devise another method for running those tests and moving 

those components, perhaps manually or perhaps by devising another 

computer program that does not track the commands or structure of 

the first program. If, however, the production process (which incorporates the computer program) is one that meets the requirements of 

novelty and nonobviousness under the patent law, a process patent can 

be issued. This patent will preclude others who seek to use or to market the protected process, even by means of a computer program of 

altogether different configuration—and, indeed, even though the later 

program is independently originated. 

 In sum, copyright protection is much easier to secure and lasts 

much longer; patent protection is more powerful in curbing competitors. Both patent and copyright are enforced exclusively in the federal 

courts.5

 Appeals in patent cases are centrally channeled to the Court of 

Appeals for the Federal Circuit,6 whereas the appellate channels in 

copyright cases are the usual, geographically dispersed ones. 

Trademarks 

The law of trademark protects words or pictures that identify the 

source of a product or service. Under state common law, a person 

commits the tort of unfair competition by “passing off” its product or 

service as that of another through deceptive or confusing use of words 

or pictures in identifying, advertising or packaging. The plaintiff must 

prove that its “mark” (or the shape or packaging of its product) has 

become “distinctive,” i.e., has come to be identified by the consuming 

public principally with that person as the source of the product, and 

that the defendant’s use of a similar mark on a similar product confuses a significant segment of the purchasing public. State and federal 

law permit owners of such marks to register them in a public record; 

 

5. 28 U.S.C. § 1338(a). 

6. See generally Herbert F. Schwartz, Patent Law and Practice (3d ed. Federal Judicial 

Center 2001). 
Copyright Law 

8 

such registration provides constructive notice and other advantages 

(typically evidentiary but some substantive). Suits under the federal 

Trademark Act (the Lanham Act)7

 are brought in federal court, 

whereas suits to enforce state common-law or statutory trademark 

rights may be brought in state courts. In either forum, the fundamental 

issues are the same: identification by the public of the mark with the 

plaintiff as the source (known as secondary meaning), and confusing 

use of the mark by the defendant on similar products or services. 

 Trademark rights generally begin when the mark is used in commerce (although a 1988 amendment of the Lanham Act made it possible to register a mark in the Patent and Trademark Office when there is 

merely “intent to use,” subject to other conditions); they last so long as 

the mark is used and retains its secondary meaning. Some graphic 

works, or words in conjunction with graphic works, that function as 

trademarks are also eligible for copyright protection, although many 

are not protectible for reasons that will be discussed in the next chapter. The figure of Mickey Mouse is a particularly well-known example 

of an image that is protectible both by copyright and by trademark (as 

a symbol identifying Disney products and entertainment services). 

Copyright protection begins earlier, when a work is fixed in tangible 

form, and can be enforced against copiers even without proof of the 

plaintiff’s use in commerce or of secondary meaning and confusion. 

Trademark protection is available for a longer period of time (potentially forever) and even against persons whose confusingly similar mark 

has been adopted independently and without copying from the plaintiff. 

Copyright and property law 

It is, finally, useful to draw a distinction between copyright law and the 

body of law that regulates the ownership of tangible personal property. 

Copyright is a form of “intangible” property. The subject of copyright—the words of a poem or the notes of a song—can exist in the 

mind of the poet or composer, or can be communicated orally, without being embodied in any tangible medium. Even when thus embod-

 

7. 15 U.S.C. §§ 1051 et seq. 
Chapter 1: History and Background 

9 

ied, it is possible for persons to recite a poem, sing a song, perform a 

play, or view a painting without having physical possession of the 

original physical embodiment of the creative work. (The painting can 

be viewed by means of a reproduction or a television transmission.) 

The Copyright Act attempts to draw a clear distinction between the 

literary, musical or artistic “work” that is protected against unauthorized exploitation in various forms, and the physical object in which 

that work is embodied by the author. It is possible to be the owner of 

one without being the owner of the other. 

 Although, for example, earlier copyright statutes referred to a 

“book” as the focus of copyright protection, the 1976 Act makes it clear 

that protection is for the “literary work” (i.e., the sequence of words or 

symbols) regardless whether the tangible medium in which that work is 

embodied is a book, a magnetic audiotape or a computer disk. A 

sculptor may create a bronze statue and sell it to another, who may in 

turn keep others from touching it and can place it on the back porch 

or in the basement; but the buyer does not have the right, accorded by 

copyright, to make and sell photographs or three-dimensional replicas 

of the statue. Those latter rights are held initially by the sculptor (as 

“author” of the sculptural work, under section 201(a) of the Act) and 

they may be retained by the sculptor despite the transfer of ownership 

of the physical object to another. 

 Section 202 of the Copyright Act expressly provides for the separation of copyright and chattel ownership, and sets forth default rules in 

the event of 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, including the 

copy or phonorecord in which the work is first fixed, does not of itself 

convey any rights in the copyrighted work embodied in the object; nor, in 

the absence of an agreement, does transfer of ownership of a copyright or 

of any exclusive rights under a copyright convey property rights in any 

material object. 

There is, then, a presumption that the exclusive rights that make up the 

copyright are not transferred when the physical object—the manuscript, the canvas, the sculpture—is transferred. To have an effective 
Copyright Law 

10 

transfer of the copyright, section 204(a) of the Copyright Act requires 

that there be “an instrument of conveyance, or a note or memorandum 

of the transfer, . . . in writing and signed by the owner of the rights 

conveyed or such owner’s duly authorized agent.” In sum, copyright is 

transferable intangible property, but an effective voluntary transfer 

requires clear and signed written evidence, and will not be inferred 

from an outright sale of the tangible object in which the work is fixed. 

All of the conventional state rules of chattel ownership are applicable 

with regard to that object, and are almost without exception not displaced by the federal Copyright Act. 

Copyright Office and Judicial Review 

Much of the work that is done in the administration of the Copyright 

Act is in the hands of the Copyright Office and its head, the Register of 

Copyrights. The Office, inter alia, handles applications for copyright 

registration, records transfers and other documents relating to copyright, and issues regulations (in volume 37 of the Code of Federal 

Regulations) about such matters as ineligibility for copyright, setting 

and distributing fees under the various statutory compulsory-license 

provisions, and the mechanics of registration and deposit. 

 Unlike most other federal administrative agencies, which are 

housed within the executive branch, the Copyright Office lies technically within the Library of Congress and is thus an arm of the legislative 

branch; the Register is appointed by the Librarian of Congress. Nonetheless, the Office operates very much as a typical federal administrative agency, most clearly in its promulgation of regulations that are 

designed to implement the Copyright Act. Section 702 of the Act expressly grants that power to the Register, and other provisions of Chapter 7 give the Register wide-ranging powers to run the Copyright Office 

and to be the voice of the U.S. Government in copyright matters. 

 An important provision in the Copyright Act with respect to the 

federal courts is section 701(e), which provides that (with very limited 

exceptions) “[A]ll actions taken by the Register of Copyrights under 

this title are subject to the provisions of the Administrative Procedure 

Act of June 11, 1946 . . . .” As with respect to judicial review of admin-
Chapter 1: History and Background 

11 

istrative agencies generally under the APA, courts give considerable 

deference to the regulations and other decisions and practices of the 

Copyright Office. Perhaps the most pertinent provision of the APA is 

5 U.S.C. § 706(2)(A), which provides: “The reviewing court shall . . . 

hold unlawful and set aside agency action, findings and conclusions 

found to be . . . arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law . . . .” 

 Thus, when the Register of Copyrights declines to register a submitted work, because the material deposited does not constitute copyrightable subject matter or because the claim is invalid for any other 

reason, this decision is subject to review in a federal court through 

application of the lenient “abuse of discretion” standard, a concession 

to the vast number of applications passed upon by the Copyright Office.8

 When, however, the Office registers a work, and the defendant in 

an infringement action asserts that the copyright is invalid, the courts 

treat this not as a direct and deferential review of the agency, but as a 

matter of law which is for the court to determine de novo.9

 This approach is buttressed by section 410(c) of the Copyright Act, which provides that a registration certificate issued within five years of first publication of a work (or before its publication) “shall constitute prima facie 

evidence of the validity of the copyright and of the facts stated in the 

certificate.” In other words, although the registration is helpful as an 

evidentiary matter in the presentation of the plaintiff’s case, it merely 

shifts the burden to the party challenging the validity of the copyright, 

an issue that then falls to the court to decide on its own. 

 On a wide range of issues, particularly when the application or 

interpretation of Copyright Office regulations or longstanding practices 

is called into play, courts quite uniformly give deference to the agency. 

This is generally viewed as dictated by the 1984 Supreme Court decision in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, 

Inc.10 Under the Chevron precedent, a court is to defer to an administrative agency whose interpretation of an ambivalent legislative provi-

 

8. Atari Games Corp. v. Oman, 979 F.2d 242 (D.C. Cir. 1992). 

9. OddzOn Prods., Inc. v. Oman, 924 F.2d 346 (D.C. Cir. 1991); Coach, Inc. v. Peters, 

386 F. Supp. 2d 495 (S.D.N.Y. 2005). 

10. 467 U.S. 837 (1984). 
Copyright Law 

12 

sion is “reasonable” or “permissible.”11 Courts have, for example, invoked this standard in affirming the Register’s definition of terms 

within the complex statutory provisions delineating various compulsory licenses.12 Even before the development of the Chevron standard, 

the Supreme Court had made it clear that courts should give weight to 

the statutory interpretation given by the Copyright Office, particularly 

when manifested in “contemporaneous and long continued construction . . . by the agency charged to administer” the Act.13 

 

11. Satellite Broad. & Commc’ns Ass’n of Am. v. Oman, 17 F.3d 344 (11th Cir. 1994) 

(court must defer even though Copyright Office interpretation disagrees with court’s 

own earlier interpretation; regulations may be struck down only if they contradict “clear 

meaning” or “plain language” of the Copyright Act). Cf. Bonneville Int’l Corp. v. Peters, 

347 F.3d 485, 490 n.9 (3d Cir. 2003) (disagreement whether to apply Chevron deference or 

so-called Skidmore deference). 

12. Cablevision Sys. Dev. Co. v. Motion Picture Ass’n of Am., Inc., 836 F.2d 599 (D.C. 

Cir. 1988) (deference to “reasonable” agency interpretation is dictated both because of 

agency’s expertise in dealing with a recurrent problem and because it is proper to allow 

agency to import policy choices when there is a statutory ambiguity). 

13. Mazer v. Stein, 347 U.S. 201 (1954). See also De Sylva v. Ballentine, 351 U.S. 570 

(1956) (dictum). See Morris v. Business Concepts, Inc., 283 F.3d 502, 505–06 (2d Cir. 2002) 

(agency’s “specialized experience and broader investigations and information” warrant 

deference, even if Chevron standard does not apply (quoting United States v. Mead 

Corp., 533 U.S. 218, 220 (2001))). 
13 

Chapter 2 

The Subject Matter of Copyright 

General Principles 

Copyright extends to all varieties of literary, artistic and musical works. 

To be eligible for copyright protection, however, such works must 

satisfy additional criteria, which find their source in the constitutional 

provision empowering Congress to enact copyright legislation. Article 

I, section 8, clause 8 of the Constitution gives to Congress 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.” Not only does this provision ensure 

that federal copyright may not be of perpetual duration, but it also 

requires that the congressional grant of copyright be to “authors” for 

their “writings.” 

 United States copyright law has therefore always required that a 

work manifest “original authorship” in a special sense, to be discussed 

below, and that it be “fixed” in some tangible form. Indeed, precisely 

these constitutional requirements are reflected in the language of section 102(a) of the Copyright Act of 1976: “Copyright protection subsists, in accordance with this title, 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, either directly or with the aid of a machine or device.” 

Original authorship 

The constitutional terms “author” and “writing” were given very broad 

interpretations by the first Congress, which in the first copyright statute, 

enacted in 1790, granted protection to “maps, charts and books.” 

Those two terms were also broadly construed by the Supreme Court in 

two seminal, and relatively early, decisions. In Burrow-Giles Lithographic Co. v. Sarony,

14 decided in 1884, the Court was confronted with 

 

14. 111 U.S. 53 (1884). 
Copyright Law 

14 

a constitutional challenge to Congress’s inclusion of photographs in 

the Copyright Act. It was argued that the photographic process was a 

purely mechanical one requiring no authorship and that a photograph 

was not a “writing” as that term was conventionally understood. The 

Court, however, held that an author is anyone “to whom anything owes 

its origin,” and that a writing is any “production” of an author that 

includes “all forms of writing, printing, engraving, etching, &c., by 

which the ideas in the mind of the author are given visible expression.”15 The Court noted that the photograph in litigation—a posed 

portrait of Oscar Wilde—exhibited “harmonious, characteristic, and 

graceful” placement of its subject and, rather than a purely mechanical 

reproduction, was “an original work of art, the product of plaintiff’s 

intellectual invention, of which plaintiff is the author.”16

 Justice Holmes expanded the concept of “authorship” even further 

in Bleistein v. Donaldson Lithographing Co.,

17 in which the Supreme 

Court upheld copyright in a color poster drawing of circus performers. 

Even if the performers had been drawn from life while actually engaged 

in their circus endeavors, the posters would not for that reason fall 

outside copyright protection any more so than would a portrait painted 

by Velasquez or Whistler. “The copy is the personal reaction of an 

individual upon nature. Personality always contains something unique. 

It expresses its singularity even in handwriting, and a very modest 

grade of art has in it something irreducible, which is one man’s alone. 

That something he may copyright . . . .”18 Although it was argued that 

the poster should be disqualified from copyright because it was a mere 

advertisement and not a work of “fine art” (a phrase that was then in 

the Copyright Act), Holmes rejected this argument in an often-cited 

and important passage: 

A picture is none the less a picture and none the less a subject of copyright 

that it is used for an advertisement. . . . 

 It would be a dangerous undertaking for persons trained only to the 

law to constitute themselves final judges of the worth of pictorial illus-

 

15. Id. at 58. 

16. Id. at 60. 

17. 188 U.S. 239 (1903). 

18. Id. at 250. 
Chapter 2: The Subject Matter of Copyright 

15 

trations, outside of the narrowest and most obvious limits. At the one extreme, some works of genius would be sure to miss appreciation. Their 

very novelty would make them repulsive until the public had learned the 

new language in which their author spoke. . . . At the other end, copyright 

would be denied to pictures which appealed to a public less educated than 

the judge. Yet if they command the interest of any public, they have a 

commercial value—it would be bold to say that they have not an aesthetic 

and educational value—and the taste of any public is not to be treated with 

contempt.19

 These cases, and many others decided at other times by other 

courts, firmly establish the principle that “authorship” and “originality,” although requirements for copyright protection, are readily found 

even in commonplace works of literature, art and music. “Originality” 

does not require that the work represent any kind of advance over the 

existing state of our culture; the patent requirements of “novelty” and 

“nonobviousness” are completely inapt in applying the law of copyright. In another well-known judicial passage, Learned Hand stated: 

[A]nticipation as such cannot invalidate a copyright. 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.20

 Indeed, even a copy of a work in the public domain—most obviously, a handmade copy of an old master painting—may be eligible for 

copyright protection because, as Holmes noted in Bleistein, it is inevitable that the copyist will bring some independent personality to his or 

her work. Copyright will be afforded if the copy is a “distinguishable 

variation,” that is, if the author has contributed something more than a 

“merely trivial variation,” something recognizably “his own.” “Originality in this context ‘means little more than a prohibition of actual 

 

19. Id. at 250–51. 

20. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936). See also 

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). 
Copyright Law 

16 

copying.’ No matter how poor artistically the ‘author’s’ addition, it is 

enough if it be his own.”21

 The principal source of legislative history for the 1976 Copyright 

Act, House Report No. 94-1476 (1976)—hereinafter referred to simply 

as the House Report—endorsed the expansive definition of the earlier 

cases. In discussing the phrase “original works of authorship” as it 

appears in section 102 of the Act, the House Report states that this 

undefined phrase “is intended to incorporate without change the standard of originality established by the courts under the present [1909] 

copyright statute. This standard does not include requirements of novelty, ingenuity, or esthetic merit, and there is no intention to enlarge 

the standard of copyright protection to require them.”22

 Despite this broad disclaimer, the Supreme Court has made explicit what was perhaps to be inferred from the earlier jurisprudence: 

that, in addition to the requirement of noncopying, there is a requirement that a work show some modicum of creativity before it is eligible 

for copyright protection. This latter requirement was delineated and 

applied by the Supreme Court in its very significant decision in 1991 in 

Feist Publications, Inc. v. Rural Telephone Service Co.23 The issue there 

was whether a telephone company could claim a valid copyright in a 

white-page directory that listed names (accompanied by telephone 

number and town) in alphabetical order. The Court stated: 

Original, as the term is used in copyright, means only that the work was 

independently created by the author (as opposed to copied from other 

works), and that it possesses at least some minimal degree of creativity. 

. . . To be sure, the requisite level of creativity is extremely low; even a 

slight amount will suffice. The vast majority of works make the grade 

quite easily, as they possess some creative spark, “no matter how crude, 

humble or obvious” it might be.24

The Court concluded that even though the plaintiff had engaged in 

useful efforts, and did not copy its directory from others, “[t]he end 

 

21. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951) (quoting 

Hoague-Sprague Corp. v. Frank C. Meyer, Inc., 31 F.2d 583, 586 (E.D.N.Y. 1929)). 

22. H.R. Rep. No. 94-1476, at 51 (1976). 

23. 499 U.S. 340, 346 (1991). 

24. Id. at 345 (emphasis added). 
Chapter 2: The Subject Matter of Copyright 

17 

product is a garden-variety white pages directory, devoid of even the 

slightest trace of creativity.”25 Alphabetical sequencing was found to be 

“time-honored,” “commonplace,” and indeed “practically inevitable.”26

 The requirement that a work, to manifest originality, must show 

some modicum of creativity, has been long reflected in regulations 

promulgated by the Copyright Office. 37 C.F.R. § 202.1(a) states: 

The following are examples of works not subject to copyright and applications for registration of such works cannot be entertained: . . . Words 

and short phrases such as names, titles, and slogans; familiar symbols or 

designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents. 

Short phrases and commonplace designs are thought to lack minimal 

creativity, or are likely to have been copied from others, or are too 

useful as literary or artistic “building blocks” for other works, so that 

they should be left free for others to use as well, without undue concern for inviting possible litigation. 

 Not surprisingly, the decided cases manifest some difference of 

view as to whether the copyright claimant has manifested a “modicum 

of creativity” or whether the allegedly infringed materials are too short, 

familiar or commonplace.27 The more a phrase is generic or descriptive, or the more it gives instructions to accomplish a functional objective, the more that courts are inclined not to permit copyright to interfere with others seeking to make practical use of the language. Courts 

have thus refused to extend copyright to such phrases as “apply hook 

to wall”28 and “priority message: contents require immediate atten-

 

25. Id. at 362. 

26. Id. at 363. 

27. Compare Tin Pan Apple Inc. v. Miller Brewing Co., 30 U.S.P.Q.2d 1791 (S.D.N.Y. 

1994) (“Hugga-Hugga” and “Brr” are “more complex than [a] single drum beat and . . . in 

that complexity lies, arguably at least, the fruit of creativity”), with Perma Greetings Inc. v. 

Russ Berrie & Co., 598 F. Supp. 445 (E.D. Mo. 1984) (“along the way take time to smell the 

flowers” not copyrightable). 

28. E.H. Tate Co. v. Jiffy Enters., Inc., 16 F.R.D. 571 (E.D. Pa. 1954). But see Abli Inc. v. 

Standard Brands Paint Co., 323 F. Supp. 1400 (C.D. Cal. 1970) (label with instructive 

phrases held copyrightable). 
Copyright Law 

18 

tion”;29 and so too for a propped-up cardboard star with a large circle 

in the middle intended for use as a picture frame.30 But many courts 

(perhaps with the admonition of Justice Holmes in mind) are reluctant, 

at least in the case of graphic works—and now, computerized audiovisual works—to find particular ones too trivial for protection.31

Tangible medium of expression 

As already noted, the additional requirement in section 102 of the 

Copyright Act of 1976—that works to be protectible by copyright must 

be “fixed in any tangible medium of expression, now known or later 

developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or 

device”—is derived from the constitutional requirement that Congress 

protect “writings,” as that word has been liberally construed. Only 

rarely has the vast enlargement of the word “writings” been questioned. 

Justice Douglas did so, in a 1954 concurring opinion,32 in which he 

stated that it was not obvious to him that “statuettes, book ends, clocks, 

lamps, door knockers, candlesticks, inkstands, chandeliers, piggy 

banks, sundials, salt and pepper shakers, fish bowls, casseroles, and ash 

trays,” all of which had been registered for copyright in the Copyright 

Office, are “writings” in the constitutional sense.33 Despite Justice 

Douglas’s doubts, there is no question that today these objects would 

be eligible matter for copyright protection, subject to certain limitations on the protectibility of shapes of useful articles.34 Moreover, the 

 

29. Magic Mktg. v. Mailing Servs., 634 F. Supp. 769 (W.D. Pa. 1986). 

30. Bailie v. Fisher, 258 F.2d 425 (D.C. Cir. 1958). 

31. See Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133 (2d Cir. 2004) (basic 

features of doll’s face); Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989) (remand 

to Register of Copyrights, who had refused to register video game with simple artwork); 

Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir. 1957) (upholding 

copyright in drawing of cakes on packages). But see John Muller & Co. v. N.Y. Arrows 

Soccer Team, 802 F.2d 989 (8th Cir. 1986) (soccer team logo, of arrows-within-arrows, 

lacking in original authorship). 

32. Mazer v. Stein, 347 U.S. 201 (1954). 

33. Id. at 221 (Douglas, J., concurring). 

34. Seeinfra pages 43–47. 
Chapter 2: The Subject Matter of Copyright 

19 

Copyright Act has since been amended so as to embrace within copyrightable subject matter such “writings” as architectural works, computer programs (even though intended to communicate only with a 

computer), and sound recordings (even though intended to communicate only to the human ear). 

 The statutory requirement that a work be “fixed” is of great 

significance for the application of the statute within our federal system. 

Federal copyright attaches immediately upon a work’s “creation,” i.e., 

when it is “fixed” for the first time, with the authority of the author, in 

a form that is “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more 

than transitory duration.”35 Before a work is “fixed,” states may grant 

the author protection against copying under their own statutory or 

common-law rules; an example would be an improvised comedic performance—or a “live” interview—being secretly taped by a member of 

the audience. But if, say, the comedic author has reduced his or her 

routine to writing, or captured it on an audiotape, the illicit recorder in 

the audience may be pursued only under the federal Copyright Act and 

only in a federal court.36 

 The statute contemplates that a work may be fixed either in a 

“copy” or a “phonorecord.” The latter is defined in section 101 as a 

material object in which sounds (other than a motion picture soundtrack) are fixed and from which they can then be communicated, either 

directly or with the aid of a machine. Examples of a “phonorecord” are 

a 33-rpm vinyl disk, an audiotape, a compact disk or a computer harddrive on which music has been recorded. A “copy” is a material object 

(other than a phonorecord) in which a work is fixed and from which it 

can be communicated. In general, a copy communicates a work to the 

eye, while a phonorecord communicates a work to the ear. In various 

situations under the statute, the distinction will matter; but fixation in 

either kind of tangible object is sufficient to bring a work under the 

federal statute. 

 Although the point of “creation” or “fixation” is ordinarily the 

focal point for dividing federal and state power to bar unauthorized 

 

35. Definitions of “created” and “fixed” in 17 U.S.C. § 101. 

36. 17 U.S.C. § 301. 
Copyright Law 

20 

copying, there is one significant exception. In 1994 Congress—

implementing the treaty known as the Agreement on Trade Related 

Aspects of Intellectual Property (TRIPs)—enacted section 1101 of the 

Copyright Act, which protects against unauthorized fixing or broadcasting of “the sounds or sounds and images of a live musical performance” (what has come to be known as “bootleg” recordings or broadcasts). Despite the protection being extended to “unfixed” performances (of a musical and not a dramatic nature), and despite the lack of 

any express time limitation upon the enforcement of the provision, it 

has been upheld as an exercise of Congress’s Interstate Commerce 

power rather than its power under the Copyright Clause of the Constitution.37 A contentious debate continues as to whether Congress may 

avoid the limitations expressly set forth in the latter constitutional provision by anchoring its powers instead under the Interstate Commerce 

Clause. In any event, section 1101(d) provides that state common-law 

or statutory rights and remedies directed against such “bootlegging” of 

live musical performances are not meant to be annulled. 

 Under the definition of “fixed” in section 101 of the Act, a radio or 

television broadcast simultaneously recorded by the broadcaster is 

“fixed” and thus within the coverage of the Copyright Act. For example, a television program of a professional sports event—which embodies original authorship in its camera-work and its selection of 

which camera images to display to the home viewer—falls within the 

federal Act by virtue of its taping simultaneously with its “live” transmission. Unauthorized recording or public performance of such a 

broadcast by others may thus constitute a federal copyright infringement. 

 The most significant issues arising in recent years regarding the 

“fixed in any tangible medium of expression” requirement have concerned new technologies. In the 1980s, a number of cases addressed 

challenges to the “fixed” nature of video games, typically as on view in 

game arcades but also as played on game consoles for home viewing. 

Defendants argued that the constantly changing images on the video 

 

37. United States v. Moghadam, 175 F.3d 1269 (11th Cir. 1999); Kiss Catalog, Ltd. v. 

Passport Int’l Prods., Inc., 405 F. Supp. 2d 1169 (C.D. Cal. 2005). Contra United States v. 

Martignon, 346 F. Supp. 2d 413 (S.D.N.Y. 2004) (appeal pending). 
Chapter 2: The Subject Matter of Copyright 

21 

game screen, subject to seemingly endless varieties of manipulation by 

the human user, rendered them “unfixed” and therefore freely subject 

to copying under federal law. The courts, however, consistently held to 

the contrary. As one court found, “[T]here is always a repetitive sequence of a substantial portion of the sights and sounds of the game, 

and many aspects of the display remain constant from game to game 

regardless of how the player operates the controls.”38

 More significantly, courts also rejected the argument that the program that creates screen displays (an application program) or that directly operates a computer (an operating-system program) is ineligible 

for copyright protection because it is embodied in a disk or in computer hardware that cannot be directly deciphered by a human. As to 

video games, it was held that “The printed circuit boards are tangible 

objects from which the audiovisual works may be perceived for a period of time more than transitory. The fact that the audiovisual works 

cannot be viewed without a machine does not mean the works are not 

fixed.”39 

 It was a natural step, but an important one, to hold that computer 

programs more generally—whether application programs or operatingsystem programs—are “literary works” (works “expressed in words, 

numbers, or other verbal or numerical symbols or indicia”) that are 

eligible for federal copyright protection once they are “fixed” in computer hardware, such as semiconductor chips.40 The fact that some 

such programs are designed to interact with the computer and not 

directly to generate human-readable screen displays does not negate 

compliance with either the “original authorship” requirement or the 

“fixed in a tangible medium” requirement of section 102(a) of the Act. 

 A question that remained after the decisions in the 1980s regarding 

the storage of computer programs within hardware components was 

whether a work becomes protected by federal copyright when it is entered into a computer’s temporary memory, or random access memory 

(RAM), which is lost when the computer is shut down. A passage in the 

 

38. Williams Elecs., Inc. v. Artic Int’l, Inc., 685 F.2d 870 (3d Cir. 1982). 

39. Midway Mfg. Co. v. Dirkschneider, 543 F. Supp. 466 (D. Neb. 1981). See also Stern 

Elecs., Inc. v. Kaufman, 669 F.2d 852 (2d Cir. 1982). 

40. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983). 
Copyright Law 

22 

1976 House Report had stated that there was no “fixation” when there 

was an “evanescent or transient reproduction” on a television tube or 

in the “memory” of a computer. But more thoroughly explicated passages in the report of the congressionally created Commission on New 

Technological Uses of Copyrighted Works (CONTU) led to a 1980 

amendment of section 117 of the Copyright Act which manifested an 

intention to treat such a temporary reproduction of a computer program, as is done simply by turning on the computer, as the making of a 

“copy” (section 117(a)(1)); and a further amendment of that section in 

1998 did the same (section 117(c)). (Those amendments accorded exemptions for such copying when unauthorized, if for the expected use 

of purchased programs or in connection with the “maintenance or 

repair” of the computer.) Courts, too, have equated temporary storage 

of a digitally expressed work with the creation of fixed copies. Several 

decisions concerning liability for communication of works over digital 

networks have held not only that the storage of works on a webpage 

produces a “copy” residing on the server that hosts the webpage, but 

that making the work available to users to download from the webpage 

is a distribution of copies to the users’ computers.41 It would follow 

that when, instead, the transient copy is made by the copyright owner, 

there is a “fixing” of the work that brings it within the reach of federal 

copyright. 

Categories of works 

After setting forth the requirements of original authorship and fixation 

in a tangible medium, section 102(a) as originally enacted in 1976 goes 

on to itemize a number of subject-matter categories for works of 

authorship, which “shall include” literary works, musical works, dramatic works, pantomimes and choreographic works, PGS (pictorial, 

graphic, and sculptural) works, motion pictures and other audiovisual 

works, and sound recordings. “Architectural works” were added in 

1990. Most of these categories of works are defined in section 101. Although Congress did not intend these listed categories to exhaust its 

 

41. E.g., Playboy Enters. Inc. v. Sanfilippo, 46 U.S.P.Q.2d 1350 (S.D. Cal. 1998); Playboy 

Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997). 
Chapter 2: The Subject Matter of Copyright 

23 

constitutional power to accord copyright protection, it appears that 

every litigated claim of copyright protection has been with respect to a 

work that fits comfortably within the itemized categories, and it is 

difficult to think of a creative fixed work that does not. 

 The statutory categories are very broadly defined. “Literary works,” 

for example, are defined as “works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or 

indicia, regardless of the nature of the material objects, such as books, 

periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in 

which they are embodied.” The House Report makes it clear that by 

using the term “literary,” Congress did not intend to import any requirement of “literary merit or qualitative value,” and that the term 

includes such works as catalogues, directories, and other compilations 

of data, and that computer programs and databases are embraced 

within the subject matter of section 102.42 Finally, it should be noted 

once again that the definition of “literary works” makes a sharp distinction between the work itself and the variety of physical forms in which 

it can be manifested; copyright protects only the former, while the 

physical object can be protected under state personal property law 

(which is distinct from and not preempted by the rights accorded under the federal act). 

The Distinction Between Idea and Expression 

Copyright protects against the unauthorized copying of an author’s 

“expression,” i.e., the particular pattern of words, lines and colors, or 

musical notes, and not against the copying of an underlying idea. This 

is a principal way in which copyright “promotes the progress of science 

and useful arts,” as contemplated by the Constitution, and is also a 

principal way in which the scope of copyright protection differs from 

that of patent protection. Although securing a copyright is easy—all 

that need be done is to “fix” an uncopied work embodying a “modicum” of creativity—and although copyright lasts much longer than a 

patent, the scope of copyright protection is much “thinner” because it 

 

42. H.R. Rep. No. 94-1476, at 54 (1976). 
Copyright Law 

24 

is limited to the expression. Although copyright protects against more 

than literal copying, and also bars paraphrase, abridgment and other 

“derivative works,” it does not afford an exclusive right to ideas, methods, facts and the like, no matter how startling the discovery or arduous the effort. 

 The major judicial pronouncement of this principle can be found 

in Baker v. Selden,

43 decided by the Supreme Court in 1879. There, 

Selden wrote a book describing a new system of bookkeeping, to which 

he appended certain forms, with various columns and headings, embodying his system. Baker copied the forms with minor changes. 

Selden claimed that Baker’s forms infringed his copyright; he contended that anyone using his bookkeeping system would have to use 

forms substantially similar to his. The Court framed the issue for decision as “whether the exclusive property in a system of book-keeping 

can be claimed, under the law of copyright, by means of a book in 

which that system is explained.”44 It held that copyright in a work that 

describes a practical method, system or process does not prevent others from putting that method, system or process into use; to secure 

such exclusive rights, the inventor must satisfy the more exacting requirements of the patent law. 

To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been 

officially made, would be a surprise and a fraud upon the public. That is 

the province of letters patent, not of copyright. . . . 

 . . . He may copyright his book, if he pleases; but that only secures to 

him the exclusive right of printing and publishing his book.45

 The Court went on to hold that if it was necessary for Baker to copy 

Selden’s forms in order to make use of the latter’s unpatented accounting system, then such copying would not be a copyright infringement. 

[W]here the art [that a work] teaches cannot be used without employing 

the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary 

 

43. 101 U.S. 99 (1879). 

44. Id. at 101. 

45. Id. at 102–03. 
Chapter 2: The Subject Matter of Copyright 

25 

incidents to the art, and given therewith to the public; not given for the 

purpose of publication in other works explanatory of the art, but for the 

purpose of practical application. 

 . . . 

 . . . [The bookkeeping system] was not patented, and is open and free 

to the use of the public. And, of course, in using the art, the ruled lines and 

headings of accounts must necessarily be used as incident to it.46

Despite the Supreme Court’s suggestion that the forms appended to 

Selden’s book were subject to copyright and could be infringed by 

persons copying the forms for “explanatory” purposes rather than for 

“use,” the Court somewhat confusingly concluded its decision by stating: “The conclusion to which we have come is, that blank accountbooks are not the subject of copyright.”47

Baker therefore stands for at least three important propositions in 

copyright law: (1) Copyright in a work does not cover ideas, concepts 

and systems described therein, but only the form of expression in 

which they are communicated; (2) if in order to duplicate or put into 

use an unprotected idea, concept, or system, it is necessary substantially to copy another’s otherwise copyrightable expression, such copying is not an infringement; and (3) blank forms—i.e., forms used for 

the recording of information rather than for explanation—are not eligible for copyright. 

 The first of these propositions, the most important, is now embodied in section 102(b) of the Copyright Act: “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.” In the words of the House 

Report, section 102(b) “in no way enlarges or contracts the scope of 

copyright protection” under prior law; its purpose “is to restate . . . 

that the basic dichotomy between expression and idea remains unchanged.”48

 

46. Id. at 103–04. 

47. Id. at 105. 

48. H.R. Rep. No. 94-1476, at 57 (1976). 
Copyright Law 

26 

 Apart from leaving in the public domain unpatentable or unpatented processes and systems, perhaps the most important impact of the 

idea–expression dichotomy is in the field of fictional literature. Copyright protects against the unauthorized copying or paraphrasing of a 

short story, novel or drama; it also bars other unauthorized “derivative 

works,” such as abridgments and translations; and it even protects the 

author against the copying of a detailed story line, with its plot incidents and sequences, even though the copyist uses altogether different 

language for description and dialogue.49 But copyright protection does 

not bar another from copying the more general patterns, themes or 

story ideas, or character prototypes.50 Where the line is drawn in 

fictional works—and indeed in all works, including music and art—

between protected expression and unprotected idea is not subject to a 

litmus test. As Learned Hand said: “Obviously, no principle can be 

stated as to when an imitator has gone beyond copying the ‘idea,’ and 

has borrowed its ‘expression.’ Decisions must therefore inevitably be 

ad hoc.”51

 It is also generally acknowledged that the determination of how 

generously to mark off protectible “expression” will depend on the 

nature of the work, for example, whether the work is fictional or fanciful, on the one hand, or is factual or functional, on the other. Too 

generous a characterization of material in the latter works as protectible expression runs a greater risk of interfering with the statutory policy 

favoring free access to discoveries, methods, systems and the like. 

 The second principle extracted from Baker is that even normally 

protectible material in a copyright-protected work may be freely reproduced when that is necessary in order to use the underlying unprotected system. It is often said in these cases, in which there are limited 

expressive options, that there is a “merger” between idea and expression, and that the latter becomes unprotected as well. Courts analyze 

these “merger” situations in at least two different ways: one leads to the 

 

49. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936). 

50. Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930). 

51. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). See 

generally Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005). Application 

of the idea–expression distinction is discussed infra Chapter 6 (at pages 106–10). 
Chapter 2: The Subject Matter of Copyright 

27 

conclusion that the work, although copyrightable, is rarely susceptible 

to infringement; the other denies copyrightability altogether. 

 The former approach is exemplified in Continental Casualty Co. v. 

Beardsley,52 in which the claim of copyright was in the text of a set of 

legal and business documents—a bond that had been drafted so as to 

cover the replacement of lost securities, along with an affidavit, a contract form, and a form of letter and board resolutions. The Court of 

Appeals for the Second Circuit held that the language of the forms was 

copyrightable because the forms were not blank as in Baker; but the 

court also held that because use of the forms necessitated copying 

them essentially verbatim, such copying would be permitted in order 

that the underlying business and legal “system” not be monopolized by 

way of copyright. The court thus granted a “thin” level of copyright 

protection: 

[The pertinent court decisions] indicate that in the fields of insurance and 

commerce the use of specific language in forms and documents may be so 

essential to accomplish a desired result and so integrated with the use of a 

legal or commercial conception that the proper standard of infringement 

is one which will protect as far as possible the copyrighted language and 

yet allow free use of the thought beneath the language. The evidence here 

shows that [the copyist] in so far as it has used the language of [the copyrighted] forms has done so only as incidental to its use of the underlying 

idea.53

 A different and well-known formulation of the “merger” doctrine is 

found in the case of Morrissey v. Procter & Gamble Co.,

54 where the 

Court of Appeals for the First Circuit held certain rules of a “sweepstakes” promotional contest uncopyrightable. The court found that 

there were only a limited number of ways that a person could vary the 

statement of the contest rules while making allowable use of the unprotected contest format. It stated: 

When the uncopyrightable subject matter is very narrow, so that “the 

topic necessarily requires,” if not only one form of expression, at best 

 

52. 253 F.2d 702 (2d Cir. 1958). 

53. Id. at 706. 

54. 379 F.2d 675 (1st Cir. 1967). 
Copyright Law 

28 

only a limited number, to permit copyrighting would mean that a party or 

parties, by copyrighting a mere handful of forms, could exhaust all possibilities of future use of the substance.55

The principle that copyright should not be extended even to “expression” when there is a finite range of ways to express an underlying subject matter has also been employed in the field of art, where it has been 

held that a piece of jewelry in the shape of a bee with small jewels arrayed on its surface reflected an unprotectible “idea.”56

 Closely related to the distinction between protectible expression 

and unprotectible idea is the distinction between expression and fact. A 

fact, or a group of facts, no matter how significant or how arduous the 

effort of discovery, cannot be protected by copyright against use, duplication or communication by others.57 That facts are unprotectible is 

supported in part by the exclusion of any “discovery” from copyrightable subject matter by virtue of section 102(b) of the Copyright Act 

of 1976, and in part by the observation that no person can be said to be 

the “original author” of a fact which he or she uncovers. Thus, the 

facts—and even speculations as to facts—that are unearthed by an 

historian or biographer can be reiterated by a copyist, provided the 

latter uses his or her own expressive language to do so.58 Although 

many courts both under the 1909 and 1976 Acts appeared to sustain 

copyright in factual research, and in data embodied in compilations, 

on the basis of “sweat of the brow”—the time, effort and expense invested in unearthing information—this approach has been unequivocally rejected by the Supreme Court. In Feist Publications, Inc. v. Rural 

Telephone Service Co.,59 decided in 1991, the Court referred to the 

“fact/expression dichotomy” and stated: 

 

55. Id. at 678. 

56. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971). See 

Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005). 

57. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). The principal exception to this proposition is when the facts are selected, coordinated, or organized in an 

“original” manner. The issue of “compilation copyright” is discussed infra pages 32–40. 

58. Miller v. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir. 1981); Hoehling v. 

Universal City Studios, Inc., 618 F.2d 972 (2d Cir. 1980). 

59. 499 U.S. 340 (1991). 
Chapter 2: The Subject Matter of Copyright 

29 

Notwithstanding a valid copyright, a subsequent compiler remains free to 

use the facts contained in another’s publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement. . . . Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted.60

 The final “offspring” of Baker to be discussed is its holding that 

“blank forms” are not copyrightable. This is reflected in the text of 

section 202.1(c) of the Copyright Office Regulations: 

The following are examples of works not subject to copyright and applications for registration of such works cannot be entertained: . . . blank 

forms, such as time cards, graph paper, account books, diaries, bank 

checks, scorecards, address books, report forms, order forms and the like, 

which are designed for recording information and do not in themselves 

convey information. 

The rationale for excluding protection for blank forms is partly that the 

forms are intentionally designed to be put into use in the course of 

implementing an unprotectible system. Moreover, a blank form with 

little or no writing might be thought to lack “original authorship” as 

required of all copyrightable works. Not surprisingly, courts have disagreed as to whether forms containing various degrees of text and 

graphic design should or should not be treated as “blank” and therefore unprotectible under Baker and regulation 202.1.61

Copyrightability of computer materials 

The idea–expression dichotomy—articulated by the Supreme Court in 

Baker v. Selden and by Congress in section 102(b) of the Copyright 

Act—and other copyright doctrines frequently applied to conventional 

literary and graphic works have also been applied by the courts in ruling upon the copyrightability of computer materials. Courts dealing 

with computer programs and screen displays have attempted to protect 

 

60. Id. at 349–50. 

61. See Bibbero Sys. v. Colwell Sys., Inc., 893 F.2d 1104 (9th Cir. 1990). Cf. ABR Benefits 

Servs. Inc. v. NCO Group, 52 U.S.P.Q.2d 1119 (E.D. Pa. 1999) (applying Third Circuit’s 

view that “blank forms may be copyrighted if they are sufficiently innovative that their 

arrangement of information is itself informative”). 
Copyright Law 

30 

expressive authorship without interfering with wide access to computer 

features that are either functionally dictated or are at a level of abstraction warranting treatment as an “idea.” 

 A computer program is defined in section 101 of the Act as “a set 

of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result” and is thus one form of 

“literary work” within the coverage of section 102(a). Whether expressed in so-called “source code” (written and read by a human being) or “object code” (the string of ones and zeroes meant to operate 

the circuitry of a computer), a computer program may embody sufficient creativity as to justify copyright. This was the intention of the 

Congress in 1980 when it amended the Copyright Act so as, among 

other things, to include the above-quoted definition, and in later 

amendments to the statute allowing certain copying of computer programs but only in narrowly defined circumstances.62 The federal courts 

of appeals have consistently held that a computer program—the sequence of instructions, not unlike an instructional manual written for 

humans—is copyrightable.63

Baker, however, teaches that copyright protection for computer 

programs and related materials should be accorded with an eye toward 

allowing the use of the program’s underlying principles. There is indeed an obvious facial tension between the definition of a computer 

program, intended to fall within the subject matter of copyright, and 

the mandate of section 102(b) that “methods of operation” shall not be 

given copyright protection. In any event, the House Report makes clear 

that copyright does not extend protection to the “methodology or 

processes adopted by the programmer.”64 And, by application of the 

“merger” doctrine espoused in Baker, if the detailed sequence of instructions in a copyrighted computer program is essentially necessary 

to implement such an unprotected methodology or process in an effi-

 

62. See 17 U.S.C. §§ 117(a), (c). 

63. Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992); Sega Enters., 

Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992). Perhaps the most illuminating discussion is to be found in the decision of the Court of Appeals for the Third Circuit in Apple 

Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983). 

64. H.R. Rep. No. 94-1476, at 57 (1976). 
Chapter 2: The Subject Matter of Copyright 

31 

cient fashion, then the program may lawfully be copied by others in 

the design of other programs.65 On the other hand, “if other programs 

can be written or created which perform the same function as an Apple’s operating system program, then that [Apple] program is an expression of the idea and hence copyrightable.”66

 Courts have applied this analysis so as to protect not only detailed 

computer-program language but also what have come to be referred to 

as the “nonliteral” elements of computer programs. By this is meant 

the structural features of a program that lie somewhere between the 

detailed commands of the program code and an abstract statement of 

the functional purpose of the program. This is based on the jurisprudence that, in conventional literary works such as novels and plays, 

treats the detailed story line and incidents as protectible “expression” 

and the more general themes as unprotectible “ideas.” The task of 

drawing the line between idea and expression in literary works of all 

kinds, including computer programs, is a demanding and somewhat 

unguided one.67

 The idea–expression dichotomy also applies with respect to computer screen displays, and the same principles of “merger” or “constraints” are utilized. If the colorful action scenes depicted on a screen 

in connection with a video game are essentially dictated by the subject 

matter—e.g., the appearance of a baseball diamond or football field or 

racetrack—courts will not protect these elements against copying, given 

the limited number of ways they can be visually expressed.68 In assessing copyrightability, the court must, however, consider the totality of 

 

65. Perhaps the most thorough and influential treatment of the nonprotection of 

“ideas” embodied in computer programs, and the application of the merger doctrine in 

this context, is in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 

1992). 

66. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 

1983). 

67. See infra Chapter 6, Infringement. 

68. Data E. USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988) (karate video game); 

Frybarger v. IBM Corp., 812 F.2d 525 (9th Cir. 1987) (mousetrap video game) (expression 

that is “indispensable” or “standard” is protectible only against “virtually identical copying”). These cases invoke the scènes à faire doctrine typically applied in literary infringement cases involving novels, plays and films. 
Copyright Law 

32 

the visual elements and not simply the discrete components (which 

might on their own be too “simple” to be protected).69

 There is less consensus about how best to apply the idea–

expression dichotomy in cases involving the copyrightability of socalled “user interface,” which is the set of commands given by a human user to a computer by striking certain keys or clicking on a screen 

image. For any given computer program, such as an accounting 

spreadsheet or a tax calculator, the commands meant to be chosen by 

the user may number in the hundreds, and they may be grouped or 

clustered under dozens of headings and subheadings; thus is formed a 

“menu command hierarchy” or “tree.” This interface is to be distinguished from the internal operations of the computer (protectible if at 

all by patent), the program that brings about those operations, and the 

screen display (the graphic presentation of the command tree on the 

computer monitor). Some courts have concluded that these commands, even viewed as a composite and not as individual words and 

keystrokes, are necessary to bring about the computer’s functioning 

and are thus a “method of operation” falling outside the scope of 

copyright protection by virtue of section 102(b).70 Other courts have 

concluded that, so long as these commands can be expressed and 

grouped together in a variety of different ways, then the way chosen by 

the plaintiff is “expression” and not an uncopyrightable idea or 

method of operation.71 

Compilations and Derivative Works 

In many kinds of copyrightable works, the authorship takes the form of 

“originality” in the expression of preexisting materials. An anthologist 

may collect and sequence poems written by others. A scholar may 

 

69. Atari Games Corp. v. Oman, 979 F.2d 242 (D.C. Cir. 1992). 

70. Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an equally 

divided Court, 516 U.S. 233 (1996); Mitek Holdings, Inc. v. ArcE Eng’g Co., 89 F.3d 1548 

(11th Cir. 1996). 

71. Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997). See also the cases upholding 

copyright in a detailed subject-matter taxonomy, e.g., American Dental Ass’n v. Delta 

Dental Plans Ass’n, 126 F.3d 977 (7th Cir. 1997). 
Chapter 2: The Subject Matter of Copyright 

33 

translate another’s play from French to English. A cataloguer may prepare a directory by gathering and organizing information about individuals or businesses. If there is original authorship manifested in the 

anthology, the translation, and the directory, these works are eligible 

for copyright protection—but only to the extent of the copyright 

claimant’s original contributions. If the underlying poems and play are 

in the public domain, as are the facts in the directory, they remain in 

the public domain for others to copy and base their works on. If the 

underlying poems and play are still in copyright, their use by the anthologist and the translator does not alter the duration or ownership of 

that copyright.72

 The anthology and the directory are examples of what the Copyright Act refers to as a “compilation.” A compilation as defined in section 101 is “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in 

such a way that the resulting work as a whole constitutes an original 

work of authorship.” The translation is an example of what is defined 

in section 101 as a “derivative work”: 

A “derivative work” is a work based upon one or more preexisting 

works, such as a translation, musical arrangement, dramatization, 

fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may 

be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, 

represent an original work of authorship, is a “derivative work.” 

 The relationship and differences between compilations and derivative works are well described in the House Report: 

Between them the terms “compilations” and “derivative works” which 

are defined in section 101, comprehend every copyrightable work that 

employs preexisting material or data of any kind. There is necessarily 

some overlapping between the two, but they basically represent different 

concepts. A “compilation” results from a process of selecting, bringing 

together, organizing, and arranging previously existing material of all 

kinds, regardless of whether the individual items in the material have 

 

72. 17 U.S.C. § 103(b). 
Copyright Law 

34 

been or ever could have been subject to copyright. A “derivative work,” 

on the other hand, requires a process of recasting, transforming, or adapting “one or more preexisting works”; the “preexisting work” must come 

within the general subject matter of copyright set forth in section 102, regardless of whether it is or was ever copyrighted.73

 Because copyright protection turns upon original creation, copyright in a compilation or derivative work attaches—as noted just 

above—only to those original contributions made by the compiler or 

by the creator of the derivative work. Section 103(b) of the Copyright 

Act provides: 

The copyright in a compilation or derivative work extends only to the 

material contributed by the author of such work, as distinguished from 

the preexisting material employed in the work, and does not imply any 

exclusive right in the preexisting material. The copyright in such work is 

independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material. 

A motion picture based on a classic novel will not remove the novel 

from the public domain; nor will it prevent another motion picture 

producer from basing a new film on the same novel, although the second filmmaker will be barred from copying original elements from the 

first film (most obviously, for example, music on the soundtrack). 

 Another important principle is set forth in section 103(a), which 

provides, in pertinent part: “[P]rotection for a work employing preexisting material in which copyright subsists does not extend to any part 

of the work in which such material has been used unlawfully.” Thus, 

an unauthorized translation of a copyrighted novel will infringe the 

exclusive right of the novelist to make derivative works, under section 

106(2); such unlawful use, which permeates the derivative translation, 

will render it uncopyrightable. If, however, the unauthorized use of the 

copyrighted novel were to take the form of, for example, a drama with 

music, it is likely that the music would be copyrightable, because it 

would not make unlawful use of the protected material in the novel. In 

the former example, the translator might well complain that, even 

 

73. H.R. Rep. No. 94-1476, at 57 (1976). 
Chapter 2: The Subject Matter of Copyright 

35 

though he might be an infringer, that fact does not justify denying him 

a claim against another who makes an unauthorized copy of his translation; Congress, however, has rejected that contention and has 

stripped the infringer of a copyright claim in his infringing material, no 

matter how creative it might be. 

 In the sections that immediately follow, compilations and derivative works are considered separately. 

Compilations 

It is possible for an author to gather a group of otherwise uncopyrightable elements, and by their minimally creative linkage to create a 

compilation that is protectible by copyright. The designer of a greeting 

card can pair a simple drawing on the outside with a simple phrase on 

the inside; it has been held that another’s card will infringe the “compilation” of the two elements even though its drawing is a bit different 

and the copied phrase is uncopyrightable.74 This decision pushed the 

concept of “compilation” to the brink by holding that only two coordinated elements will suffice; and it introduced an unfortunate phrase 

into the copyright lexicon by announcing that the “concept and feel” 

of the two cards were alike, so that the later card infringed (even 

though it is quite clear that copyright should not be used to protect 

either a concept or a feel). In any event, merely grouping disparate 

uncopyrightable elements will not necessarily create a “compilation”; 

courts have held that a compilation comes into existence only when 

there is some synergy among the elements.75 

 How the definition of “original work of authorship” applies to a 

compilation has for many years been a subject of considerable dispute. 

Both under the 1909 Act and the 1976 Act, a substantial number of 

courts had extended copyright protection to directories—even, routinely, to alphabetically organized white-page telephone directories—

 

74. Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970). 

75. Matthew Bender & Co. v. West Publ’g Co., 158 F.3d 674, 688 (2d Cir. 1998) (West’s 

“editorial enhancements” in its case reports do not together constitute a copyrightable 

compilation, but are rather a “piling up” of trivial elements “each in its discrete way in its 

discrete spot”); Sem-Torq, Inc. v. K Mart Corp., 936 F.2d 851 (6th Cir. 1991) (set of five 

placards, to be sold as a group in department store, not a compilation). 
Copyright Law 

36 

by giving weight (often only implicitly) to the effort, time, and expense 

devoted to gathering and organizing the underlying factual data that 

were themselves undeniably in the public domain. This rationale became known as the “sweat of the brow” or “industrious collection” 

theory. 

 In a major decision, Feist Publications, Inc. v. Rural Telephone Service Co.,76 the Supreme Court in 1991 explicitly and uncategorically repudiated the “sweat of the brow” theory as inconsistent with fundamental principles of copyright (as manifested both in the Constitution and 

the statute) and with the specific definition of “compilation” in the 

1976 Act. The Court in Feist defined “originality,” the prerequisite to 

copyright protection, to require not only independent creation (i.e., 

noncopying) but also “some minimal degree of creativity,” “some 

creative spark.” Although the Court acknowledged that “the requisite 

level of creativity is extremely low” and that “even a small amount will 

suffice,” it concluded that white-page telephone directories fail to satisfy this test. 

 Even the plaintiff directory compiler had conceded that the factual 

information contained in the book was in the public domain and unprotectible by copyright. The Court agreed; even assuming that such 

facts—name, telephone number, and town—were unearthed by the 

plaintiff, it could not claim authorship, for these facts did not “owe 

their origin” to, and indeed existed prior to, the plaintiff’s publication. 

 Nonetheless, the plaintiff claimed protection for the overall coordination and presentation of those facts. The Court therefore went on 

to parse the statutory definition of “compilation” and found it to compel the following conclusions: (1) merely collecting and gathering information, no matter how arduous it may be to do so, are not in themselves sufficient to warrant copyright; (2) compilations must satisfy the 

“originality” requirement in the same manner as all other kinds of 

works eligible for copyright and cannot properly be treated differently 

under any “sweat of the brow” theory; and, most important for the 

Court, (3) because the compiler of facts “can claim originality, if at all, 

only in the way the facts are presented,” there will inevitably be some 

 

76. 499 U.S. 340 (1991). 
Chapter 2: The Subject Matter of Copyright 

37 

fact-based works that lack the required “minimal level of creativity” in 

selection, coordination, and arrangement—“a narrow category of 

works in which the creative spark is utterly lacking or so trivial as to be 

virtually nonexistent.”77

Feist held—contrary to decades of decisions by lower courts—that 

the white-page telephone directory falls within that fatally flawed category. The plaintiff there might have worked hard in making a directory 

that was useful, but there was “insufficient creativity to make it original.”78 The Supreme Court found the selection of listings to have been 

obvious; so too were the book’s coordination and arrangement of facts: 

[T]here is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in 

tradition and so commonplace that it has come to be expected as a matter 

of course. . . . It is not only unoriginal, it is practically inevitable. This 

time-honored tradition does not possess the minimal creative spark required by the Copyright Act and the Constitution. . . . Given that some 

works must fail [the test of originality], we cannot imagine a more likely 

candidate. Indeed, were we to hold that [the plaintiff’s] white pages pass 

muster, it is hard to believe that any collection of facts could fail. 79

 Although the Court in Feist stated several times that the creativity 

requirement was a quite modest one (“no matter how crude, humble 

or obvious”), its reliance upon a subjective and unquantifiable standard (a modicum, a spark) has introduced an element of uncertainty—

as perhaps is inherent in the matter—in drawing a line between the 

copyrightable and the uncreative. (This line, the Court reminds us, 

finds its source not simply in the statutory language of section 102(a) 

but also in the word “author” in the Constitution.) Thus, in what was 

perhaps an overzealous application of the Feist authorship standard, 

the en banc Court of Appeals for the Eleventh Circuit held that the 

typical yellow-page telephone directory lacks creativity in the selection 

of some 7,000 classified headings (as to which there are a great number 

 

77. Id. at 359. 

78. Id. at 363. 

79. Id. at 363–64. 
Copyright Law 

38 

of options in nomenclature) and in the linking of some 100,000 business entities to those headings.80 

 Some sorts of familiar anthologies will almost certainly pass the test 

of original authorship, e.g., selecting a finite number of poems from 

among the entire corpus of world poetry throughout history, or even 

from among the poets of a particular nation in a particular literary time 

period. The statutory term “compilation” contemplates authorship in 

the manner in which preexisting works or data are “selected, coordinated, or arranged.”81 Although the poetry anthology will likely pass 

the test for all three kinds of intellectual endeavor, authorship in only 

one will suffice. Similarly, the Court of Appeals for the Second Circuit 

has held that a comprehensive listing of 18,000 baseball cards (with 

information about price and the like), and a designation of 5,000 as 

“premium” cards, represented a copyrightable work.82 It reached the 

same conclusion for the well-known directory of used-car values (the 

so-called Red Book), organized by make and model, five-year periods, 

and selected accessories.83

 But the same court found that the gathering of five discrete bits of 

daily information regarding redeemable bonds was inadequate to justify copyright protection for the cards embodying that information.84

And two courts of appeals have denied copyright protection to lists of 

numbers generated and compiled to identify product parts: fasteners 

such as screws in one case85 and automotive-transmission parts in the 

other.86 The courts invoked a number of theories—such as lack of 

originality, the idea–expression dichotomy, merger, scènes à faire, and 

short phrases—and declined to follow another circuit court’s grant of 

 

80. BellSouth Adver. & Publ’g Corp. v. Donnelley Info. Publ’g, Inc., 999 F.2d 1436 

(11th Cir. 1993) (en banc). But see Key Publ’ns, Inc. v. Chinatown Today Publ’g Enters., 

Inc., 945 F.2d 509 (2d Cir. 1991) (classified directory of businesses of likely interest to 

Chinese-American community in New York City). 

81. Section 101 (emphasis added). 

82. Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984). 

83. CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, 44 F.3d 61 (2d Cir. 1994). 

84. Fin. Info., Inc. v. Moody’s Investors Serv., 808 F.2d 204 (2d Cir. 1986). 

85. Southco, Inc. v. Kanebridge Corp., 390 F.3d 276 (3d Cir. 2004) (en banc). 

86. ATC Distrib. Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 

700 (6th Cir. 2005). 
Chapter 2: The Subject Matter of Copyright 

39 

copyright protection to a taxonomy taking the form of numbers used to 

identify various dental procedures.87

 Several cases of particular interest to lawyers and judges have involved claims by the West Publishing Company of copyrightability for 

certain “compiled” elements of its case reporters. On the one hand, 

West does not claim copyright in the text of the judges’ opinions as 

they issue from the courthouse; and on the other hand, even its competitors have acknowledged that West’s copyright does extend to its 

syllabi and headnotes, along with its key-system taxonomy and its tables and indices prepared by the West staff. 

 But in a case decided prior to the Feist decision, West Publishing 

Co. v. Mead Data Central, Inc.,

88 the LEXIS computerized research 

service announced its intention to incorporate in its screen displays of 

case decisions “star pagination” reflecting all page breaks in the 

unofficial West federal and regional reports. West prevailed in its claim 

that this would constitute an infringement of its copyright in its case 

compilations, which the Court of Appeals for the Eighth Circuit held 

reflected “authorship” in the distribution, sequencing and organization 

of cases. A flatly contradictory decision was issued by the Second Circuit Court of Appeals several years after Feist, by which time the technology had moved to the point that West’s competitors (Matthew 

Bender and Hyperlaw) sought to insert West page numbers in their 

CD-ROM products.89 In part because those numbers were found to 

derive not from West’s creativity but from the mechanical layout of its 

pages, the court held that its competitors could copy them, and it held 

the earlier case in the Eighth Circuit to have been erroneously decided. 

In a companion case,90 the Second Circuit also held that West’s various 

“editorial enhancements” to the courthouse opinions—such as case 

captions, attorney information, and insertion of parallel citations—

were too trivial, and too dictated by citation conventions, so that they, 

 

87. American Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977 (7th Cir. 1997). 

88. 99 F.2d 1219 (8th Cir. 1986). 

89. Matthew Bender & Co. v. West Publ’g Co., 158 F.3d 693 (2d Cir. 1998) (2–1 decision). 

90. Matthew Bender & Co. v. West Publ’g Co., 158 F.3d 674 (2d Cir. 1998) (2–1 decision). 
Copyright Law 

40 

both in isolation and as an alleged compilation, could be copied by 

West’s competitors.91

 The same principles that govern copyrightability of compilations 

will govern when the claim relates to the particularly modern-day 

compilation known as the computer database, which is no more than a 

collection of discrete factual data fixed in tangible form in a computer 

chip or disk. 

 Because of the legal uncertainties introduced by the Feist case into 

the matter of copyright protection for fact-based directories—at least 

exhaustive ones straightforwardly arranged—and in light of the time, 

effort and expense devoted to the preparation of many such directories, bills have been introduced in Congress that would protect hardcopy and computerized databases against unauthorized copying. These 

bills have been based not on copyright but rather on theories of misappropriation and unfair competition. As yet, no such bills have been 

enacted into law. 

Derivative works 

Although the 1991 Supreme Court decision in Feist has helped to 

eliminate much of the earlier uncertainty about the “original authorship” requirement in compilation cases, there remains a comparable 

uncertainty about the application of that requirement in cases involving derivative works. Derivative works require some sort of “recasting, 

transformation or adaptation” of underlying works within the subject 

matter of copyright. If a novel is translated into another language or is 

expanded into a motion picture film, there is usually little doubt that 

the translation and the film are copyrightable derivative works; they 

clearly incorporate creative and “distinguishable variations” beyond 

the underlying novel. Given the minimal standard of authorship—

essentially nonliteral copying—in copyright law, it is not surprising that 

modest but discernible variations on the underlying work (for example, 

 

91. See also Skinder-Strauss Assocs. v. Mass. Continuing Legal Ed., Inc., 914 F. Supp. 

665 (D. Mass. 1995) (holding directory of lawyers’ contact information uncopyrightable). 
Chapter 2: The Subject Matter of Copyright 

41 

a work of art translated from canvas to a woodcut or engraving) will 

sustain a copyright.92 

 Some courts, however, have applied the “authorship” requirement 

to derivative works in a way that arguably departs from these basic 

principles. The principles are particularly put to the test in cases in 

which the derivative art works derive their aesthetic worth and their 

economic value from the exactness of their verisimilitude to the underlying work. For example, in L. Batlin & Son, Inc. v. Snyder,

93 the Court 

of Appeals for the Second Circuit, sitting en banc, held that a plastic 

“Uncle Sam Bank” modeled on a cast-iron public domain bank from 

the late nineteenth century lacked sufficient elements of originality to 

warrant copyright protection. The copier had used Snyder’s plastic 

bank as a model for its own, and had not copied directly from the public domain bank. Although there were some purposeful design variations in Snyder’s plastic bank, the court found them to be trivial, not 

readily discernible, and largely dictated by the mechanical needs of the 

plastic-molding process.94 

 A similar demanding approach was used by the Court of Appeals 

for the Seventh Circuit, in Gracen v. Bradford Exchange,

95 in which an 

authorized drawing of the Dorothy (Judy Garland) character from the 

motion picture film The Wizard of Oz was found to lack sufficient creativity, even though it had been chosen as a contest winner. The court 

held that “originality” with respect to derivative works “is not to guide 

aesthetic judgments but to assure a sufficiently gross difference between 

the underlying and the derivative work to avoid entangling subsequent 

artists depicting the underlying work in copyright problems.”96 That is, 

the creator of a nearly exact derivative work, if given a copyright, could 

 

92. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951). 

93. 536 F.2d 486 (2d Cir. 1976) (en banc). 

94. See also Sherry Mfg. Co. v. Towel King of Fla., Inc., 753 F.2d 1565 (11th Cir. 1985) 

(variations in graphic design on towels were trivial, and improperly motivated). But see

Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982) (depicting Paddington Bear image as “smoother” and “cleaner” is nontrivial variation and thus copyrightable). 

95. 698 F.2d 300 (7th Cir. 1983). 

96. Id. at 305. 
Copyright Law 

42 

threaten litigation that would chill legitimate recourse by others to the 

underlying work. 

 Whether for this reason or another, some courts have imposed 

what appears to be a higher standard of authorship for derivative art 

works than for other subject matter within the coverage of the Copyright Act,97 or have accorded only “thin” copyright protection.98 It is 

not clear that this comports with the very low threshold for creativity 

announced by the Supreme Court in its Feist decision. 

Pictorial, Graphic, and Sculptural Works 

One of the categories of copyrightable works in section 102(a) of the 

Act is “pictorial, graphic, and sculptural works” (PGS works). The 

same requirement of original authorship obtains for artistic works as 

for literary works, and in neither case does it import any standard of 

aesthetic merit or appeal—only noncopying and a minimal measure of 

creativity. The latter element has been reflected for many years in section 202.1(a) of the Copyright Office regulations, which excludes from 

copyright “familiar symbols or designs” and “mere variations of typographic ornamentation, lettering or coloring.” Even before the Supreme Court in Feist definitively announced the requirement of minimal creativity, courts had denied copyright to a cardboard displaystand in the shape of a circle within a five-pointed star,99 to a handful 

of overlapping angular lines (evoking arrowheads) in a sports-team 

logo,100 and to variations in color choices for map territories.101 

 On the other hand, “colorized” versions of motion picture films 

originally made in black and white have been declared by the Copyright Office generally to contain enough original authorship in color 

selection as to constitute separately copyrightable derivative works.102

 

97. Entm’t Research Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211 (9th 

Cir. 1997). 

98. Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003). 

99. Bailie v. Fisher, 258 F.2d 425 (D.C. Cir. 1958). 

100. John Muller & Co. v. N.Y. Arrows Soccer Team, 802 F.2d 989 (8th Cir. 1986). 

101. United States v. Hamilton, 583 F.2d 448 (9th Cir. 1978). 

102. 52 Fed. Reg. 23,442 (1987). 
Chapter 2: The Subject Matter of Copyright 

43 

Copyright has also been sustained in a realistic color drawing of a slice 

of chocolate cake, designed for use on a cake wrapper;103 and the same 

court of appeals, much more recently, overturned a summary judgment of noncopyrightability of the Barbie Doll’s nose, lips and eyes.104

It has, in fact, been held that the common snapshot or home motion 

picture film is eligible for copyright, given the photographer’s judgment regarding angle, placement, shading, timing and the like.105 This 

approach was extended by the Court of Appeals for the Ninth Circuit 

to protect a head-on product photograph of a bottle of vodka106—

although the court ultimately concluded that the “merger” of idea and 

expression justified only a “thin” copyright and held that a nearly identical photograph did not infringe.107

Useful articles 

Perhaps the most difficult issue that arises regarding the copyrightability of pictorial, graphic, and sculptural works concerns those works, 

typically “sculptural,” that serve useful functions, such as furniture, 

flatware, television sets, computers, garments, and automobiles. The 

pertinent law begins with an important Supreme Court decision, moves 

through some not altogether clear provisions of the 1976 Act, and continues today in a number of court decisions applying the statute in an 

inconsistent and uncertain manner. 

 Until 1954, when the Supreme Court decided Mazer v. Stein,

108 it 

was widely assumed that protection for the design of useful articles had 

to be secured through the design-patent law—which requires that the 

design be “novel” and “unobvious”—and that copyright protection 

was not available. In Mazer, the Court held that copyright protection 

could be extended to sculptural figures that were used as bases for 

lamps. The Court stated that, so long as the statues embodied originality, copyright was not displaced by virtue of the potential availability of 

 

103. Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir. 1957). 

104. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133 (2d Cir. 2004). 

105. Time, Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968). 

106. Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000). 

107. Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003). 

108. 347 U.S. 201 (1954). 
Copyright Law 

44 

design-patent protection or by the fact that the design was embodied in 

a useful article that was mass-produced and merchandised commercially. Since the Mazer decision, the Copyright Office has registered 

many ornamentally shaped useful articles. Section 113(a) of the Copyright Act now provides that the copyright in a PGS work “includes the 

right to reproduce the work in or on any kind of article, whether useful 

or otherwise.” 

 A perplexing problem that remained after Mazer was whether copyright could extend not simply to a separate and independent artistic 

drawing or sculpture that was incorporated as part of a useful article 

(such as the lamp base in that case), but also to attractively shaped 

useful articles in themselves. To permit the copyright owner to prevent 

the manufacture of a useful article would create the risk that copyright—quick and easy to secure, and long in duration—could be used 

to secure a patent-like monopoly over articles of manufacture without 

complying with the more exacting prerequisites for a product patent or 

a design patent. This concern induced several courts to hold under the 

1909 Act that copyright in a two-dimensional drawing of a useful article 

would not carry with it the exclusive right to manufacture the article 

itself, and that copyright was not appropriate for the overall threedimensional shape of such an article.109 Congress, in section 113(b) of 

the 1976 Act, approved these earlier precedents, simply by incorporating by reference the law as it had existed on December 31, 1977—in 

effect withholding from the copyright owner the exclusive right to finish or to build the object portrayed. 

 Congress attempted a formulation of the scope of protection for 

useful articles by its definitions in section 101. A “useful article” is 

defined as “an article having an intrinsic utilitarian function that is not 

merely to portray the appearance of the article or to convey information.” (A dress or an automobile is thus a “useful article” but a designer’s rendering in a drawing or photograph is not because it would 

 

109. E.g., Muller v. Triborough Bridge Auth., 43 F. Supp. 298 (S.D.N.Y. 1942) (plan for 

cloverleaf bridge approach). 
Chapter 2: The Subject Matter of Copyright 

45 

“portray the appearance of the article.”110) “Pictorial, graphic, and 

sculptural works” 

include two-dimensional and three-dimensional works of fine, graphic, 

and applied art, photographs, prints and art reproductions, maps, globes, 

charts, diagrams, models, and technical drawings, including architectural 

plans. Such works shall include works of artistic craftsmanship insofar as 

their form but not their mechanical or utilitarian aspects are concerned; 

the design of a useful article, as defined in this section, shall be considered 

a pictorial, graphic, or sculptural work only if, and only to the extent that, 

such design incorporates pictorial, graphic, or sculptural features that can 

be identified separately from, and are capable of existing independently of, 

the utilitarian aspects of the article.111

If, for example, a corkscrew is composed of a small plastic sculptured 

human head and a pointed spiral-shaped piece of metal, it is a PGS 

work, but copyright extends only to the sculptured head and not to the 

shape of the spiraling metal. 

 In the words of the House Report, the statutory definitions attempt 

to distinguish between “works of applied art protectible under the bill 

and industrial designs not subject to copyright protection.”112 The Report continues: 

A two-dimensional painting, drawing, or graphic work is still capable of 

being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like. The same is 

true when a statue or carving is used to embellish an industrial product 

or, as in the Mazer case, is incorporated into a product without losing its 

ability to exist independently as a work of art. On the other hand, although 

the shape of an industrial product may be aesthetically satisfying and 

 

110. Courts have disagreed on the question whether mannequins are “useful articles,” 

with the line apparently being drawn—somewhat unconvincingly—between human 

mannequins (yes), Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985), 

and animal mannequins (no), Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir. 

1996). See Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir. 2004). Animal masks are not “useful articles” (they portray an appearance) but animal costumes are 

(they function as clothing as well). See, e.g., Celebration Int’l, Inc. v. Chosun Int’l, Inc., 234 

F. Supp. 2d 905 (S.D. Ind. 2002). 

111. 17 U.S.C. § 101. 

112. H.R. Rep. No. 94-1476, at 55 (1976). 
Copyright Law 

46 

valuable, the Committee’s intention is not to offer it copyright protection 

under the bill. Unless the shape of an automobile, airplane, ladies’ dress, 

food processor, television set, or any other industrial product contains 

some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be 

copyrighted under the bill.113

As to the attractive shape of useful articles in themselves, Congress had, 

during the copyright revision process, formulated a separate body of 

legislation that would have extended a special 10-year term of copyright to “the design of a useful article” including its “two-dimensional 

or three-dimensional features of shape and surface, which make up the 

appearance of the article”; but this legislation was never enacted. Repeated efforts since to enact such design-protection legislation have 

been unsuccessful, except for the rather curious and particularistic 

protection accorded to the shape of vessel hulls.114

 The key to copyright protection of the features of useful articles 

thus depends on whether the feature is—in the words of the House 

Report—physically or conceptually separable from the utilitarian features. Examples given in the Report include a carving on the back of a 

chair or a floral relief design on silver flatware. Although copyrightability might be clear at that extreme, and noncopyrightability clear at the 

other extreme of a flat rectangular table top resting on four cylindrical 

legs at each corner, it is of course the intermediate cases that reach the 

courts, sometimes after a refusal by the Copyright Office to register the 

work. 

 The effort to apply the “separability” standard has not resulted in a 

clear or consistent pattern of decisions. In noteworthy decisions of the 

Court of Appeals for the Second Circuit, copyright protection has been 

upheld for an attractively contoured belt buckle (in part, no doubt, 

because many persons wore the buckle separately as pinned-on jewelry),115 but has been denied for the shape of mannequin torsos used 

for the draping of shirts in clothing stores (despite the allusion to the 

 

113. Id.

114. 17 U.S.C. §§ 1301–1332. 

115. Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980). 
Chapter 2: The Subject Matter of Copyright 

47 

sculptures of ancient Greece and Rome)116 and for the undulating 

“sine-curve” design of a bicycle rack.117 The Seventh Circuit has more 

recently drawn upon those decisions to develop a “separability” test of 

its own.118 All that can be said with any confidence is that the more 

flamboyant the shape, and the less the shape is dictated by the function, the more readily copyright will protect the overall shape of useful 

articles. 

Architectural works 

Another example of a useful article—one that has given rise to some 

difficulties in determining the proper scope of copyright protection—is 

architecture. Both under the 1909 Act and the 1976 Act as originally 

enacted, courts generally held that although architectural plans and 

three-dimensional models were copyrightable, that protection would 

not afford the copyright owner the exclusive right to build the structure 

depicted therein. By virtue of analysis stemming from Baker v. Selden,

119

courts were reluctant to permit copyright—rather easily secured and of 

long duration—to be used to prevent the construction of houses and 

office buildings; there was also, no doubt, reluctance to uphold copyright in architectural “styles” manifested in standard design elements. 

Under the “pre-1978 saving clause” in section 113(b) of the 1976 Act 

and the “separability” requirement in the definition of PGS works, 

these earlier precedents have been applied so that the unauthorized 

construction of a building would not constitute copyright infringement.120

 This body of law was significantly altered when, in October 1990, 

Congress amended the Copyright Act so as to extend its protection to 

the overall shape of three-dimensional works of architecture. The Architectural Works Copyright Protection Act, among other things, 

amended section 101 to define “architectural work” as “the design of a 

 

116. Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411 (2d Cir. 1985). 

117. Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987). 

118. Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir. 2004) (2–1 

decision). See also Bonazoli v. R.S.V.P. Int’l, Inc., 353 F. Supp. 2d 218 (D.R.I. 2005). 

119. 101 U.S. 99 (1879). 

120. Demetriades v. Kaufman, 680 F. Supp. 658 (S.D.N.Y. 1988). 
Copyright Law 

48 

building as embodied in any tangible medium of expression, including 

a building, architectural plans, or drawings. The work includes the 

overall form and elements in the design, but does not include individual standard features.” By protecting the “overall form” of buildings, 

and by defining “architectural work” separately from all other PGS 

works so that the “separability” requirement does not obtain for this 

particular category of useful article, the amended statute now makes it 

an infringement to construct a building that copies from another’s 

protectible two- or three-dimensional design. The purpose of the 1990 

statutory changes was to bring U.S. law more into harmony with the 

architectural-protection provisions of the Berne Convention.

 The protection for building designs is subject to certain statutory 

limitations found principally in section 120: it is not an infringement to 

draw or photograph a building that is “located in or ordinarily visible 

from a public space,” and the owner of a building embodying a copyrighted design does not infringe by making alterations to the building 

or by destroying it. Moreover, the extended copyright protection described here does not apply to buildings that were completed or “substantially constructed” before December 1, 1990.121

Works of visual art 

In what is perhaps an even more dramatic change in the Copyright Act 

than the inclusion of architectural works, the October 1990 amendments expressly accorded visual artists for the first time as a matter of 

federal law the rights of “attribution and integrity.” These are the two 

principal components of what is known in civil-law nations as “moral 

rights.” These rights—basically, the right to have a work attributed to 

the artist, and the artist’s right to prevent mutilation or destruction—

were granted by the Visual Artists Rights Act (VARA) of 1990 and are 

now set forth in section 106A of the Copyright Act (to be discussed 

more fully infra Chapter 6). 

 These two newly created statutory rights are given only to authors 

of what is defined as a “work of visual art” and not to authors of all 

pictorial, graphic, or sculptural works. The definition of a “work of 

 

121. Zitz v. Pereira, 232 F.3d 290 (2d Cir. 2000). 
Chapter 2: The Subject Matter of Copyright 

49 

visual art” (particularly the exclusions) is elaborate. It covers a painting, a sculpture, and a “still photographic image produced for exhibition purposes only,” in their embodiment as a single copy or in numbered and signed limited editions not in excess of 200. Excluded are 

works made for hire and a broad range of graphic works such as posters, technical drawings, applied art, motion pictures and other audiovisual works, art in books, newspapers and periodicals, and advertising122 and packaging materials. 

 These excluded categories of works remain within the definition of 

“pictorial, graphic, and sculptural works,” and they are accorded protection against unauthorized reproduction and unauthorized preparation of derivative works. They are not, however, protected against nonattribution or physical mutilation or destruction. 

 VARA therefore contemplates three sets of rights in art works—the 

copyright owner of a PGS work can assert the basic right of reproduction set forth in section 106; the artist who has created “a work of visual 

art” can assert the moral rights set forth in section 106A; and the owner 

of the physical canvas or sculpture can assert chattel ownership rights 

under state law. Section 106A(e)(2) expressly provides for this fragmentation of rights. 

 A dozen states have enacted similar “moral rights” statutes for the 

protection of artists; most of these laws are broader in both subjectmatter coverage and substantive rights than the federal Act. Section 

301(f) of the Copyright Act preempts the enforcement of state-law 

rights equivalent to those conferred by section 106A upon “works of 

visual art,” but this would allow states to grant rights of attribution and 

integrity to works that fall outside that federally defined phrase (such as 

motion pictures) and to grant perhaps more expansive substantive 

rights even to “works of visual art.” In any event, section 301(f) expressly saves state rights that extend beyond the life of the artist. 

 

122. Pollara v. Seymour, 344 F.3d 265 (2d Cir. 2003). 
Copyright Law 

50 

Pictorial and Literary Characters 

Owners of copyright in literary or pictorial stories have on occasion 

attempted to assert an exclusive right to the characters depicted 

therein. The right to continue certain characters in television series, or 

in novelistic and motion picture sequels, or video games, is of great 

economic value, as is the right to “merchandise” these characters on 

shirts, bed linens, dolls and other such paraphernalia. 

 Pictorial characters drawn for comic books or film cartoons are 

readily protected by copyright, as pictorial and graphic works, provided they meet the minimal requirements for “original authorship.”123

The copyrightable elements of an animated character have been said to 

“extend not merely to the physical appearance of the animated figure, 

but also to the manner in which it moves, acts and portrays a combination of characteristics.”124 

 Far less likely to be protected by copyright are characters who are 

delineated by words in literary works. Most such literary characters are 

“types” with a limited number of not uncommon personality attributes; 

their “character” is more a reflection of a story line or plot than of any 

intrinsic detailed nature. Literary characters as such are thus commonly regarded as falling on the “idea” side of the dichotomy between 

unprotectible idea and protectible expression. Frequently cited are the 

memorable lines penned by Learned Hand in 1930: 

If Twelfth Night were copyrighted, it is quite possible that a second 

comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, 

but it would not be enough that for one of his characters he cast a riotous 

knight who kept wassail to the discomfort of the household, or a vain and 

foppish steward who became amorous of his mistress. These would be no 

more than Shakespeare’s “ideas” in the play, as little capable of monopoly 

as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of 

Species. It follows that the less developed the characters, the less they can 

 

123. Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004); Walt Disney Prods. v. Air 

Pirates, 581 F.2d 751 (9th Cir. 1978) (Mickey Mouse parodied in defendant’s risqué comic 

books). 

124. DeCarlo v. Archie Comic Publ’ns, Inc., 127 F. Supp. 2d 497 (S.D.N.Y.), aff’d, 11 

Fed. Appx. 26 (2d Cir. 2001) (unpublished). 
Chapter 2: The Subject Matter of Copyright 

51 

be copyrighted; that is the penalty an author must bear for marking them 

too indistinctly.125

No court appears to have held that a strictly literary character (i.e., one 

described only in words intended for reading) that was the subject of 

litigation meets the standard of copyrightability, so that it would infringe to depict such a character (particularly without his or her name) 

in an altogether different tale. The Court of Appeals for the Second 

Circuit has however intimated, without elaboration, that the Hopalong 

Cassidy and Amos & Andy characters, in their textual description, pass 

Judge Hand’s test.126 

 Characters that are delineated through human actors on the motion-picture or television screen fall somewhere between cartoon or 

animated characters on the one hand and literary characters on the 

other.127 Although the decided cases are few, courts appear to be inclined to grant copyright to those film characters—perhaps indeed to 

an extent that affords copyright to stock character “types” and thus to 

literary “ideas.” Thus, a televised automobile commercial depicting a 

fast-driving debonair and handsome tuxedoed man, saving himself and 

his attractive female partner from the clutches of a high-tech villain, 

was held to infringe the James Bond character (even though that name 

was not used).128 And another district court held: “This Court has no 

difficulty ruling as a matter of law that the Rocky characters are delineated so extensively that they are protected from bodily appropriation 

when taken as a group and transposed into a sequel by another 

author.”129 This conclusion—resting on the Learned Hand test of de-

 

125. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (holding play, 

Abie’s Irish Rose, and its characters not infringed by motion picture, The Cohens and the 

Kellys). 

126. Filmvideo Releasing Corp. v. Hastings, 668 F.2d 91 (2d Cir. 1981); Silverman v. 

CBS, Inc., 870 F.2d 40 (2d Cir. 1989). 

127. See Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004) (“The description of a 

character in prose leaves much to the imagination, even when the description is detailed. 

. . .” Id. at 660. “[O]ne hardly knows what Sam Spade looked like. But everyone knows 

what Humphrey Bogart looked like.” Id. at 661.). 

128. Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., 900 F. Supp. 1287 

(C.D. Cal. 1995). 

129. Anderson v. Stallone, 11 U.S.P.Q.2d (C.D. Cal. 1989). 
Copyright Law 

52 

tailed “delineation”—was no doubt reinforced by the fact that Rocky, 

Adrian, Apollo, Clubber and Paulie had already been developed in 

three motion pictures and that their names were carried forward in the 

screenplay of the alleged infringer. 

Government Works 

It is obviously in the public interest that persons be able freely to quote 

from—and indeed to reproduce in full—federal statutes, regulations, 

court opinions, legislative and commission reports, and the like. Section 105 of the Copyright Act provides: “Copyright protection under 

this title is not available for any work of the United States Government, 

but the United States Government is not precluded from receiving and 

holding copyrights transferred to it by assignment, bequest, or otherwise.” In section 101, a “work of the United States Government” is 

defined as “a work prepared by an officer or employee of the United 

States Government as part of that person’s official duties.” The House 

Report states that the intention is to apply this definition in the same 

manner as the definition of “works made for hire” by employees in the 

scope of their employment.130 Not swept within the exclusion under 

section 105 would be a work commissioned by a branch of the U.S. 

Government and authored by an “independent contractor” or a freelance writer or artist. 

 As an example of the operation of these statutory provisions, one 

might consider this monograph on copyright law, prepared under contract for the Federal Judicial Center. Its author is not an “employee” of 

the U.S. Government, and so it cannot be prepared as part of any “official duties” with the Government. Accordingly, this monograph is 

eligible for copyright protection in the name of the author. (The 

author has in fact agreed voluntarily to transfer the copyright to the 

Federal Judicial Center, which may and does hold a valid copyright as 

transferee pursuant to section 105. It is, of course, for the Center to 

decide whether to enforce that copyright or rather to allow some or all 

members of the public to make copies.) Had the work instead been 

 

130. H.R. Rep. No. 94-1476, at 58 (1976). 
Chapter 2: The Subject Matter of Copyright 

53 

written by, say, an employee in the Copyright Office as part of his or 

her job responsibilities, it would indeed be treated as a work of the 

U.S. Government and would thus be ineligible for copyright protection. 

 No express provision of the Copyright Act similarly consigns to the 

public domain works prepared by employees of state and local governments. In 1888, however, the Supreme Court in Banks v. Manchester131 held that state judicial opinions are ineligible for federal copyright protection because state judges are paid with public funds (the 

implication being that the public is therefore the owner), and because, 

as a matter of policy, the public interest is served by free access to the 

law by persons expected to conform their conduct to it (a “due process” rationale). The same rationales were without much dispute extended to state legislation and administrative regulations. After an uncontentious century, the issue of copyrightability of official state materials has recently come to the fore in two contexts. 

 The first is the nature and range of state materials that are to be 

analogized to legislation and court decisions, with copyright denied. 

The Court of Appeals for the Second Circuit has held132 that official 

county “tax maps”—showing the ownership, size, and location of real 

property parcels in each of the political subdivisions of Suffolk County 

in New York—are not automatically stripped of copyright simply because they are authored by county officials and because they are used 

as a basis for the assessment of property taxes. The court held that the 

taxing statute affords the public adequate notice of their obligations, so 

that state ownership of the maps would create no problems of due 

process, and it remanded so that further evidence could be presented 

on the issue of the county’s need for copyright as a financial incentive 

for its mapmaking activity. 

 The second relevant issue of current importance is whether privately authored codes—such as building codes and fire codes, or even 

model laws—that are written by expert groups lose their copyright 

when they are adopted (often simply by reference) by a legislative 

 

131. 128 U.S. 244 (1888). 

132. County of Suffolk, N.Y. v. First Am. Real Estate Solutions, 261 F.3d 179 (2d Cir. 

2001). 
Copyright Law 

54 

body, say in a county or town. The few cases addressing this question 

have provided a less-than-definitive answer. However, the Court of 

Appeals for the Fifth Circuit, sitting en banc, concluded in 2002 in a 

sharply divided decision133 that—although such privately drafted codes 

are protected by copyright at the outset—they are thrust into the public 

domain when they are adopted by a town as its authoritative legal text, 

at least when such adoption is actively sought by the drafting body. 

The principles of Banks v. Manchester were held to be controlling, 

although the dissent concluded that a denial of copyright would pose a 

threat to the useful provision of such codes to busy and underfunded 

municipal entities. The majority distinguished the situation from the 

several cases involving the mere “reference” by a city or state to some 

copyrighted material, privately authored and already in private commercial use; in those cases, involving for example a state’s reference for 

insurance purposes to automobile values contained in the well-known 

Red Book (of the National Automobile Dealers’ Association), the courts 

have concluded that copyright is not lost.134 

 

133. Veeck v. Southern Bldg. Code Cong. Int’l, Inc., 293 F.3d 791 (5th Cir. 2002) (en 

banc). 

134. Practice Mgmt. Info. Corp. v. American Med. Ass’n, 121 F.3d 516 (9th Cir. 1997) 

(AMA coding system to identify medical procedures); CCC Info. Servs., Inc. v. Maclean 

Hunter Mkt. Reports, 44 F.3d 61 (2d Cir. 1994) (NADA Red Book auto values). 
55 

Chapter 3 

Duration and Renewal 

The Copyright Clause of the Constitution empowers Congress to grant 

exclusive rights to authors “for limited times.” The first United States 

Copyright Act, enacted in 1790, was patterned on the Statute of Anne of 

1710 and gave authors a 14-year period of protection for published 

works and a right to renew the copyright for 14 more years if the author 

was alive at the end of the first term. The renewal format, with two 

rather short terms of protection, was a feature of U.S. copyright law 

through 1977. The 1909 Copyright Act granted an initial term of protection for 28 years and a renewal term of another 28 years upon timely 

registration by the author or by certain designated statutory successors. 

Under the 1909 Act, an author of an unpublished work could invoke 

state common-law copyright protection indefinitely until the work was 

“published” (a term of art to be discussed at pages 86–89); for most 

unpublished works, the author had the option to secure federal copyright protection by registering the work with the Copyright Office. For 

published works, common-law copyright was preempted and protection could be secured only by compliance with the formalities of the 

federal act. 

 With the 1976 Copyright Act, effective January 1, 1978, both the 

starting point and ending point of federal copyright protection were 

changed. As already noted, copyright attaches as soon as a work is 

“created,” i.e., as soon as it is “fixed” in a tangible medium of expression. This is true even for works that were created before the effective 

date of that Act, whether those preexisting works were at the time published or unpublished. State common-law copyright for “fixed” works 

was from that date displaced by federal copyright.135

 The 1976 Act also dramatically altered the period during which 

copyright protection lasts, most notably by abandoning the renewal 

format for works created (or first published) after January 1, 1978, and 

substituting a term of protection for such works of the author’s life plus 

 

135. 17 U.S.C. §§ 301(a), (b). 
Copyright Law 

56 

50 years. The renewal provisions of the 1909 Act remain important, 

however, if only because disputes concerning renewal rights (who owns 

them? were they properly secured?) that accrued in 1977 or earlier will 

no doubt continue to be presented in future litigation. Moreover, Congress in the 1976 Act preserved the renewal format, with some modifications to be explored immediately below, for works first published 

between 1950 and 1977 (during the life of the 1909 Act) so that they still 

have fallen within that format as they have reached the twenty-eighth 

year thereafter (between 1978 and 2005). 

 A discussion of the renewal format is followed by a discussion of 

the term of copyright under the 1976 Act and the Sonny Bono Copyright Term Extension Act of 1998 (named for the late popular singer 

and congressman). 

The Renewal Format 

Under section 24 of the 1909 Copyright Act, the author or a person 

claiming copyright (for example, by way of an assignment) was entitled 

to a 28-year initial term of copyright protection. Although such protection was available for most unpublished works, the typical work protected by the statute was a work that had been “published,” i.e., distributed in copies to the public, with proper notice of copyright. Copyright protection continued for 28 years from the date of publication, 

and could be continued for another 28-year term upon timely application by the person designated in the statute: 

[T]he author of such work, if still living, or the widow, widower, or children of the author, if the author be not living, or if such author, widow, 

widower, or children be not living, then the author’s executors, or in the 

absence of a will, his next of kin shall be entitled to a renewal and extension of the copyright in such work for a further term of twenty-eight 

years when application for such renewal and extension shall have been 

made to the Copyright Office and duly registered therein within one year 

prior to the expiration of the original term of copyright. 

The renewal term, in effect, granted a statutory reversion of interest. 

Congress’s purpose was principally to afford to the author or the 

author’s family an opportunity to claim ownership and to make new 
Chapter 3: Duration and Renewal 

57 

transfers for a new remuneration, free and clear of any transfers of or 

encumbrances on the initial copyright term. An author who had conveyed copyright before or shortly after the publication of his or her 

work, at a time when its economic value was unknown or speculative, 

was given by Congress an opportunity to market the copyright a second 

time, when its economic value was more readily determinable. 

 If the author were not alive in the twenty-eighth year of the initial 

copyright term, the right to apply for and to claim the renewal copyright fell to the next available statutory successor. If the author left a 

widow, widower or children, such person(s) would become the 

owner(s) of the copyright for the renewal term. Despite the precise 

statutory language, the Supreme Court held that, in a case in which the 

author was outlived by a widow or widower and one or more children, 

all of those survivors would take ownership as a class, and the surviving 

spouse would not take all.136 The Court, however, did not have to determine whether the spouse takes half and the children divide the other 

half or whether all of the surviving family members share the copyright 

equally. Indeed, no lower federal court was called upon for a holding 

on this issue for nearly a century (after 1909), when in 2005 two different courts of appeals did decide the matter. The First and Sixth Circuit 

Courts of Appeals both held that the surviving spouse takes 50% of the 

renewal interest and the children share equally in the other 50%.137

 If the author left no widow, widower or children, then section 24 of 

the 1909 Act provided that the renewal copyright could be claimed by 

the “author’s executors.” As interpreted, this provision gave ownership 

of the renewal term to the executors as trustees for the persons named 

in the author’s will as legatees; the executor was not to hold the renewal copyright on behalf of the author’s estate, which would be subject to the claims of creditors. In default of any persons in the first 

three statutory categories, the author’s “next of kin” could validly claim 

the renewal term of copyright. 

 

136. De Sylva v. Ballentine, 351 U.S. 570 (1956). 

137. Venegas-Hernandez v. Asociacion de Compositores, Editores De Musica Latinoamericana, 424 F.3d 50 (1st Cir. 2005); Broadcast Music, Inc. v. Roger Miller Music, Inc., 

396 F.3d 762 (6th Cir. 2005). Both courts drew upon the per stirpes ownership principle 

found in the termination-of-transfer provisions of 17 U.S.C. §§ 203 and 304(c). 
Copyright Law 

58 

 An example will demonstrate the operation of the statutory renewal 

provision of the 1909 Act. If an author during his lifetime licensed a 

publisher to print and distribute his book in paperback form, and the 

author died unmarried and without children prior to the twenty-eighth 

year from the date of publication, the renewal term could be claimed 

by the author’s executors holding on behalf of the persons designated 

in his will. The publisher’s license would be terminated at the end of 

28 years, and the legatees could bargain for a new license with the same 

or a different publisher, for new compensation, free and clear of the 

earlier transfer. (As noted above, effective in 1978, 19 years were added 

to existing 28-year renewal terms, and another 20 years were added to 

those terms in 1998, for 67 total renewal years—and a possible 95 overall years of protection for such older works.) 

 It became common under the 1909 Act for a transferee of copyright 

to negotiate with an author for the ownership of both the initial and the 

renewal terms of copyright. Most conspicuously, in the case of popular 

musical compositions the popularity of which might well span beyond 

the initial 28-year term, the publisher wanted to ensure that it would 

have the right to derive income from sheet music and public performances into the renewal term. The statute made it clear that an author’s 

transfer of the renewal copyright during the initial term of copyright 

could not deprive the statutory successor—such as the widow—of her 

ownership of the renewal term in the event the author–husband was 

not alive in the twenty-eighth year. The statute did not make it quite so 

clear whether, in the event the author lived through the initial term, the 

renewal term to which the author was entitled would immediately be 

owned by the transferee. In other words, the statute left open the question whether an initial-term transfer of the renewal copyright would be 

valid and enforceable (if the author survived into the renewal term). 

 In a controversial 1943 decision, Fred Fisher Music Co. v. M. Witmark & Sons,

138 a divided Supreme Court held—despite the obvious 

author-protective purpose of the renewal format—that an early assignment of the renewal term was binding and valid. But all that can be 

transferred is the author’s contingent interest in that term, dependent 

 

138. 318 U.S. 643 (1943). 
Chapter 3: Duration and Renewal 

59 

upon his survival through the initial term. If, despite such a purported 

transfer, the author dies before expiration of the initial term, then the 

assignee’s contingent interest in the renewal term is terminated and the 

widow or children, or subsequent statutory successors, can assert superior claims to the renewal term. Of course, under Fisher v. Witmark, 

there would be nothing to prevent the assignee from securing from the 

widow or children valid transfers of their contingent interests in the 

renewal term. 

 The four-tiered succession to the renewal term, as outlined above, 

applies for most copyrighted works. Section 24 of the 1909 Act, however, listed a number of exceptions, the most important of which are 

works made for hire and “posthumous works”; both excluded categories were left undefined by the 1909 Act. In such cases, section 24 provided that “the proprietor of such copyright shall be entitled to a renewal and extension of the copyright” for the 28-year term upon timely 

registration. In other words, the person who was the owner of the 

copyright at the end of the initial term of copyright was the valid 

claimant of the renewal term as well—and family members were not 

given the sort of priority they had in the generality of copyrighted 

works as described above. This allocation of ownership of the renewal 

term was preserved in the 1976 Act, with “work made for hire” being 

defined and with the House Report endorsing a narrow view of the still 

undefined phrase “posthumous work.”139

 Although a feature of the U.S. Copyright Act for more than two 

centuries, the renewal format was almost unique in the world’s copyright jurisprudence and became subject to increasing criticism as many 

individuals (and even corporations) neglected, by oversight, to comply 

with the renewal technicalities, which required a timely filing of an 

application with the Copyright Office. For that reason, the 1976 Act 

provided that for works created or published thereafter, there would be 

a single term of protection measured from the death of the author. 

Works already in copyright under the 1909 Act were not disturbed, 

however, with respect to the renewal framework, and timely renewal 

still had to be secured in order to extend the term beyond the first 28 

 

139. See H.R. Rep. No. 94-1476, at 139–40, expressly approving the construction given 

in Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941 (2d Cir. 1975). 
Copyright Law 

60 

years. With inadvertent failures to renew continuing even after 1978, 

Congress decided in 1992 to provide for the automatic renewal of pre1978 works then in their first term of copyright. The law thus substituted the equivalent of a single 75-year term for the prior dual terms, 

by making the second term (extended by 19 years) vest without filing 

for renewal.140 Then, in 1998, the Sonny Bono Copyright Term Extension Act added another 20 years, for a total of 95. This means that pre1978 works then in their first term of copyright, i.e., works first published between 1964 and 1977 (inclusive), will enjoy the full 95-year 

copyright term, without having to register initially and then to renew 

the registration during the twenty-eighth year following publication. 

 However, Congress in 1994 coupled the new automatic-renewal 

arrangements with certain incentives to renew “voluntarily.” These are 

set forth in the rather elaborate provisions of section 304(a) of the 

Copyright Act. One such incentive, for example, is that with a voluntary renewal application the certificate of registration that is issued by 

the Copyright Office is to constitute prima facie evidence of the validity 

of the copyright and of the facts stated in the certificate (such as those 

relating to the author, date of publication, and the like). 

Derivative works prepared during the initial term 

A difficult and important question that arises from the renewal provisions of the 1909 Act as carried forward in the 1976 Act relates to the 

utilization, during the renewal term of copyright, of derivative works 

that had been validly prepared by others during the initial term of 

copyright in the underlying work. For example, the author and copyright owner of a novel might, during the initial copyright term, license 

another to prepare a motion picture based on that novel; the motion 

picture, which will typically involve substantial creative contributions 

by the film producer and those it employs (actors, director, cinematographer, composer), will itself be a copyrightable work. If the license 

expressly included the right to exhibit and distribute the derivative film 

 

140. See Kahle v. Ashcroft, 72 U.S.P.Q.2d 1888 (N.D. Cal. 2004) (sustaining constitutionality of automatic-renewal statute against Copyright Clause and First Amendment 

challenges). 
Chapter 3: Duration and Renewal 

61 

during the renewal term of the novel, and if the author of the novel 

survived into the renewal term, the film producer could lawfully continue to utilize the film during the renewal term of the novel. 

 If, however, the license did not expressly cover the renewal term, 

or if it did but the novelist died during the initial term of copyright in 

the novel and another person succeeded to the renewal copyright, then 

the question arises whether the film can continue to be exploited by its 

copyright owner during the renewal term of the underlying novel. 

 A strict application of the principles of the renewal format would 

suggest that once the renewal copyright in the underlying novel 

“springs back” to the author or to the author’s statutory successor, it 

does so free and clear of any licenses given during the initial term. 

Thus the continued exhibition or distribution of the film—which contains copyrightable elements from the novel—would constitute an infringement of copyright in the novel. Under this approach, not only 

would the novelist during the renewal term be able undeniably to license some other motion picture producer to base a new film on the 

novel, but he would also be entitled to renegotiate with the copyright 

owner of the first film for the right to continue its exploitation. This 

would, of course, deprive the producer or copyright owner of the first 

film of the fruits of its own copyrightable contributions, which may as a 

practical matter account far more for the film’s success than do its 

borrowed elements from the novel. 

 An arguably more equitable view would be that the creative and 

copyrighted derivative work, the motion picture film produced pursuant to a license from the novelist, should be treated as “taking on a life 

of its own” such that it can continue to be exhibited and distributed 

even after the beginning of the renewal term of copyright in the underlying novel. The film producer could not, however, produce a new film 

based on the underlying novel without the consent of the owner of the 

renewal copyright in the latter work. 

 The courts of appeals were unable to make a clear and consistent 

choice between these two theories.141 The Supreme Court ultimately 

 

141. Compare G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 (2d Cir. 1951) 

(the opera Madame Butterfly cannot be converted by initial licensee into a motion picture 

after renewal of the underlying novel), with Rohauer v. Killiam Shows, Inc., 551 F.2d 484 
Copyright Law 

62 

resolved the uncertainties when, in 1990, it decided Stewart v. Abend.

142

There, the Court held that the continued exhibition and distribution of 

the well-known Hitchcock film Rear Window, as well as the marketing 

of videocassettes of the film, constituted an infringement of the renewal 

copyright in the short story on which the film was based. The Court 

relied on the terms and legislative histories of the 1909 and 1976 Copyright Acts, and its own precedents, in holding that an author seeking to 

convey a license to create a derivative motion picture can transfer only 

the contingent interest that he has in the renewal term; if the author 

dies before the end of the initial term of the underlying story (as occurred in Stewart), the interest of his statutory successor to the renewal 

term cannot be diluted by the continued unauthorized exploitation of 

the derivative work. 

 In 1992, in addition to providing for the future automatic renewal 

of works originally published beginning in 1964, Congress allowed for 

“voluntary” renewals, and provided incentives to apply for the latter. 

One such incentive is that a person who voluntarily renews gets the 

benefits of the rule in Stewart that cuts off continued exploitation by 

others of derivative works they may have created during the initial term 

of an underlying work, while in the case of an automatic renewal section 304(a)(4)(A) now provides that “a derivative work prepared under 

authority of a grant of a transfer or license of the copyright that is made 

before the expiration of the original term of copyright may continue to 

be used under the terms of the grant during the renewed and extended 

term of copyright without infringing the copyright.” 

Duration of Copyright Under the 1976 Act 

The duration of copyright protection under the 1909 Act, which was in 

effect through the end of 1977, was as noted 28 years from the date of 

publication, with the possibility of renewal for an additional 28 years 

upon application to the Copyright Office in the twenty-eighth year of 

the initial term. This term of protection was significantly modified by 

 

(2d Cir. 1977) (Valentino film, Son of the Sheik, may be shown on television during the 

renewal term of the underlying novel). 

142. 495 U.S. 207 (1990). 
Chapter 3: Duration and Renewal 

63 

the 1976 Act and again by the 1998 “Sonny Bono Copyright Term Extension Act” (CTEA). Under the current law, the term of copyright 

protection depends principally upon what the copyright status of the 

work was on the effective date of the 1976 Act, January 1, 1978. Five 

situations are possible: 

 (1) If on that date a work was already in the public domain under 

the 1909 Act or earlier laws, the work remains in the public domain 

and no copyright protection is available.143

 (2) If on January 1, 1978, a work was in its initial 28-year copyright 

term under the 1909 Act, the copyright expires at the end of that term, 

unless the copyright is renewed by timely application. (Renewal was 

made automatic for works published between 1964 and 1977.) If it is 

renewed, the renewal term will last not for 28 years but rather for 67 

years (with 19 years having been added by the 1976 Act and another 20 

years by the CTEA). Section 304(a) so provides, for what is thus effectively a 95-year term of copyright. Although Congress was interested in 

extending the period of statutory copyright protection and discarding 

the renewal format, it nevertheless chose to retain that format for works 

then under federal copyright in order to avoid the undue disruption of 

expectations and transactions. 

 (3) Under section 304(b) of the 1976 Act, works in their renewal

term of copyright as of January 1, 1978, are to be automatically accorded an extended term of protection lasting for a total of 95 years 

from the date copyright was originally secured. In effect, the renewal 

term of such works is extended from 28 years to 67 years. Because Congress, as early as 1962, anticipated major imminent changes in the 

copyright law and particularly an extension of the period of copyright 

protection, it granted what are known as “interim extensions” of protection for works the renewal term of which was about to expire; these 

works were thus still in their renewal term when the 1976 Act became 

effective and had their copyright extended to the full 75-year term. For 

example, a work published and copyrighted in 1925, and renewed in 

1953, would in due course (under the 1909 Act) have fallen into the 

public domain after 1981; by virtue of the 47-year renewal term as so 

 

143. Transitional and supplementary provisions, section 103. 
Copyright Law 

64 

extended in 1976 and the 20-year extension of 1998, section 304(b) now 

keeps the copyright in existence through the year 2020. 

 It was largely for works such as those from the 1920s and 1930s—

motion pictures, songs (by Gershwin, Kern, Berlin and Porter), and 

novels (by Fitzgerald and Hemingway)—that Congress in 1998 enacted 

the CTEA, which kept these works from falling into the public domain 

after 75 years. The earliest works to benefit from the Act were published in 1923, and these will thus fall into the public domain not at the 

end of 1998 but rather at the end of 2018. Congress’s purposes were to 

provide for authors’ heirs at a time when individuals are living longer, 

to give them the benefit of the new technological and entertainment 

media, and to move the duration of U.S. works into closer conformity 

to the norm prevailing in Europe (where the long-prevailing term of 

life-plus-50-years was moved to life-plus-70-years in the course of the 

1990s). The 20-year extension granted by the CTEA, and its underlying 

rationales, were the targets of considerable criticism—particularly with 

respect to its retroactive application to works already created and published—and ultimately of a challenge that reached the Supreme Court. 

 In Eldred v. Ashcroft,

144 decided in 2003, the Court, with two Justices dissenting, sustained the CTEA against claims that the recurrent 

extensions of copyright violated the “limited times” restriction in the 

Copyright and Patent Clause of the Constitution; that the retroactive 

application of the CTEA could not “promote the progress of science” 

as required by that constitutional clause; and that the CTEA inhibited 

creative speech in violation of the First Amendment. The Court concluded that no heightened scrutiny was appropriate for assessing the 

validity of the CTEA; that Congress’s reasons for the 20-year extension 

were principally a legislative matter and were in any event tenable; and 

that retroactive application to existing works was a feature of the several 

congressional term extensions throughout our copyright history 

stretching back to the early nineteenth century (and even to the first 

Copyright Act of 1790). 

 (4) Perhaps the most significant step taken by Congress in the 1976 

Act, as originally written, with regard to duration was to provide in 

 

144. 537 U.S. 186 (2003). 
Chapter 3: Duration and Renewal 

65 

section 302(a) that “Copyright in a work created on or after January 1, 

1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the life of the author 

and fifty years after the author’s death.” The drafters of the law had 

concluded early in the revision process that the “28 plus 28” copyright 

term was inadequate and should be discarded. Authors were living 

longer than in 1909, and many were seeing their works fall into the 

public domain during their lifetime. The growth of communications 

media was lengthening the commercial life of many works. The renewal format, placing a premium on the definition of the elusive term 

“publication” as well as on timely renewal applications, resulted in 

unfairly shortened copyright protection in many cases. Finally, in the 

words of the House Report, “a very large majority of the world’s countries have adopted a copyright term of the life of the author and fifty 

years after the author’s death.”145

 The move to the formula of “life plus 50” also provided a clear 

measuring rod for the period of copyright protection and had the convenient byproduct of sending all of an author’s post-1977 works into 

the public domain at the same time, rather than on varying dates depending upon the date of initial publication. 

 By 1998, the nations of the European Union had added 20 years to 

the copyright term under their respective laws, and Congress decided 

to follow suit, in large measure to ensure that U.S. authors would have 

their works protected in Europe for as long as the works of European 

authors. The CTEA therefore added 20 years to all of the terms then 

provided in the 1976 Act, including the now life-plus-70 term provided 

for works first created after January 1, 1978, under section 302(a). 

 Having decided in the 1976 Act to measure copyright protection 

from the death of the author, Congress had to deal with certain instances where such a measure might lead to uncertainty in calculating 

the term. In the case of a jointly authored work—defined in section 101 

as a “work prepared by two or more authors with the intention that 

their contributions be merged into inseparable or interdependent parts 

of a unitary whole”—section 302(b) provides (as amended by the 

 

145. H.R. Rep. No. 94-1476, at 133–36 (1976). 
Copyright Law 

66 

CTEA) that “copyright endures for a term consisting of the life of the 

last surviving author and 70 years after such last surviving author’s 

death.” In the case of works made for hire, section 302(c) provides that 

copyright endures “for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever 

expires first.” This term applies whether the “employer–author” of a 

work made for hire is a human or a corporate person. The 95-frompublication/120-from-creation measuring period also applies to 

anonymous and pseudonymous works. 

 (5) The final category of work treated in the 1976 Act—a work created prior to January 1, 1978, but unpublished as of that date—is also 

made subject to the now “life-plus-70” period of protection. Because 

this would have the effect of throwing many works immediately into the 

public domain—for example, unpublished letters or manuscripts of 

eighteenth and nineteenth century authors—section 303 currently provides: “In no case . . . shall the term of copyright in such a work expire 

before December 31, 2002; and, if the work is published on or before 

December 31, 2002, the term of copyright shall not expire before December 31, 2047.” The provision affords such unpublished works 25 

years of protection under the federal act, in lieu of the potentially perpetual protection previously afforded by common-law copyright. It 

also provides the copyright owner of such work with an incentive to 

publish it during that 25-year period, by offering yet another 45 years 

of federal protection in the event of such publication. 

 Under the 1909 Act, the 28- and 56-year periods of protection were 

measured from the precise date of publication, resulting in often inconvenient calculations. Under section 305 of the 1976 Act, “all terms 

of copyright provided by sections 302 through 304 run to the end of the 

calendar year in which they would otherwise expire.” The key date, 

therefore, for such matters as applying for renewal copyright, the end 

of the renewal term, and the end of the “life-plus-70” term, will be 

December 31 of the pertinent year. 
Chapter 3: Duration and Renewal 

67 

Duration and Renewal: The Transition from the 1909 Act to the 

1976 Act

Date of Work 

When Protection 

Attaches 

First 

Term Renewal Term 

Created in 

1978 or later 

Upon fixation Unitary term of life plus 70 years (or, if 

anonymous or pseudonymous work, or 

work for hire, 95 years from publication, 

or 120 years from creation, whichever is 

first) 

Published 

1964–1977 

Upon 

publication 

with notice 

28 years 67 years, second term 

commenced automatically; 

renewal registration optional 

Published 

between 1923 

and 1963 

inclusive 

Upon 

publication 

with notice 

28 years 67 years, if renewal was 

sought, otherwise these 

works are in the public domain 

Published before 1923: the work is now in the public domain 

Created, but 

not published, 

before 1978 

On 1/1/78, 

when federal 

copyright displaced state 

copyright 

Unitary term of at least life plus 70 years, 

earliest expiration dates 12/31/2002 (if 

work remained unpublished) or 

12/31/2047 (if work was published by the 

end of 2002) 
Blank pages inserted to preserve pagination when printing double-sided copies.
69 

Chapter 4 

Ownership of Copyright 

The provisions of the Copyright Act that deal with the ownership of 

copyright are for the most part straightforward. They declare that the 

author of a work is the initial copyright owner; that joint authors are 

co-owners of copyright; that the employer in the case of a work made 

for hire is considered the author and is presumed to be the copyright 

owner; that copyright ownership of a contribution to a collective work 

is different from the copyright ownership of the collective work itself; 

that copyright may be transferred in whole or in part; and that copyright ownership is distinct from ownership of the physical object in 

which the copyrighted work is embodied (a distinction discussed supra

Chapter 1).146 What remains is to explicate these principles and also to 

consider the somewhat unusual provision of the Copyright Act that 

gives to an author who has transferred the copyright the power to terminate that transfer and recapture the copyright. 

Initial Ownership of Copyright 

Under section 201(a) of the Copyright Act, copyright ownership of a 

work vests initially in the author. The statute deals not only with works 

authored by an individual but also with works that are jointly authored 

and works that are prepared at the direction of others such as employers and commissioning parties. 

Joint works 

If the work is a “joint work,” the authors are co-owners of the copyright. The term “joint work” is defined in section 101 to mean “a work 

prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary 

whole.” If a popular song is created collaboratively by composer and 

lyricist, they are both regarded as co-owners of the copyright. If, how-

 

146. 17 U.S.C. §§ 201, 202. 
Copyright Law 

70 

ever, the tune is written initially as a purely instrumental work without 

lyrics, is marketed that way, and the lyrics are added at a later date by a 

lyricist at the composer’s invitation, the work is not a “joint work” 

within the statutory definition. 

 A work may be treated as a joint work under the Copyright Act 

even though the contributions of the collaborating authors are by no 

means equal, whether measured by quantity, quality, or commercial 

value. Even though, for example, the musical public may be enthralled 

by a song’s catchy melody and may have only the faintest recollection 

of the accompanying lyrics, both composer and lyricist will be treated 

as joint authors provided the statutory definition is satisfied. It is commonly recognized, however, that to be a joint author one’s contribution must be more than de minimis and must manifest original authorship. Therefore a homebuyer who makes suggestions or provides fragmentary sketches to an architect cannot claim joint authorship of the 

final and detailed architectural plans;147 an explanation by a business 

person to a computer programmer regarding the operations of the 

business and the desired functions to be performed through the program does not make the business person a joint author of the program;148 and a person does not become a joint author of a play merely 

by contributing factual research and general character suggestions.149

 In these situations, where there is a stark imbalance between the 

contributions of each of the two (or multiple) authors, the courts are 

concerned that a finding of joint authorship will result (as developed 

immediately below) in an equal sharing of the proceeds derived from 

the exploitation of the copyrighted work; before the “subordinate” 

author can make a convincing claim to such equal financial rewards, 

he or she must do more than contribute general ideas, suggestions or 

the like, and should bear the burden of protecting his or her financial 

 

147. Meltzer v. Zoller, 520 F. Supp. 847 (D.N.J. 1981). 

148. Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 609 F. Supp. 1307 (E.D. Pa. 1985), 

aff’d on other grounds, 797 F.2d 1222 (3d Cir. 1986). 

149. Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991). But see Gaiman v. McFarlane, 360 

F.3d 644 (7th Cir. 2004) (comic book joint authorship). There is some question whether, 

to be a joint author, one’s creative contribution—no matter how detailed and substantial—must be fixed in a tangible medium of expression. Meltzer, 520 F. Supp. 847 (homeowner did not “fix” specific suggestions). 
Chapter 4: Ownership of Copyright 

71 

interests through a negotiated contract.150 There is also an apparent 

concern that a less demanding rule will too readily invite claims of 

joint authorship on the part of any number of persons who are involved in a collaborative creative enterprise (such as putting the final 

touches to the text of a play or screenplay), and who make minor suggestions that are adopted by the playwright or director.151 To rationalize these safeguards, courts have come to adopt the approach that—in 

addition to the statutory requirement of a mutual subjective intention 

to merge contributions into a unitary work—it is also necessary, to 

create a joint work, that there be a mutual intention to share authorship, as manifested by shared credit or billing and by shared approval 

over revisions, promotion and the like.152 

 Although the copyright law has never expressly defined the nature 

of the co-ownership held by joint authors, courts through the years 

have treated joint copyright owners as tenants in common, each owning an undivided interest in the whole of the copyright. Each co-owner 

is therefore entitled to exercise all of the exclusive rights set forth in 

section 106 of the Act, or to license other persons to exercise those 

rights; but there is a duty to account to all other co-owners for their 

respective shares of the proceeds of authorized exploitation.153 Upon 

the death of a co-owner of copyright, his or her share passes pursuant 

to will or through the usual intestate channels; it is not automatically 

vested in the surviving co-owners. 

 Thus, if Composer and Lyricist together write a popular song, either one of them may license the performance of the song or its recording onto a motion picture soundtrack, subject to a duty to account 

to the other for half of the proceeds (subject to any contractual agreement to share in some other proportion). If Composer dies, his half 

interest in the copyright will pass to his widow if she is named as legatee in the will, and not to Lyricist by way of survivorship. 

 

150. See Childress, 945 F.2d 500. 

151. Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994). 

152. Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998). See also Aalmuhammed v. Lee, 202 

F.3d 1227 (9th Cir. 2000). 

153. Larson, 147 F.3d 195. 
Copyright Law 

72 

 If, however, the song was not created as a “joint work” within the 

statutory definition—for example, because the melody is written one 

year and the lyrics are added years later—then Composer would own 

the copyright only in the tune, and Lyricist would own the copyright 

only in the words. Neither could exploit the entire song, or license a 

third person to do so, without securing the consent of the other—and 

the duration of copyright protection would be calculated separately for 

each of the two components. 

Works made for hire 

A most important concept in the area of copyright ownership is the 

“work made for hire.” If a biochemist employed by a pharmaceutical 

company prepares as part of her duties a technical manual on the 

company’s research and development procedures, the manual would 

be a clear example of a “work made for hire.” In such a case, section 

201(b) of the Copyright Act declares that the employer rather than the 

creative human employee is considered the “author” for all purposes 

under the Act. Moreover, the employer is deemed to be the owner of 

the copyright unless the employer and employee agree otherwise in a 

signed writing. 

 Because characterizing a work as one “made for hire” has implications not only for ownership of copyright, but also for duration (as 

noted above, the “life-plus-70” formula does not apply) and other 

important aspects of the statute, it is useful to set out the statutory 

definition in section 101: 

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. 
Chapter 4: Ownership of Copyright 

73 

The elaborate definition is a congressional reaction to the failure of the 

1909 Act to define the phrase and to the confusion in much of the case 

law that had developed under that Act.154

 Despite the detail, the definition of “work made for hire” proved 

soon after 1978 to be a source of disagreement among a number of 

courts of appeals. In particular, there was confusion as to whether a 

commissioned work could become the equivalent of a work prepared 

by an employee when the commissioning party closely supervised the 

execution of the work by the independent contractor. A unanimous 

Supreme Court dispelled such a misconception in its 1989 decision in 

Community for Creative Non-Violence v. Reid,

155 which involved 

conflicting ownership claims in a statue that was prepared by a sculptor 

at the request of a group devoted to advocacy of the rights of the 

homeless. The Court examined the 1976 Act’s structure, its purpose, 

and the underlying legislative and judicial history, and concluded 

that—absent compliance with the strict requirements in the second 

part of the definition of “work made for hire”—a work will be such 

only if it is created within the scope of employment by a person found 

to be an “employee” under the rules of agency commonly applied in 

tort cases. There is to be essentially an airtight differentiation of works 

by employees and works by independent contractors, and the latter 

must fall within both the subject-category and writing requirements to 

be works made for hire. The Court held that whether the “employee” 

standard is satisfied is a factual determination to be made on a case-bycase basis by examining a number of circumstances. 

In determining whether a hired party is an employee under the general 

common law of agency, we consider the hiring party’s right to control the 

manner and means by which the product is accomplished. Among the 

other factors relevant to this inquiry are the skill required; the source of 

the instrumentalities and tools; the location of the work; the duration of 

the relationship between the parties; whether the hiring party has the 

 

154. For works created before 1978, the work-for-hire precedents under the 1909 Act 

will still govern. See Twentieth Century Fox Film Corp. v. Entm’t Distrib., 429 F.3d 869 (9th 

Cir. 2005); Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004). 

155. 490 U.S. 730 (1989). 
Copyright Law 

74 

right to assign additional projects to the hired party; the extent of the 

hired party’s discretion over when and how long to work; the method of 

payment; the hired party’s role in hiring and paying assistants; whether 

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

hiring party is in business; the provision of employee benefits; and the tax 

treatment of the hired party. See Restatement [of Agency, Second] 

§ 220(2) (setting forth a nonexhaustive list of factors relevant to determining whether a hired party is an employee). No one of these factors is 

determinative.156

 The outcome in Reid is of great significance to many freelance 

writers and artists whose works do not fall within the “independent 

contractor” subject-matter categories of the statutory definition, or who 

have not stipulated in writing that their work has been made for hire. 

Because under Reid their works will be found not to be works made for 

hire, the freelancers (or their surviving family members) are given the 

power, as will be seen shortly below, after a substantial number of 

years to recapture the copyright from the putative “employer” and to 

assert all the rights of ownership. The power to terminate copyright 

transfers does not apply to works made for hire.157

 Although the Supreme Court, in Reid, stressed the importance of 

advance predictability in resolving questions of ownership, the multifactor definition of “employee” that it borrowed from the Restatement 

of Agency is of course among the most elusive definitions in the law. 

Accordingly, courts of appeals have gradually come to identify those 

fewer elements that are the most important in applying the first part of 

the “work made for hire” definition: the hiring party’s right to control 

the manner and means of creation; the skill required; whether the hiring party has the right to assign additional projects; the provision of 

employee benefits; and the tax treatment of the hired party.158 Moreover, under the statutory definition, even an “employee’s” creative 

 

156. Id. at 751–52 (citations and footnotes omitted). 

157. Nor are the artist-protective provisions of the Visual Artists Rights Act (section 

106A of the Copyright Act) applicable to works made for hire. See Carter v. HelmsleySpear, Inc., 71 F.3d 77 (2d Cir. 1995). 

158. Aymes v. Bonelli, 980 F.2d 857 (2d Cir. 1992) (emphasizing in particular the latter 

two factors). 
Chapter 4: Ownership of Copyright 

75 

work will not be a work for hire if it is prepared otherwise than “within 

the scope of employment,” and here too the pertinent definition is 

provided by the Restatement of Agency.159

Collective works 

Another area of confusion under prior law had been the respective 

rights of, on one side, persons contributing articles to journals, magazines, encyclopedias, and other “collective works” and, on the other 

side, the person who owns copyright in the collective work. Section 101 

of the 1976 Act defines “collective work” as “a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are 

assembled into a collective whole.” Collective works are thus a species 

of “compilation,” and as with all compilations,160 a copyright in a collective work embraces only those elements of original authorship 

manifested therein, which may be no more than the choice of contributions and the sequence in which those contributions are published. 

 Section 201(c) makes clear that copyright in an individual contribution vests initially in the author of that contribution and is distinct 

from copyright in the collective work as a whole. Absent an express 

written transfer from that author, the owner of copyright in the collective work (e.g., the magazine) does not own the copyright in the individual contribution, but is presumed to have acquired “only the privilege of reproducing and distributing the contribution as part of that 

particular collective work, any revision of that collective work, and any 

later collective work in the same series.” The publisher cannot, therefore, revise the contribution itself or publish it in an altogether different magazine. 

 A significant question was decided in 2001 by the Supreme Court, 

interpreting the statutory language just quoted. In New York Times Co. 

v. Tasini,

161 freelance authors had contributed articles to (and been 

 

159. Shaul v. Cherry Valley–Springfield Cent. Sch. Dist., 363 F.3d 177, 185–86 (2d Cir. 

2004); Avtec Sys., Inc. v. Peiffer, 21 F.3d 568 (4th Cir. 1994). 

160. See supra pages 32–40. 

161. 533 U.S. 483 (2001). 
Copyright Law 

76 

paid therefor by) newspapers and magazines, which had published 

those articles in hardcopy form. Nothing was said, orally or in writing, 

about the electronic publication rights because in many cases the Internet and the CD-ROM were not yet on the scene when the freelancers 

authorized publication. When, at a later date, the newspapers and 

magazines licensed the distribution of those articles online (in LexisNexis, among other places) and on disks, the authors complained that 

they had never initially conveyed those rights and that they were thus 

entitled to new and separate compensation therefor. The respective 

rights of the publishers (the owners of copyright in the hardcopy collective works) and the authors turned upon whether the statutory presumption that the former may make “any revision of that collective 

work” embraced the incorporation of the articles in digital compilations. The Supreme Court held for the authors. The Court found that 

the articles were individually searchable from among the thousands of 

articles in the electronic databases and could be retrieved by the user 

altogether out of the context of the hardcopy collective work, so that it 

was a distortion of language to find that the latter had merely been 

“revised.” 

 Courts of appeals have differed, however, on the question whether 

there is an allowable “revision” under section 201(c) when the electronic version visually reproduces the totality of the pages and journal 

issues as they appeared in the print version, including photographs, 

advertisements and the like.162

Transfer of Copyright Ownership 

Copyright, like other forms of tangible and intangible property, can be 

transferred inter vivos or upon death from the author, or a subsequent 

copyright owner, and transferred again. This basic principle is affirmed 

in section 201(d)(1) of the 1976 Act, which provides: “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 

 

162. Compare Faulkner v. National Geographic Enters. Inc., 409 F.3d 26 (2d Cir. 2005), 

with Greenberg v. National Geographic Soc’y, 244 F.3d 1267 (11th Cir. 2001). 
Chapter 4: Ownership of Copyright 

77 

pass as personal property by the applicable laws of intestate succession.” 

 Under prior law, courts developed an important distinction between an “assignment” of copyright, which carried the entire copyright 

to a person who then was known as the “proprietor” or owner of copyright, and a “license,” which carried to another less than the entire 

copyright, for example, only the right to dramatize a novel or to publicly perform a musical composition. Copyright was generally said to 

be “indivisible,” in the sense that only one person at any given time 

could validly claim to “own” it. The concept of indivisibility and the 

distinction between an assignment and a license were important under 

the 1909 Act, because only the name of the “proprietor” could properly be placed in the copyright notice (the insertion of the wrong name 

could thrust the work into the public domain), and only the “proprietor” could bring an action for copyright infringement. 

 The 1976 Act made a significant break with the past when it abandoned the concept of indivisibility of copyright ownership along with 

its more dubious ramifications. Section 201(d)(2) provides: 

 Any of the exclusive rights comprised in a copyright, including any 

subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any 

particular exclusive right is entitled, to the extent of that right, to all of 

the protection and remedies accorded to the copyright owner by this title. 

Thus, a person who owns no more than an exclusive license to perform publicly a dramatic work or a musical composition (but not to 

make or sell copies) is nonetheless regarded as the “owner” of that 

right. It is that person who can properly bring an action for infringement of that particular exclusive right.163 The Copyright Act refers to 

the conveyance of either all rights or less than all rights as a “transfer,” 

and it eliminates the significance of characterizing a transfer as either 

an assignment or a license. 

 

163. Section 501(b). 
Copyright Law 

78 

 Under current law, what is important in connection with copyright 

transfers is whether the transfer is exclusive or nonexclusive.164 Section 

204(a) provides that “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.” 

Because section 101 defines “transfer of copyright ownership” to include both assignments and exclusive licenses, a grant of an exclusive 

license of any of the rights or subdivisions of rights in section 106 must 

be manifested in a signed writing if it is to be effective, by virtue of the 

copyright statute of frauds set forth in section 204(a). The grant of a 

nonexclusive license—for example, separate grants to several production companies to perform a dramatic work—will be valid even without a signed written memorial (although, of course, the practicing attorney will routinely give or take such a license by written agreement). 

Such a transfer can often be inferred simply from the conduct of the 

parties, without any kind of writing.165

 In the interest of maintaining intelligible records relating to copyright ownership, the Copyright Office not only registers initial (and 

renewal) claims of copyright but also records “any transfer of copyright 

ownership or other document pertaining to a copyright,” under section 

205(a) of the Copyright Act. Recordation of a transfer of copyright in a 

registered work will provide constructive notice of the facts stated in 

the recorded document; and, much like a recording system for real 

estate, copyright recordation will protect the transferee of the copyright 

against subsequent conflicting transfers even to good-faith purchasers.166

 

164. The influence of the old law, however, is still felt. For example, the Court of 

Appeals for the Ninth Circuit, incorporating doctrine developed under the 1909 Act, has 

held that the transferee of an exclusive right must, in order to make a valid retransfer of 

that right to a third party, give notice to and secure the assent of its own initial transferor. 

Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2003). 

165. Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (short footage was prepared 

at request of motion picture producer; for lack of a writing, this was found to transfer to 

the latter an implied nonexclusive license to incorporate the footage, and distribute it, as 

part of the film). 

166. Sections 205(c), (e), (f). 
Chapter 4: Ownership of Copyright 

79 

 Even when there is a valid transfer of an exclusive right—properly 

documented by a signed writing—there are many cases in which, after 

the passing of years and the development of a commercially remunerative new technology, the parties dispute whether the grant was meant to 

embrace the new technology. This first became an issue when dramatization rights were granted prior to the advent of motion pictures, and 

when film rights were granted prior to the advent of television. More 

recently, there have been disputes about whether the grant of film 

rights includes the right to make and distribute videocassettes and 

DVDs of the film, and whether magazine or book publishing rights 

embrace digital versions (online and in CD-ROM form). The principal 

complicating factor is that in most such cases the contract was made 

before the new technology was even known, let alone commercially 

widespread, so that it is something of a fiction to describe contract 

interpretation as a search for the parties’ “intentions.” 

 The court decisions (placing weight more on contract analysis than 

analysis of the Copyright Act) do not form a consistent pattern: some 

courts emphasize the lack of awareness of the new technology and the 

obligation of the drafter (usually the large media company) to make its 

intentions clear;167 other courts emphasize that new technologies will 

ordinarily be facilitated through a contract presumption favoring transfer of rights.168 Most recently, book publishers have been found not to 

have taken transfers of the right to publish in the form of electronic 

books, so that several major authors were held to have acted lawfully 

when conveying “e-Book” rights to digital publishers.169 And a similar 

result was reached (as explained immediately above) by the Supreme 

Court in New York Times Co. v. Tasini,

170 when the Court interpreted 

section 201(c) of the Copyright Act to give to a freelance author, rather 

 

167. E.g., Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1988) (music 

incorporated in motion picture, later distributed in videocassettes). 

168. E.g., Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481 (2d 

Cir. 1998) (Stravinsky’s transfer of music rights for Disney film Fantasia, later distributed in 

videocassettes) (relying on Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir. 

1968)). 

169. Random House, Inc. v. Rosetta Books, L.L.C., 150 F. Supp. 2d 613 (S.D.N.Y. 

2001). 

170. 533 U.S. 483 (2001). 
Copyright Law 

80 

than to his or her newspaper or magazine publisher, the right to distribute articles online and on CD-ROM, in the absence of an express 

contract to the contrary. 

Termination of Transfers 

An unusual and important feature of the 1976 Copyright Act is its grant 

to the author or to the author’s survivors of the power to terminate 

transfers of copyright. It will be recalled that the principal purpose of 

the renewal provisions of earlier U.S. copyright statutes was to give to 

authors the power at the end of the initial term of copyright to reclaim 

the copyright for a second term free and clear of any earlier transfers 

or encumbrances, and to afford authors an opportunity to renegotiate 

assignments and licenses with a better knowledge of the economic 

value of their works. It will also be recalled that the renewal right has 

been abolished for works created or first published on or after January 

1, 1978, the term of copyright protection of which is now the life of the 

author plus 70 years. If, for example, a work is created in 1979 and the 

author transfers copyright in 1980, that copyright might continue—

depending on when the author dies—for another 75 or 125 years, without any renewal term that can restore an unencumbered copyright to 

the author. 

 Congress therefore decided to grant to authors and their survivors 

a power to recapture the copyright, similar to the right to claim the 

renewal copyright provided under the 1909 Act and its predecessors. 

The very elaborate provisions for the termination of transfers of copyright are set forth in section 203. Given the background just recounted, 

the power to terminate under section 203 applies only to copyright 

transfers (and licenses), whether exclusive or nonexclusive, executed 

by the author on or after January 1, 1978. By serving a timely notice of 

termination, the author may effect such a termination—and recapture 

an unencumbered copyright—“at any time during a period of five 

years beginning at the end of thirty-five years from the date of execution of the grant.” Mindful of the controversial Supreme Court decision that held that the author could, during the initial term of copyright, validly transfer his interest in the renewal term, Congress pro-
Chapter 4: Ownership of Copyright 

81 

vided to the contrary in section 203(a)(5) with regard to the power to 

terminate transfers: “Termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to 

make a will or to make any future grant.”171 Although the termination 

power is inalienable, it must be exercised in a timely manner, through 

the proper procedures, and by the proper persons announced in the 

statute; the transfer is not terminated automatically when 35 years have 

passed. 

 Section 203 is detailed and complex, but its main points can be 

summarized here. The termination power does not apply to works 

made for hire, and it applies only to inter vivos grants made by the 

author (not by the author’s will, and not by the author’s widow, widower or children). If the notice of termination is to be served after the 

author’s death, then the author’s surviving family members may terminate the author’s earlier grant, provided they can amass more than one 

half of the author’s termination interest as calculated pursuant to a 

statutory formula (e.g., the author’s widow would own one half of such 

termination interest, and each of three surviving children one sixth). 

 Particularly significant is the provision, in section 203(b)(1), that 

A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its 

termination, but this privilege does not extend to the preparation after the 

termination of other derivative works based upon the copyrighted work 

covered by the terminated grant. 

Thus, the copyright is not necessarily returned to the author or family 

altogether unencumbered. For example, assume that our hypothetical 

novelist transferred in 1980 an exclusive license to base a motion pic-

 

171. The Court of Appeals for the Second Circuit held that, when an agreement 

settling a dispute about copyright ownership stipulated that the work had been “made 

for hire” many years before, this constituted an “agreement to the contrary” (because the 

termination power does not apply at all to works made for hire) and thus did not validly 

extinguish the author’s termination power. Marvel Characters, Inc. v. Simon, 310 F.3d 280 

(2d Cir. 2002). But compare Milne ex rel. Coyne v. Stephen Slesinger, Inc., 430 F.3d 1036 

(9th Cir. 2005) (1983 renegotiation by author’s heir revokes 1930 grant of Winnie the Pooh 

merchandising rights, and so deprives later heir of termination right under section 304(d) 

governing pre-1978 transfers). 
Copyright Law 

82 

ture on his novel, the motion picture is released in 1985, and the 

author terminates his transfer effective 2015. The motion picture producer (or its successor as copyright owner in 2015) may continue to 

exhibit and distribute the film thereafter, pursuant to the terms of the 

1980 license. But the film producer may not after 2015 remake the film 

with a new cast; that would be an infringement of the author’s recaptured copyright. 

 It is appropriate at this point to mention that the statute contains a 

different provision for termination of transfers of copyright that were 

made prior to January 1, 1978. Recall that Congress, in enacting the 

1976 Copyright Act, provided that works then in statutory copyright 

would have their term of renewal automatically extended from 28 years 

to 47 years (resulting in a total of 75 years of protection). Prior to the 

effective date of the statute, many persons had already transferred their 

renewal interests to third persons, with both parties believing that the 

renewal term would last for only 28 years. When Congress added 19 

years to the renewal term, effective January 1, 1978, it also decided that 

persons who had previously transferred their renewal interests should 

be allowed to recapture those transfers at the end of 56 years from the 

initial date of copyright, so that the statutory “windfall” of the additional 19 years could be enjoyed by the author or the author’s survivors, rather than by the then current owner of the renewal term. 

 Section 304(c) therefore provides that “in the case of any copyright 

subsisting in either its first or renewal term on January 1, 1978, other 

than a copyright in a work made for hire, the exclusive or nonexclusive 

grant of a transfer or license of the renewal copyright or any right under it, executed before January 1, 1978”—by the author or by any of 

the statutory successors to the renewal term under the 1909 Act, otherwise than by will—is subject to termination, effective 56 years from the 

date copyright was originally secured. The details regarding the serving 

of notice, the persons entitled to do so, the inalienable but nonautomatic nature of the termination right, and the like are essentially 

identical to those provided in section 203 for transfers made after January 1, 1978. 

 When Congress in 1998 added 20 years to the various copyright 

terms, it once again decided to address the issue of persons who had 
Chapter 4: Ownership of Copyright 

83 

transferred renewal interests prior to January 1, 1978, because neither 

such a transferor nor his or her transferee could have at that time foreseen the extension of the renewal term from 28 years to what is now 67 

years. Accordingly, section 304(d) provides that such a renewal-term 

transfer may be terminated (provided there has been no earlier termination and recapture of the 19-year addition) in the same manner, by 

the same class of persons, and with the same consequences as under 

section 304(c), effective during the five-year period beginning at the 

end of 75 years from the beginning of the copyright term.172

 In 1985 a divided Supreme Court rendered a controversial decision 

regarding the language in sections 203 and 304 that provides that when 

a copyright transfer is terminated, derivative works lawfully prepared 

under contract prior to termination may continue to be utilized after 

termination. In Mills Music, Inc. v. Snyder,

173 simplifying the facts 

slightly, a songwriter conveyed his interest in the initial and renewal 

terms of copyright to a music publisher, prior to January 1, 1978; the 

publisher in turn entered into licenses for the manufacture of phonograph records and tapes of the song, with the license fees to be paid 

half to the publishing company and half to the songwriter. When the 

songwriter’s widow validly terminated the transfer of the latter part of 

the copyright renewal term, effective 56 years from the date of initial 

copyright, there was no doubt that the recording company could lawfully continue to manufacture and distribute recordings of the song. 

The question that remained was whether the termination entitled the 

widow to 100% of the recording royalties or whether the publishing 

company (no longer the copyright owner) remained entitled to 50% of 

those royalties. The Court majority held that the publishing company 

could continue to collect 50% of the recording royalties “under the 

terms of the grant after its termination,” in the language of the statute. 

 

172. See Milne, 430 F.3d 1036 (1983 agreement with author’s heir displaced author’s 

1930 transfer, so that neither could be terminated under section 304(d)). 

173. 469 U.S. 153 (1985). 
Blank pages inserted to preserve pagination when printing double-sided copies.
85 

Chapter 5 

Copyright Formalities 

In the slightly more than a decade between 1977 and 1989, no feature 

of U.S. copyright law was more dramatically changed than the law relating to the so-called formalities of copyright—notice, registration and 

deposit. Most notably, Congress, effective March 1, 1989, eliminated 

the requirement that the copyright owner give public notice of his or 

her claim of copyright, a requirement that had been a central feature of 

our law since 1790. 

Formalities Under the 1909 Copyright Act 

Because the drafters of the 1976 Copyright Act did not intend to restore 

to copyright works that had previously fallen into the public domain,174

it is imperative to understand the somewhat Byzantine rules that had 

developed under the 1909 Act for purposes of determining when a 

work had been “published” so as to precipitate the requirement to 

place proper notice on copies of the work. Litigation taking place even 

in the twenty-first century will no doubt continue to bring before the 

federal courts claims that the plaintiff’s copyright on a work created 

prior to January 1, 1978, was lost by failure to comply with the notice 

requirements of the 1909 Act. 

 Under the 1909 Act, a work that was kept unpublished could be 

protected by state law against unauthorized copying, performance or 

other exploitation. State common-law copyright afforded to the author 

(or the author’s assignee) the right to publish a work for the first time. 

Once the work was published, state copyright protection was ousted, by 

virtue both of state law and of the federal statute. If such publication 

was accompanied by compliance with the federal statutory formalities—in particular the placement of proper notice on all copies distributed to the public—federal copyright protection was afforded. Section 10 of the 1909 Act provided that 

 

174. Transitional and supplementary provisions, section 103. 
Copyright Law 

86 

Any person entitled thereto by this title may secure copyright for his work 

by publication thereof with the notice of copyright required by this title; 

and such notice shall be affixed to each copy thereof published or offered 

for sale in the United States by authority of the copyright proprietor. 

Once federal copyright attached, it would last for 28 years from the 

date of publication, subject to renewal for another 28 years. 

 If, however, the owner of common-law copyright published the 

work but failed to place a proper copyright notice on the distributed 

copies, this was generally regarded as fatal to the copyright. If the 

wrong name was placed in the notice (i.e., the name of someone other 

than the “proprietor” of copyright), or if the year of publication was 

materially inaccurate, or if either of those elements was omitted or the 

notice was omitted altogether, the work would be thrust irretrievably 

into the public domain. Moreover, if the notice—even though accurate 

in form and conspicuous—was placed on the work in a location other 

than that dictated by the statute, it could be expected that a court 

would hold that this too was a fatal error and that the work had fallen 

into the public domain.175

“Publication” 

Determining when a work was “published” was thus crucial under the 

1909 Act, for it served to determine three important features of copyright protection: the demarcation between state and federal protection, 

the loss of all protection for failure to comply with federal formalities, 

and the beginning point from which the 28- or 56-year term of federal 

copyright was measured. 

 As was the case with almost all such crucial language, the 1909 Act 

did not define “publication.” It was therefore left to the courts to 

define, and the courts—sometimes federal and sometimes state—

generated a number of important interpretive rules. Perhaps most important was the rule that only a “general publication” would divest a 

work of copyright protection, while a “limited publication” would 

 

175. See Robert A. Gorman & Jane C. Ginsburg, Copyright: Cases and Materials, Chapter 5A (7th ed. 2006). 
Chapter 5: Copyright Formalities 

87 

not.176 The courts found a limited publication when a work was disseminated only to a limited group of persons for a limited purpose. A 

striking application of the doctrine was that of the Court of Appeals for 

the Ninth Circuit in Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc.

177 In that 1991 decision, the court addressed 

the question whether the distribution of 159 Oscar statuettes by the 

Academy between 1929 and 1941—without notices of copyright—

constituted a divestive general publication that thrust the familiar 

sculptural figure into the public domain. The court found that the 

Oscar was awarded only to a select group of persons, that the purpose 

was limited (to advance the art of motion-picture making), and that no 

recipient had the right of sale or further distribution. And in 1999, in 

Estate of Martin Luther King, Jr., Inc. v. CBS, Inc.,178 the Court of Appeals for the Eleventh Circuit, confronted with the question whether 

Reverend King lost the copyright on his epochal “I Have a Dream” 

speech, concluded that even Dr. King’s distribution of copies (without 

a copyright notice) to the news media was merely a “limited publication” because that was for the purpose of enabling the reporting of a 

newsworthy event and not a distribution directly to the general public. 

These cases clearly demonstrate that the limited-publication doctrine 

is, as the court stated in Academy of Motion Picture Arts & Sciences, “an 

attempt by courts to mitigate the harsh forfeiture effects of a divesting 

general publication.”179

 Other examples of limited publications that would not, in all likelihood, have required the use of a copyright notice (there were no 

squarely authoritative judicial decisions) are the distribution of a 

manuscript to several magazine or book publishers for the purpose of 

soliciting expressions of interest, and the distribution of the professor’s 

own teaching materials to students in a university course. 

 

176. Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211 (11th Cir. 1999); 

Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 

1446 (9th Cir. 1991). 

177. 944 F.2d 1446 (9th Cir. 1991). 

178. 194 F.3d 1211 (11th Cir. 1999). 

179. Academy of Motion Picture Arts & Sciences, 944 F.2d at 1452 (citing American Vitagraph, Inc. v. Levy, 659 F.2d 1023, 1027 (9th Cir. 1981)). 
Copyright Law 

88 

 Another important aspect of the definition of “publication” that 

evolved under the 1909 Act was the prevailing view that the performance of a work, no matter how many times to no matter how large an 

audience, would not constitute a publication that would divest the 

author of common-law copyright protection.180 The performance of a 

play, for example, every night to a packed house in a large theater 

would not be regarded as a divestive publication. The rule was also 

applied in the King case so as to preserve common-law copyright in 

the speech given by Dr. King to the 200,000 people in attendance and 

over radio and television broadcasts.181

 It therefore came to be understood that, in order for a work to be 

“published” for copyright purposes, tangible copies had to be distributed, essentially indiscriminately, to any interested member of the public. If a work was thus distributed, the copies had to bear a proper notice, or else the work would fall into the public domain. It was therefore generally understood that the exhibition of a painting or sculpture 

was not a divestive general publication, at least if the artist or gallery 

did not permit members of the public to photograph or make copies of 

the work.182 It was also held that the public distribution of phonograph 

records of a song did not constitute a divestive general publication, 

because the records were not eye-readable copies.183 This focus on 

eye-readability characterized the judicial interpretation of the 1909 Act 

in several important respects, though it has been essentially abandoned 

under the present Copyright Act. A few cases also raised the question 

whether the public exhibition of a motion picture or television film was 

 

180. Ferris v. Frohman, 223 U.S. 424 (1912). 

181. King, 194 F.3d 1211. 

182. Letter Edged in Black Press, Inc. v. Pub. Bldg. Comm’n of Chicago, 320 F. Supp. 

1303 (N.D. Ill. 1970). 

183. Rosette v. Rainbo Record Mfg. Corp., 354 F. Supp. 1183 (S.D.N.Y. 1973), aff’d per 

curiam, 546 F.2d 461 (2d Cir. 1976). In a striking departure, the Court of Appeals for the 

Ninth Circuit held in 1995 that the distribution of phonorecords did constitute a divestive publication under the 1909 Act. La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir. 

1995). Congress within two years overruled that decision by adding section 303(b) to the 

Copyright Act: “The distribution before January 1, 1978, of a phonorecord shall not for 

any purpose constitute a publication of the musical work embodied therein.” 
Chapter 5: Copyright Formalities 

89 

to be regarded as a divestive general publication, and it was usually 

held that such exhibition (like a performance) was not.184

 It has been a widespread misconception that copyright attaches to 

a work only when registration of the copyright is secured with the 

Copyright Office. Registration was not, under the 1909 Act (and is not 

today), a prerequisite of a valid copyright. All that was necessary to 

secure copyright in a published work under the 1909 Act was that a 

proper notice be placed on all publicly distributed copies. At that 

point, federal protection attached and the copyright owner could validly enter into transactions involving the copyright, such as assignments and licenses. Registration was, however, a prerequisite for the 

commencement of an action for copyright infringement,185 and registration for an initial copyright term was a prerequisite for a valid renewal application. 

Copyright Notice Under the 1976 Act 

Upon the effective date of the 1976 Copyright Act, January 1, 1978, the 

drastic consequences of failing to place a copyright notice on published works were initially ameliorated and ultimately eliminated altogether. From January 1978 through February 1989, notice was still required, but neither mistakes in nor complete omission of notice thrust 

the work into the public domain, and reasonable steps could be taken 

by the copyright owner to preserve the copyright. Since March 1, 1989, 

when the Copyright Act was further amended in order to permit United 

States adherence to the Berne Convention, the notice requirement has 

been eliminated completely for works published on or after that date. 

 Under the 1976 Act, federal copyright attaches to a work immediately upon its “creation,” i.e., its manifestation in a tangible medium of 

expression; common-law copyright is preempted and “publication” no 

longer serves as the dividing line between state and federal protection. 

Nonetheless, the federal protection that attaches once a work was fixed 

could—under the 1976 Act as originally enacted—be forfeited if proper 

copyright notice was omitted when the work was later “published.” 

 

184. See, e.g., Burke v. NBC, 598 F.2d 688 (1st Cir. 1979). 

185. See Washingtonian Publ’g Co. v. Pearson, 306 U.S. 30 (1939). 
Copyright Law 

90 

Both the act of “publication” and the requirement of notice thus continued to be significant under the 1976 Act. 

“Publication” 

Unlike the 1909 Copyright Act, the 1976 Act defines “publication”: 

“Publication” is the distribution of copies or phonorecords of a work to 

the public by sale or other transfer of ownership, or by rental, lease, or 

lending. The offering to distribute copies or phonorecords to a group of 

persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a 

work does not of itself constitute publication. 

“Publication” still requires an authorized distribution to the public, 

but the work may be distributed either in the form of “copies” that 

appeal to the eye or of “phonorecords” that appeal to the ear. Moreover, as was the case under the 1909 Act, neither public performance 

nor public display in itself constitutes the kind of publication that requires the use of a copyright notice. The statute also defines a “public” 

display or performance, a definition that can provide some guidance in 

determining whether a “distribution” of copies or phonorecords is “to 

the public”; this would contemplate a distribution to members of the 

public generally or to a substantial number of persons “outside of a 

normal circle of a family and its social acquaintances.” The distribution of a manuscript to a number of magazines for the purpose of generating an offer to print would most likely not be a publication, but the 

status of a distribution of teaching materials to a large class is somewhat unclear. 

The notice requirement 

In any event, given an authorized distribution of a work to the public 

in the form of copies, section 401 of the 1976 Act as originally enacted 

required that copyright notice be placed on each copy in order to preserve the copyright. Section 401(a) provided: 

 Whenever a work protected under this title is published in the 

United States or elsewhere by authority of the copyright owner, a notice of 
Chapter 5: Copyright Formalities 

91 

copyright as provided by this section shall be placed on all publicly distributed copies from which the work can be visually perceived, either directly or with the aid of a machine or device. 

Section 401(b) prescribes the form of notice; it is the familiar  or the 

word “Copyright” (or “Copr.”) plus the year of first publication and 

the name of the copyright owner. Section 401(c) announces a far more 

flexible set of rules than under the 1909 Act for the placement of the 

notice: it “shall be affixed to the copies in such manner and location as 

to give reasonable notice of the claim of copyright.” 

 Section 402 announces comparable rules for what is known as a “P 

notice” (), which is to be affixed to phonorecords that are distributed 

to the public, as a way of signaling that there is a claim of copyright in 

the sound recording as distinguished from the musical or literary work 

that is performed on the recording. 

 Before discussing the potential adverse effects of failure to comply 

with the notice provisions of sections 401 and 402, it is essential to 

point out that the mandated notice applies only to copies and phonorecords distributed to the public between January 1, 1978, and February 28, 1989. On March 1, 1989, the Berne Convention Implementation 

Act of 1988 went into effect. In order to make our law compatible with 

the Berne Convention, which forbids making compliance with formalities a condition of enjoying copyright protection, Congress for the first 

time eliminated the mandatory notice provisions of our law.186 This 

was accomplished by replacing the phrase “shall be placed” in sections 

401 and 402 with the phrase “may be placed.” The amended statute 

gives the copyright owner only one explicit incentive to place a copyright notice on copies and phonorecords distributed after March 1, 

1989: a defendant copying such a work will be unable to claim that it is 

an “innocent infringer” entitled thereby to reduced liability for damages. 

 

186. See Kahle v. Ashcroft, 72 U.S.P.Q.2d 1888 (N.D. Cal. 2004) (rejecting constitutional challenge to elimination of notice requirement). But the elimination of this formality is not retroactive. The rules relating to copyright notice for the 11-year period under 

discussion are preserved. See 17 U.S.C. §§ 405(a) & 406(a). 
Copyright Law 

92 

Effect of noncompliance for 1978–1989 publications 

An omission of copyright notice on works distributed prior to January 

1, 1978, is generally fatal to the copyright, whereas an omission on or 

after March 1, 1989, is of very limited significance. Only for copies 

distributed in the intervening 11 years are the mandatory-notice provisions of the 1976 Act important. 

 The consequences of noncompliance with those provisions are set 

forth in sections 405 and 406. Under section 405, a complete omission 

of notice from copies or phonorecords distributed by authority of the 

copyright owner does not invalidate the copyright if “the notice has 

been omitted from no more than a relatively small number” of such 

copies or phonorecords, or if the notice was omitted in violation of an 

express written agreement by which the copyright owner made the use 

of the notice a condition of the authority to distribute. Most 

significantly, section 405(a)(2) permits a copyright owner to “cure” the 

omission of notice from more than a “relatively small” number of copies or phonorecords, provided two steps are taken: (1) registration for 

the work is made prior to, or within five years after, publication without notice; and (2) “a reasonable effort is made to add notice to all 

copies or phonorecords that are distributed to the public in the United 

States after the omission has been discovered.” If, after the distribution 

without notice, registration is not secured within five years or reasonable efforts are not made to add notice to later-distributed copies or 

phonorecords, the copyright is invalidated and the work falls into the 

public domain. 

 For instances in which the copyright owner’s omission of notice 

was not fatal, Congress saw a need (during the period January 1, 1978, 

to February 28, 1989) to protect a person innocently relying on that 

omission of notice in copying or otherwise exploiting the work in question. Under section 405(b), such an innocent infringer is sheltered 

against an award of damages resulting from infringing acts committed 

before receiving actual notice that the copyright has been timely registered; however, even such an innocent infringer may be required to 

disgorge all or part of its profits and is subject to an injunction for the 

future. 
Chapter 5: Copyright Formalities 

93 

 On occasion, a copyright owner will attempt to comply with the 

notice provisions of the 1976 Act but will make an error or omission 

with regard to one component. Section 406 deals with the implications 

of such an error or omission in the name or date alone. The general 

framework is to protect a person who acts innocently in reliance upon 

the mistaken name; to use an erroneously early date as the measuring 

rod for copyright where the publication date is pertinent; and to treat 

an erroneously late date (by more than one year) as equivalent to a 

total omission of copyright notice—which will be fatal to the copyright 

unless cured within five years, a rather harsh sanction for an error that 

is typically of negligible significance in the administration of the copyright system. 

 Such oversights—by way of errors in the notice, or its total omission—manifested on copies and phonorecords distributed on or after 

March 1, 1989, will not result in any loss of copyright and will not give 

rise to any “innocent infringer” defenses (apart from possibly reducing 

the defendant’s exposure to damages in a very limited number of circumstances). The elimination of the notice requirement thus imposes a 

responsibility on putative copyists to investigate in the Copyright 

Office—or to inquire of author or publisher—to determine the status 

of recently published works that lack copyright notice. Despite this 

highly significant, and favorable, change in the law concerning copyright formalities, publishers have continued since 1989 to use copyright 

notices in any event, both because of human and institutional inertia 

and because the notice inexpensively serves the useful function of signaling that the work is in copyright and that copyists should beware (or 

secure a license). 

Deposit and Registration 

Much less need be said about the other two elements of formalities that 

have been a fixture of our copyright law since the beginning of the 

twentieth century: deposit and registration. In the interest of maintaining a full collection in the Library of Congress, section 407 of the 1976 

Copyright Act—unaffected by the 1988 Berne Implementation Act—

requires the copyright owner to deposit with the Copyright Office, 
Copyright Law 

94 

within three months after publication of a work, two copies or phonorecords of the “best edition” (subject to some exemptions). If no deposit is made, the Register of Copyrights may make a written demand 

for such deposit, and continued failure of the copyright owner to comply may result in a fine. Failure to make the required deposit will not, 

however, invalidate the copyright. There is, in any event, no requirement to deposit copies of unpublished works. 

 As distinguished from the requirement of deposit of copies of a 

published work, there is no requirement that the copyright owner register the copyright in the Copyright Office; registration is optional. Under 

section 408, a registration application may be filed with respect to either a published or unpublished work by “the owner of copyright or of 

any exclusive right in the work,” and is to be accompanied by the application fee (presently $30) and the deposit of copies or phonorecords 

of the work. A deposit made in compliance with the statutory requirement of section 407 also satisfies the deposit provision of section 408 

relating to registration. 

 Although registration is not a condition of a valid copyright, it has 

been a prerequisite for the commencement of an infringement action, 

both under the 1909 Act and the 1976 Act as originally enacted.187 The 

1976 Act contains other incentives for the copyright owner to apply for 

registration: 

(1) if registration is made within five years after first publication of 

the work, the certificate issued by the Copyright Office shall, in 

an infringement action, “constitute prima facie evidence of the 

validity of the copyright and of the facts stated in the 

certificate”;188 and 

(2) in an infringement action, prompt registration is a condition to 

an award of attorneys’ fees and, even more significantly, of 

statutory damages, which can be as high as $30,000 (and as 

high as $150,000 for willful infringement) for each work in-

 

187. See Washingtonian Publ’g Co. v. Pearson, 306 U.S. 30 (1939); 17 U.S.C. § 411(a). 

188. 17 U.S.C. § 410(c). 
Chapter 5: Copyright Formalities 

95 

fringed even in the absence of specific proof of actual damages 

or profits.189

 The Berne Convention Implementation Act (BCIA),190 effective 

March 1, 1989, made a significant change in the registration provisions 

of the Copyright Act. Because there was serious doubt that making 

registration a condition of an infringement action was consistent with 

the Berne Convention, Congress decided to eliminate such a condition 

with respect to “Berne Convention works whose country of origin is not 

the United States,” i.e., for works initially published in some other 

nation that adheres to the Berne Convention. Because the Berne 

Convention does not require any adhering nation to abolish formalities 

(as a condition on the enjoyment of copyright) for works published 

domestically, the 1976 Act as amended by the BCIA still requires, in 

section 411(a), that registration be made as a condition of an 

infringement action relating to a work first published in the United 

States. Whatever the country in which a work is first published, prompt 

registration—even though permissive—will continue to provide 

significant advantages for copyright owners, particularly with respect to 

proof and remedies in infringement actions. 

 Because copyright exists from the moment a work is fixed regardless of registration with the Copyright Office, and because the registration-before-suing requirement is merely to foster somewhat greater 

completeness of registration files (despite the nonregistration of vast 

numbers of protected works), it would seem that courts might well be 

tolerant of minor shortfalls in plaintiff compliance. Nonetheless, recent 

cases show that courts have been demanding. The Court of Appeals for 

the Second Circuit, for example, has held that registration by the plaintiff of its 20-inch doll will not avoid dismissal of an action for the copying of its 48-inch version, which was not registered.191 The court has 

also held the registration of a journal will not provide jurisdiction to 

sue for infringement of an article that was included therein when the 

 

189. Id. §§ 412, 504(c). 

190. Pub. L. No. 100-568, 102 Stat. 2853 (1988). 

191. Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112 (2d Cir. 2003). 
Copyright Law 

96 

copyright is owned by another person.192 The courts are sharply divided on the question whether the registration prerequisite is satisfied 

“the moment that the plaintiff delivers the fee, deposit and application 

to the Copyright Office,” or whether the Office must in fact have acted 

upon the application by actually granting or denying registration.193

 Section 410(b) of the 1976 Copyright Act expressly authorizes the 

Register of Copyrights to refuse to register a work, provided the applicant is notified of the reasons therefor. Although no intensive scrutiny 

of the “prior art” is carried out in the Examining Division of the Copyright Office—in contrast to the search undertaken in connection with 

patent applications—the Register will on occasion refuse to issue a 

certificate of copyright. For example, he or she may determine that the 

work lacks original authorship (such as in the case of blank forms or 

slogans) or that it comprises solely uncopyrightable subject matter 

(such as useful articles having no separable decorative elements). Section 411(a) of the 1976 Act allows a person making an application for 

registration to institute an infringement action despite the Register’s 

refusal, provided that the applicant gives notice thereof to the Register, 

who may then intervene to challenge the validity of the copyright. 

 

192. Morris v. Business Concepts, Inc., 323 F.3d 502 (2d Cir. 2002). 

193. The authorities are discussed in Corbis Corp. v. Amazon.com, 351 F. Supp. 2d 1090, 

1111 (W.D. Wash. 2004) (quoting Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315 F. 

Supp. 2d 1053, 1054–55 (C.D. Cal. 2004)). 
Chapter 5: Copyright Formalities 

97 

Formalities Under the 1909 Act and Under the 1976 Act Before 

and After Berne Convention Implementation Act 

Work published 

before 1978 1978–Feb. 1989 After Feb. 1989

Notice Federal copyright 

arose upon publication with notice; if no 

notice, work fell into 

public domain. 

Affixation of notice 

perfected protection; 

five years to cure 

omissions, otherwise 

work fell into public 

domain. 

Optional: 

incentive—

unavailability of 

innocent 

infringer defense. 

Registration Optional until last 

year of first term; 

mandatory for renewal of works first 

published before 

1964; prerequisite to 

initiation of infringement suit 

during both terms of 

copyright. 

Optional, but prerequisite to initiation of 

suit. Incentives: 

statutory damages 

and attorney’s fees 

not available unless 

work was registered 

before infringement 

commenced. 

Optional for nonU.S. Berne and 

WTO works; 

remains prerequisite to suit for 

U.S. and other 

foreign works. 

Same incentives 

apply. 

Deposit Prerequisite to suit; 

in addition, fines may 

be imposed for failure to deposit copies 

with Library of Congress. 

Same. No longer a prerequisite to suit 

for non-U.S. 

Berne works; but

fines may still be 

imposed. 

Recordation

of Transfers

Unrecorded transfer 

void against subsequent good faith 

purchaser for value. 

Same, plus a prerequisite to suit. No longer a prerequisite to suit; 

unrecorded transfers still void 

against subsequent good faith 

purchasers for 

value. 
Blank pages inserted to preserve pagination when printing double-sided copies.
99 

Chapter 6 

Exclusive Rights of the Copyright Owner 

(herein of Infringement) 

Perhaps the most significant provisions of the Copyright Act are found 

in section 106, which sets forth the exclusive rights of the copyright 

owner. Anyone who violates any of those rights is (by virtue of section 

501) “an infringer of the copyright.” Section 106 gives the owner of 

copyright 

the exclusive rights to do and to authorize any of the following: 

(1) to reproduce the copyrighted work in copies or phonorecords; 

(2) to prepare derivative works based upon the copyrighted work; 

(3) to distribute copies or phonorecords of the copyrighted work to 

the public by sale or other transfer of ownership, or by rental, 

lease, or lending; 

(4) in the case of literary, musical, dramatic, and choreographic 

works, pantomimes, and motion pictures and other audiovisual 

works, to perform the copyrighted work publicly; 

(5) 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 

audiovisual work, to display the copyrighted work publicly; and 

(6) in the case of sound recordings, to perform the copyrighted 

work publicly by means of a digital audio transmission. 

 It should be noted that the copyright owner has the exclusive right 

not only to do the listed acts but also to authorize others to do them. 

Thus, if A owns the copyright in a novel, which is published by B, and 

B (without A’s consent) authorizes producer C to make a motion picture based upon the novel, when C’s film is later released A can bring 

infringement actions against both B and C. The Supreme Court has, in 

effect, concluded that this “authorize” language furnishes the basis for 

incorporating into copyright law the principle of contributory in-
Copyright Law 

100 

fringement.194 Note also that although a work to be eligible for copyright protection must be fixed in tangible form, unauthorized conduct 

can infringe even though it does not involve a fixing of the work by the 

defendant—for it may be by public sale, performance or display. Most 

obviously, for example, a copyrighted song or play can be infringed by 

an unauthorized (and “unfixed”) public performance in a theater. 

 The first three listed exclusive rights—reproduction, preparation of 

derivative works, and public distribution—are applicable to all forms 

of copyrightable works listed in section 102(a). The next two listed 

rights—public performance and public display—are, by their nature, 

applicable only to certain categories of copyrightable works, and those 

categories are expressly set forth in sections 106(4) and (5). For example, the right of public performance attaches to musical works but not 

to sound recordings; that means that an unauthorized public playing 

by a disk jockey in a nightclub of a recording of a copyrighted song 

will constitute an infringement of the song but not of the sound recording, so that the songwriter–author will have legal redress but the record 

manufacturer and performer will not. If, however, the public playing of 

the recorded song is “by means of a digital audio transmission,” such 

as from a website on the Internet, then this is among the exclusive 

rights of the sound-recording copyright owner, by virtue of a 1995 

amendment that added section 106(6) to the Copyright Act. 

 All of the exclusive rights in section 106 are subject to the provisions in sections 107 through 122. Those provisions exempt from liability a wide range of reproductions, derivative works, and the like that 

would otherwise constitute infringements, particularly for nonprofit, 

charitable or educational purposes. These exemption provisions will 

be discussed in some detail in Chapter 7. 

 

194. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 435 & n.17 (1984) 

(manufacturer-seller of videotape recorder is not contributorily liable for home taping of 

copyrighted television programs, which is fair use under the circumstances). See Columbia 

Pictures Indus. v. Aveco, Inc., 800 F.3d 59 (3d Cir. 1986). For more recent developments 

concerning secondary infringement, see infra pages 131–37. 
Chapter 6: Exclusive Rights of the Copyright Owner 

101 

The Right of Reproduction 

The first U.S. copyright act, enacted in 1790, forbade unauthorized 

printing of copyrighted works. Today, the equivalent right, afforded by 

section 106(1) of the 1976 Act, is the right “to reproduce the copyrighted work in copies or phonorecords.” 

Reproduction in copies or phonorecords 

Copies and phonorecords are the tangible forms in which reproductions of a work can be made; copies communicate to the eye while 

phonorecords communicate to the ear. More precisely, “phonorecords” are defined in section 101 as “material objects in which sounds 

. . . are fixed by any method now known or later developed, and from 

which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” “Copies” are defined as “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 owner of copyright in a musical composition has the exclusive 

right, therefore, to make “copies” in the form of music notations intended for piano or for orchestra, as well as to make “phonorecords” 

that can be activated by a playback device such as an audiotape-player 

or compact disk player. A significant reason for distinguishing copies 

and phonorecords relates to the proper form of optional copyright 

notice—with the  notice on copies, and the  notice (for the sound 

recording) on phonorecords. 

 The application of the word “copy” as used in section 106(1) has 

kept up with the advent of new technologies. Thus, if unauthorized 

copies are generated through the use of a fax machine, that will infringe.195 So too, if a copyrighted photograph is scanned, without permission, from a magazine into a computer for storage in a hard-drive 

or on a website, that will generate a copy and an infringement; the 

unauthorized transmission of that digitized photograph to others is 

 

195. Pasha Publ’ns, Inc. v. Enmark Gas Corp., 22 U.S.P.Q.2d 1076 (N.D. Tex. 1992). 
Copyright Law 

102 

treated as a distribution of copies that has been held unlawful under 

section 106(3).196 The Supreme Court in 2005, in Metro-Goldwyn-Mayer 

Studios Inc. v. Grokster, Ltd.,

197 involving so-called peer-to-peer filesharing of music recordings through the Internet, assumed—as did 

even the defendants who made available the file-sharing software—that 

the private users of computers for downloading were making illicit 

copies. This was directly so held, soon after, by the Court of Appeals 

for the Seventh Circuit.198 There is disagreement in the scholarly literature as to whether the more transient storage of a work in the random 

access memory (RAM) of a computer—as is done in the case of an 

operating-system program when a computer is simply switched on—

constitutes the making of a “copy.” But the fact that Congress has 

thought it necessary to write certain narrow exemptions for RAM copying in section 117 of the Copyright Act points clearly toward a congressional understanding that such copying would otherwise be infringing 

under section 106.199 

Proving copying and infringement 

The exclusive right to “reproduce” the copyrighted work—which involves copying—is more confined than the patent right, which can be 

infringed even by a product or process that has been developed wholly 

independent of, and has not been copied from, the patented invention. 

Perhaps the best-known discussion of proof of copyright infringement 

is found in Arnstein v. Porter,

200 decided by the Court of Appeals for 

the Second Circuit in 1946. Judge Frank there stated, “[I]t is important 

to avoid confusing two separate elements essential to a plaintiff’s case 

in such a suit: (a) that defendant copied from plaintiff’s copyrighted 

 

196. Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997); Phillips v. Kidsoft, L.L.C., 52 U.S.P.Q.2d 1102 (D. Md. 1999). 

197. 125 S. Ct. 2764 (2005). 

198. BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005) (finding infringement in 

unauthorized downloading of more than 1,300 songs, despite defendant’s claim of fair 

use). See also A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). 

199. See 17 U.S.C. §§ 117(a), (c); MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 

(9th Cir. 1993). 

200. 154 F.2d 464 (2d Cir. 1946). 
Chapter 6: Exclusive Rights of the Copyright Owner 

103 

work and (b) that the copying (assuming it to be proved) went so far as 

to constitute improper appropriation.”201 Proof of copying can be 

found, said the court, either in defendant’s admission or, as is almost 

uniformly the case, by circumstantial evidence—usually evidence of 

access and similarity—from which the trier of fact may reasonably infer 

copying. Of course, if there are no similarities, no amount of evidence 

of access will suffice to prove copying. If there is evidence of access 

and similarities exist, then the trier of fact must determine whether the 

similarities are sufficient to prove copying. On this issue, analysis (“dissection”) is relevant, and the testimony of experts may be received to 

aid the trier of fact. 

 Although “similarity” is an element of both stages of the Arnstein

test for infringement, the purposes and scope are different. At the first 

stage, similarity is used for the purpose of determining whether there 

has been copying. The similarities between the two works need not be 

extensive, so long as they are “probative” of copying: for example, the 

Rural Company planted four fictitious directory entries in its whitepage telephone directory, and these entries then showed up in the Feist 

directory, which obviously negated independent creation.202 On the 

other hand, the similarities that are necessary to make out an illicit 

taking, at the second stage, must be “substantial” as measured either 

qualitatively or quantitatively. 

 In proving copying through the use of circumstantial evidence, 

there is sometimes said to be an inverse proportion between the weight 

of proof of access and of similarity: the less likely it is that the defendant had access to the plaintiff’s work, the more convincing must be 

proof of similarities in the two works; the fewer the similarities, the 

more compelling must be the proof of access. An inference of copying 

can be drawn even in the absence of specific evidence of access if the 

similarities between the plaintiff’s and defendant’s works are found to 

be “striking.” As the Court of Appeals for the Seventh Circuit has 

 

201. Id. at 468. 

202. Feist Publ’ns, Inc. v. Rural Tel. Serv., 499 U.S. 340 (1991). See generally Positive 

Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357 (5th Cir. 2004), and Laureyssens v. 

Idea Group, Inc., 964 F.2d 131 (2d Cir. 1992), for thoughtful discussions of “probative 

similarity” and its implications. 
Copyright Law 

104 

stated: “A similarity that is so close as to be highly unlikely to have 

been an accident of independent creation is evidence of access. . . . 

Access (and copying) may be inferred when two works are so similar to 

each other and not to anything in the public domain that it is likely 

that the creator of the second work copied the first, but the inference 

can be rebutted by disproving access or otherwise showing independent creation.”203 

 In any event, proof of copying is not sufficient to make out a case 

of infringement. The plaintiff must also prove that what has been copied is substantial in degree; only then, in the words of the Arnstein

decision, is the copying illicit and the appropriation unlawful. Although Arnstein acknowledged that expert witnesses, through dissection 

of the two compared works, may usefully contribute to an understanding by the trier of fact as to the similarities for the purpose of determining copying, such expert dissection is essentially regarded as irrelevant 

on the second issue, as to which “the test is the response of the ordinary lay hearer.”204 In a later case involving claimed infringement of a 

fabric pattern, Learned Hand stated that the perspective in determining 

whether the alleged infringing work is “substantially similar” to the 

copyrighted work must be that of “the ordinary observer.”205 If the 

parties’ works are intended for purchase or appreciation by a particular 

audience—such as choir directors or even very young children—the 

question of substantial similarity is to be addressed with those persons 

in mind.206

 Under this universally accepted two-step approach to proof of 

infringement,207 it might be found that although the defendant did copy 

 

203. Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167 (7th Cir. 1997). 

204. Arnstein, 154 F.2d at 468. 

205. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). See also

Steinberg v. Columbia Pictures Indus., Inc., 663 F. Supp. 706 (S.D.N.Y. 1987). 

206. Dawson v. Hinshaw Music, Inc., 905 F.2d 731 (4th Cir. 1990) (religious musical 

arrangement); Lyons P’ship, L.P. v. Morris Costumers, Inc., 243 F.3d 789 (4th Cir. 2001) 

(animal costumes purchased by adults for the entertainment of children). 

207. Other courts have sometimes utilized a different form of two-step infringement 

analysis, involving the application of so-called extrinsic and intrinsic tests. The source of 

that approach is Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., 562 

F.2d 1157 (9th Cir. 1977). This test is rather confusing and misleading, has been applied 
Chapter 6: Exclusive Rights of the Copyright Owner 

105 

from the plaintiff’s copyrighted novel, song or fabric design, proof of 

substantial similarity is lacking, so that there is no infringement. This 

would occur, for example, if the defendant copied only isolated and 

minor elements that did not create an appearance of similarity when 

viewed or heard by a typical member of the audience to whom the two 

works are addressed. In these cases, the doctrine of de minimis would 

apply.208 An example would be a case in which a short, even perhaps 

copyrightable, pattern in a recorded song is digitally duplicated, or 

“sampled,” on another recording.209

 Relatedly, even if the defendant has recognizably copied from the 

plaintiff’s copyrighted work, there is no infringement if he or she has 

copied only elements that are themselves unprotected by copyright. 

Thus, anyone is free to copy concepts, methods, and systems described 

in the plaintiff’s work, and to express them in his or her own words, for 

such concepts, methods, and systems fall outside the protection of 

copyright by virtue of section 102(b) of the Copyright Act. The same is 

true when the defendant copies such unprotectible elements as commonplace phrases, or language that is in the public domain. As the 

Supreme Court observed in a case involving copyright protection for 

fact-based directories,210 copyright may protect the original pattern in 

which the facts are organized but the facts themselves are in the public 

domain and free for all to use. The Court stated: 

As applied to a factual compilation, assuming the absence of original 

[prose] expression, only the compiler’s selection and arrangement may be 

protected; the raw facts may be copied at will. This result is neither unfair 

nor unfortunate. It is the means by which copyright advances the progress 

of science and art.211

 

inconsistently, and in any event largely reduces itself to an analysis very much like that in 

Arnstein. 

208. See Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997), for a 

thorough discussion of the variant uses of the de minimis doctrine in copyright. 

209. Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003). But see Bridgeport Music, Inc. 

v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) (de minimis doctrine inapplicable to 

sampling of music recordings). 

210. See Feist Publ’ns, Inc. v. Rural Tel. Serv., 499 U.S. 340 (1991). 

211. Id. at 350. 
Copyright Law 

106 

 If protectible expression has been substantially copied, it is not a 

defense that the copying was done unknowingly; like trespass in the law 

of real property, even unintended encroaching upon another’s copyright is unlawful. This principle takes two forms. First, if B takes to 

publisher C a work actually written by copyright owner A, and B represents to publisher C that B is the author and copyright owner, C’s publication of the work will infringe A’s copyright, no matter how honestly 

C may have believed that B was the true copyright owner.212 Obviously, 

C is in a better position than A to protect its rights, either through a 

copyright search, insurance, or contractual indemnity arrangements 

with B. Second, one may infringe even through “unconscious” copying. In a well-known case,213 then-former Beatle George Harrison was 

found to have written a song essentially identical to a popular song 

written by another, through assimilation of the earlier song in 

Harrison’s subconscious. Although the court found the copying was 

not deliberate, it concluded that infringement “is no less so even 

though subconsciously accomplished.”214

Idea versus expression 

Recall that there is no infringement when one copies unprotectible 

ideas from another—as distinguished from protectible “expression.” 

The distinction between idea and expression is perhaps the most elusive of all lines in copyright jurisprudence. As Learned Hand has 

stated: “Obviously, no principle can be stated as to when an imitator 

has gone beyond copying the ‘idea,’ and has borrowed its ‘expression.’ 

Decisions must therefore inevitably be ad hoc.”215 

 

212. De Acosta v. Brown, 146 F.2d 408 (2d Cir. 1944). 

213. Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y. 

1976). 

214. Id. at 181. See also Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000). 

The principle of “subconscious infringement” was endorsed by Learned Hand in Sheldon 

v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936), perhaps as a means of avoiding 

a finding that the defendant’s executives had been less than truthful when denying copying. 

215. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). 
Chapter 6: Exclusive Rights of the Copyright Owner 

107 

 In cases involving literary works, copyright protection would, of 

course, be trivialized were it limited to no more than the precise sequence of the author’s words, or were it even extended to embrace no 

more than very close paraphrase. It is undisputed that copyright also 

protects the details and sequences of plot, story line, and character 

development, but that it does not protect the author’s more general 

themes. Hand is once again the source of eloquent insight: 

[W]hen the plagiarist does not take out a block in situ, but an abstract of 

the whole, decision is more troublesome. Upon any work, and especially 

upon a play, a great number of patterns of increasing generality will fit 

equally well, as more and more of the incident is left out. The last may 

perhaps be no more than the most general statement of what the play is 

about, and at times might consist only of its title; but there is a point in 

this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his “ideas,” to which, apart 

from their expression, his property is never extended. Nobody has ever 

been able to fix that boundary, and nobody ever can.216

 In the case from which this observation is taken, Nichols v. Universal Pictures Corp., Judge Hand concluded that a very popular copyrighted play, Abie’s Irish Rose, was not infringed by the defendant’s 

motion picture The Cohens and the Kellys. The only story elements that 

were similar (and that were, for purposes of decision, assumed to have 

been original with the plaintiff and copied by the defendant) were a 

conflict between Irish and Jewish fathers, the marriage of their children, the birth of a grandchild, and the reconciliation of the elders. 

The court characterized these elements as “too generalized an abstraction . . . only a part of [the playwright’s] ‘ideas.’”217 The plaintiff also 

failed in her claim that her characters, isolated from the story line, 

were infringed; the court found them to be stock characters, too 

vaguely drawn for protection. 

 A court’s determination that a plot or a character is an unprotectible “idea” reflects its conclusion that the plot or character is so skeletal 

or fundamental that to protect it by copyright would “fence off” too 

 

216. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). 

217. Id. at 122. 
Copyright Law 

108 

great a preserve for the plaintiff and would inhibit the creative use and 

embellishment of such plot or character by other authors. For the 

same reason, copyright does not extend to simply recorded facts, to 

commonplace phrases, or to what are known as scènes à faire, i.e., plot 

incidents that are commonplace or stock or that are necessarily dictated by a story’s general themes (such as soldiers nervously partying 

on the eve of battle, or the exchange of salutes between military personnel).218

 The same approach to the idea–expression dichotomy is found in 

cases involving pictorial, graphic, or sculptural works.219 Copyright 

does not extend to commonplace designs, lest others be forbidden—

potentially for more than a century—to borrow these “building blocks” 

on which to base other creative works. In ruling that a jewelry designer 

could not preclude another from copying his jeweled pin in the shape 

of a bee, a court stated: 

The guiding consideration in drawing the line is the preservation of the 

balance between competition and protection reflected in the patent and 

copyright laws. 

 What is basically at stake is the extent of the copyright owner’s monopoly—from how large an area of activity did Congress intend to allow 

the copyright owner to exclude others? We think the production of jeweled bee pins is a larger private preserve than Congress intended to be set 

aside in the public market without a patent. A jeweled bee pin is therefore 

an “idea” that defendants were free to copy.220

 A contrary outcome was reached by Judge Learned Hand, in a 

decision usually contrasted with his decision in Nichols. He found infringement in Sheldon v. Metro-Goldwyn Pictures Corp.,

221 because the 

defendant’s motion picture had copied too many detailed plot incidents and scenes from the plaintiff’s play. Whether or not those incidents or scenes were protectible “expression” when each was consid-

 

218. Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989); Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d Cir. 1980). 

219. But see Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005) (finding the dichotomy inapplicable to photographic works). 

220. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971). 

221. 81 F.2d 49 (2d Cir. 1936). 
Chapter 6: Exclusive Rights of the Copyright Owner 

109 

ered separately, their sequential grouping—and thus the detailed storytelling—was deemed protectible by copyright. 

 Similar tests for distinguishing idea and expression have been applied in all varieties of copyrighted works, including computer programs. The tasks to be accomplished by a computer program, either in 

driving the computer hardware or in effecting a particular external 

result (such as creating the sights and sounds of a video game, or accomplishing word-processing tasks) are not subject to copyright protection; they are methods or systems that can be protected, if at all, 

only by satisfying the more rigorous demands of the patent system. On 

the other hand, the exact or very close copying of computer-program 

code—whether in human-readable source code or in object code (a 

string of ones and zeroes) intended to be “read” by and to operate the 

computer—will constitute an infringement of copyright.222 As is true in 

literature, music and art, difficult questions can arise in drawing the 

line for infringement at various places in between a program’s overall 

purpose and its literal code; there is no question, however, that the fact 

that computer code is shaped by uniquely functional objectives justifies a “thinner” copyright for programs than for art as broadly understood. 

 Perhaps the most influential formulation for determining what 

“nonliteral” elements of computer code warrant copyright protection is 

found in Computer Associates International, Inc. v. Altai, Inc.223 There, 

the Court of Appeals for the Second Circuit articulated a three-step 

process of analysis. At the first, or “abstraction” step, very much like 

the “patterns” analysis of Learned Hand in the Nichols and Sheldon

drama cases, 

a court should dissect the allegedly copied program’s structure and isolate each level of abstraction contained within it. This process begins with 

the code and ends with an articulation of the program’s ultimate function. 

. . . A program has structure at every level of abstraction at which it is 

 

222. See Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) (decompiling 

computer code creates a copy that technically infringes, even though only an “intermediate” copy, but under the circumstances of the case was privileged as a “fair use”). 

223. 982 F.2d 693 (2d Cir. 1992). 
Copyright Law 

110 

viewed. At low levels of abstraction, a program’s structure may be quite 

complex; at the highest level it is trivial.224

At the second, or “filtration,” step, nonprotectible materials are removed from the plaintiff’s computer program. 

This process entails examining the structural components at each level of 

abstraction to determine whether their particular inclusion at that level 

was “idea” or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea; required by factors external to the program itself; or taken from the public domain and hence is non-protectable 

expression. . . . By applying well developed doctrines of copyright law, it 

may ultimately leave behind a “core of protectable material.”225

At the third, or “comparison,” step, the court compares what is left 

(the “golden nugget”) of protectible material in the plaintiff’s work and 

“focuses on whether the defendant copied any aspect of this protected 

expression, as well as an assessment of the copied portion’s relative 

importance with respect to the plaintiff’s overall program.”226 Despite 

the influence of the court’s analysis—and indeed its importation into 

cases involving novels, plays, and motion pictures—it is arguably too 

focused upon the deletion of uncopyrightable elements and insufficiently attentive to the possible creative ways in which those elements 

can be selected, coordinated, or arranged so as to generate a protectible work in the nature of a compilation.227

Reproduction of Music and Sound Recordings 

The exclusive right to reproduce the copyrighted work, afforded by 

section 106(1), applies not only when the work is reproduced in “copies,” i.e., material objects that are perceivable by the human eye, but 

also when the work is embodied in “phonorecords.” A copyrightprotected dramatic or nondramatic literary work (a short story, poem 

 

224. Id. at 707. 

225. Id.

226. Id. at 710. 

227. Compare Apple Computer, Inc. v. Microsoft Corp., 779 F. Supp. 133 (N.D. Cal. 

1991). 
Chapter 6: Exclusive Rights of the Copyright Owner 

111 

and lecture are examples of the latter) is infringed by an unauthorized 

taping or recording of the text of that work. 

Reproducing musical works in phonorecords 

The same is true of musical compositions, subject to an important 

exception known as the compulsory license. Section 115(a)(1) of the 

Copyright Act provides: 

When phonorecords of a nondramatic musical work have been distributed to the public in the United States under the authority of the copyright 

owner, any other person may, by complying with the provisions of this 

section, obtain a compulsory license to make and distribute phonorecords 

of the work. 

In substance, once the copyright owner of a musical composition permits one person to manufacture and distribute recordings in the 

United States, any other person may record the composition (with its 

own performers) and distribute its own recordings, provided that person complies with the provisions of section 115—most significantly by 

paying to the copyright owner a royalty provided by statute “for every 

phonorecord made and distributed in accordance with the license.”228

 The compulsory license for musical recordings (known as 

“mechanical” royalties, based on the early statutory language) can be 

traced back to the 1909 Copyright Act, enacted when the recording 

industry was in its infancy and when Congress was concerned that a 

single record manufacturer (the Aeolian Company) would secure a 

monopoly by buying up all recording rights from popular songwriters. 

By “compelling” the copyright owner to license such rights to all record companies, after the initial recording and distribution, Congress 

facilitated the development of many smaller record companies and the 

competitive nature of the industry that remains one of its characteristics today. The statutory royalty rate in the 1909 Act was 2 cents per 

record of the copyrighted song. In 1976, Congress increased that rate 

only to 2.75 cents. Realizing that economic conditions might warrant a 

change in the statutory rate, and that it would be inconvenient to 

 

228. 17 U.S.C. § 115(c)(2). 
Copyright Law 

112 

achieve such change through statutory amendment, Congress in the 

1976 Act created an administrative agency called the Copyright Royalty 

Tribunal and empowered it periodically to reconsider the royalty rate 

under section 115 and to promulgate new rates. In 1993 Congress transferred the functions of the Tribunal to ad hoc arbitration panels convened by the Librarian of Congress; and in 2004 the Act was amended 

to give such authority instead to three Copyright Royalty Judges, also 

appointed by the Librarian of Congress, with decisions of the Copyright Royalty Judges being appealable to the District of Columbia Circuit. 

 Section 801(b)(1) of the Copyright Act directs the Copyright Royalty Judges, in their rate-setting under the compulsory-license provisions for recorded music, to achieve the following objectives: 

(A) To maximize the availability of creative works to the public. (B) To 

afford the copyright owner a fair return for his or her creative work and 

the copyright user a fair income under existing economic conditions. 

(C) To reflect the relative roles of the copyright owner and the copyright 

user in the product made available to the public with respect to relative 

creative contribution, technological contribution, capital investment, 

cost, risk, and contribution to the opening of new markets for creative 

expression and media for their communication. (D) To minimize any 

disruptive impact on the structure of the industries involved and on generally prevailing industry practices. 

After formal hearings, the Copyright Royalty Tribunal in 1980 increased the statutory rate from 2.75 cents per record to 4 cents per 

record, and between then and the year 2000, the royalty rate mounted 

gradually through formal linkage to the Consumer Price Index. Beginning on January 1, 2000, Copyright Office regulations endorsed an 

agreement reached by representatives of music copyright owners 

(songwriters and publishers) and of the recording companies, providing for biannual rate increases beginning at 7.55 cents per song; the 

rate for 2004–2005 was 8.5 cents (or 1.65 cents per minute), and beginning January 1, 2006, the rate has become 9.1 cents per song (or 1.75 

cents per minute). These compulsory-license royalty rates are set forth 

in Copyright Office regulations at 37 C.F.R. § 255.3. This royalty figure 

is for each recording made of each copyrighted composition embodied 
Chapter 6: Exclusive Rights of the Copyright Owner 

113 

in the phonorecord; it is not a single amount covering the aggregate of 

all of the music on a multiple-track compact disk or audiotape. 

 To avail itself of the compulsory license, a record manufacturer 

must file a timely “notice of intention” with the copyright owner, file 

regular accounting statements, and make monthly royalty payments to 

the copyright owner. Failure to comply with these requirements entitles 

the copyright owner to terminate the license and sue for infringement. 

The monitoring of the compulsory license system, and particularly the 

scrutiny of accounting statements and the collection of royalties from 

the recording companies, is a major administrative task; most musicalwork copyright owners have turned over that task to an organization 

(based in New York City) known as the Harry Fox Agency. 

 Congress, of course, contemplated that persons making music recordings (known in the industry as “covers”) pursuant to the statutory 

compulsory license under section 115 would use the services of recording artists selected by them and make arrangements of the music suitable to the artists’ performing style. Section 115(a)(2) provides, however, that such “arrangement shall not change the basic melody or 

fundamental character of the work, and shall not be subject to protection as a derivative work under this title, except with the express consent of the copyright owner.” The statute places three other important 

limitations upon the availability of the compulsory license. It does not 

apply to works other than “nondramatic musical works” (that is, it does 

not authorize the making of recordings of literary works or of operas); 

it comes into operation only after the first authorized recording; and it 

authorizes only the making of recordings that are intended primarily 

for distribution to the public for private use (i.e., it does not apply to 

recordings for music subscription services, such as Muzak, or the incorporation of the music in a motion-picture soundtrack). 

 Until recently, the compulsory license for the recording of copyright-protected music resulted in phonorecords—whether vinyl records, audiotapes, or compact disks—that reached the public through 

sales in retail record stores. With the advent of the Internet, retail-store 

purchases are gradually being displaced by the online sale of music 

recordings. (Much music “sharing” through the Internet is regrettably 

unlawful, but not all.) When the computer user downloads recorded 
Copyright Law 

114 

music, say for 99 cents per song, this is what the Copyright Act refers to 

in section 115(c)(3) as a “digital phonorecord delivery.” Because of 

their functional equivalence, the compulsory royalty rate to be paid to 

the music copyright owner by the recording company for such digital 

phonorecord deliveries is the same as for phonorecords sold in retail 

stores. 

Reproducing sound recordings in phonorecords 

The right under section 106(1) to reproduce a copyrighted work in the 

form of phonorecords applies to all copyrighted works, including not 

only musical works but also sound recordings. “Sound recordings” are 

defined in section 101 of the Copyright Act as “works that result from 

the fixation of a series of musical, spoken, or other sounds, but not 

including the sounds accompanying a motion picture or other audiovisual work, regardless of the nature of the material objects, such as 

disks, tapes, or other phonorecords, in which they are embodied.” 

Sound recordings are copyrightable works distinct from the musical or 

literary works that are performed on those recordings.229 There can, for 

example, be a copyrightable sound recording of a public domain classical musical composition. 

 Section 114 of the Copyright Act limits the exclusive right to reproduce a sound recording to “the right to duplicate the sound recording 

in the form of phonorecords that directly or indirectly recapture the 

actual sounds fixed in the recording.” Infringement of this right is familiarly known as record piracy, and involves the dubbing of the 

sounds of the copyrighted sound recording onto another sound medium—for example, from a pre-recorded compact disk onto a blank 

audiotape or from a computer hard-drive onto a blank CD (i.e., 

“burning”). Copyright in a sound recording is therefore not infringed 

by the “independent fixation of other sounds, even though such 

sounds imitate or simulate those in the copyrighted sound recording,” 

as expressly stated in section 114(b). 

 Thus, when a commercial recording incorporates a “digital sample” taken directly from another recording, without permission, there 

 

229. See Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003). 
Chapter 6: Exclusive Rights of the Copyright Owner 

115 

is technically a violation of section 106(1), because the first “sound 

recording” (as well as the thread of musical notes) is being “reproduced in phonorecords.” These samples, although usually of only a 

small bit of recorded music, are often “catchy” and thus of qualitative 

significance and possible commercial value. Courts take differing views 

on whether the sampling, under particular circumstances, is nonetheless privileged, typically by invoking (or not) the de minimis principle230 or the principle of fair use. In the recording industry, it is common practice to pay voluntary royalties for such samples (on the theory that today’s borrower may find himself or herself sampled tomorrow and will wish to be compensated). 

 A major issue under section 106(1) is the “home recording” of 

copyright-protected music and sound recordings. Again, this is technically a violation of section 106(1). However, at the time of enactment of 

the 1976 Act, it was generally understood that the “taping” of music 

from radio broadcasts or from recordings, for personal use and without commercial objective, was allowable. This was at a time when the 

analog technology was such that multiple and serial copying was inherently limited. This legal conclusion was essentially confirmed by the 

Supreme Court in the somewhat different context of home videotaping 

for “time-shifting” purposes (rather than for permanent retention).231

For the first time in U.S. statutory copyright law, Congress in 1992 enacted legislation specifically addressing the problem of private copying: 

the Audio Home Recording Act (AHRA).232 The AHRA, enacted in 

response to the advent of digital audiotape (which ultimately proved to 

have only limited commercial success), inter alia prohibited in section 

1008 infringement actions “based on the noncommercial use by a consumer of a [digital audio recording device or an analog recording] 

device or medium for making digital or analog musical recordings.” In 

 

230. Compare Williams v. Broadus, 60 U.S.P.Q.2d 1051 (S.D.N.Y. 2001) (question of 

fact whether sampling 2 of 54 musical measures, consisting of opening 10 notes, is substantial copying), with Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 

2005) (announcing a “bright line” test making all sampling unlawful, and de minimis standard inapplicable). 

231. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984). 

232. 17 U.S.C. §§ 1001–1010. 
Copyright Law 

116 

other words, home reproduction for noncommercial purposes, 

whether by analog or digital means, is exempted from the reach of the 

section 106(1) reproduction right held by owners of copyright in musical works and in sound recordings. Such copyright owners are to be 

recompensed through the payment of a royalty on the sales of digital 

recording machines and blank digital recording media.233 The issue of 

using home computers to “swap” recorded music by means of software 

available on the Internet is more broad-ranging and has been found 

not to fall within the section 1008 exemption (this issue is discussed 

below). 

The Right to Prepare Derivative Works 

Among the most valuable rights given by the Copyright Act is the right 

under section 106(2) “to prepare derivative works based upon the 

copyrighted work.” The copyright owner thus has the exclusive right to 

convert her novel into a motion picture, to translate her play into a 

foreign language, to make an orchestral arrangement of her piano 

piece, or to make reproductions of her painting or sculpture—or to 

license third persons to do so. As defined in section 101, a derivative 

work 

is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture 

version, sound recording, art reproduction, abridgment, condensation, or 

any other form in which a work may be recast, transformed, or adapted. A 

work consisting of editorial revisions, annotations, elaborations, or other 

modifications which, as a whole, represent an original work of authorship, is a “derivative work.” 

In the cases already discussed—infringing motion pictures based on 

copyrighted plays or novels—the courts have traditionally analyzed 

them as involving “copies” under the 1909 Act or “reproductions” 

 

233. Id. §§ 1003–1007. See also Recording Indus. Ass’n of Am. v. Diamond Multimedia 

Sys., Inc., 180 F.3d 1072 (9th Cir. 1999) (holding that hand-held digital devices that store 

music recordings transferred from computer hard-drives are not the sort of devices 

(“digital audio recording device”) for which royalties must be paid). 
Chapter 6: Exclusive Rights of the Copyright Owner 

117 

under the 1976 Act. The courts could just as well have analyzed these 

cases as allegedly infringing derivative works under what is today section 106(2). The elements of proof are the same: the plaintiff must 

show that the defendant copied protectible elements from the copyrighted work and that as a result the infringing work is “substantially 

similar.” 

 The derivative work need not be “fixed in a tangible medium” in 

order to make out a case of infringement. The live performance of an 

arrangement of a copyrighted song, without the authorization of the 

copyright owner, will infringe section 106(2). (The performance, if 

public, will constitute a separate infringement under section 106(4).) 

Nor need any words be borrowed from the copyrighted work. In a 

classic copyright case, Justice Holmes spoke for the Supreme Court in 

finding that a silent motion picture adaptation of the novel Ben Hur

constituted copyright infringement.234 In a more recent treatment of a 

similar issue, the Court of Appeals for the Second Circuit held that a 

book containing a series of still photographs of performers dancing a 

copyrighted choreographic work (Balanchine’s Nutcracker ballet) can 

be an infringing derivative work if there is “substantial similarity,” even 

though it is not possible to reconstruct the ballet from the photographs 

alone, and even if permission for the book was secured from the ballet 

company, the set and costume designers, and the dancers—but not 

from the choreographer–copyright owner.235

 An infringing derivative work may take the form of deletion, abbreviation, and abridgment as well as elaboration and embellishment. The 

Court of Appeals for the Second Circuit, in the well-known case Gilliam v. American Broadcasting Companies,

236 thus held that the heavy 

editing of television programs without the consent of the Monty Python 

comedy group, which held the copyrights in the underlying scripts, 

constituted copyright infringement. 

 The courts are split on the question whether an infringing derivative work is created when one lawfully purchases a lawfully made pictorial work (say, a color photograph from a magazine, or a drawing on 

 

234. Kalem Co. v. Harper Bros., 222 U.S. 55 (1911). 

235. Horgan v. MacMillan, Inc., 789 F.2d 157 (2d Cir. 1986). 

236. 538 F.2d 14 (2d Cir. 1976). 
Copyright Law 

118 

the face of a greeting card) and affixes it to a hard substance, thus creating a border around the work, and applies some transparent sealing 

substance. As will be seen immediately below, the purchase and resale 

of the artwork is not a copyright infringement, but the copyright owner 

of the photograph or greeting card has claimed that an infringing derivative work has been created. The Court of Appeals for the Ninth 

Circuit holds that, absent consent, a new bordered work has been unlawfully created; while the Seventh Circuit holds that there has been no 

“recasting” or “transforming” of the underlying artwork but simply 

what is equivalent to framing, and so no derivative work at all.237 In a 

case involving an Internet analogy—the unauthorized “framing” by 

one website owner of images from another (complaining) website that 

are called forward through a linking process—a district court in the 

Ninth Circuit has found an unauthorized derivative work.238 

The Right of Public Distribution 

Section 106(3) of the Copyright Act gives the copyright owner the exclusive right “to distribute copies or phonorecords of the copyrighted 

work to the public by sale or other transfer of ownership, or by rental, 

lease, or lending.” Thus, if A owns the copyright in a novel, and B

prints unauthorized copies and supplies them to C, who sells them to 

the public, both B and C are copyright infringers—B violates section 

106(1) and C violates section 106(3).239 C will be liable, under the general rule of copyright that recognizes even “innocent” infringement, 

regardless whether he sells the books in the belief B was their lawful 

author. 

 

237. Compare Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 

1988), with Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997). A district court within the 

Ninth Circuit has indeed held that what is essentially mere framing of an artwork constitutes the unlawful creation of a derivative work. Greenwich Workshop, Inc. v. Timber 

Creations, Inc., 932 F. Supp. 1210 (C.D. Cal. 1996). 

238. Futuredontics, Inc. v. Applied Anagramics, Inc., 45 U.S.P.Q.2d 2005 (C.D. Cal. 

1998). 

239. Columbia Pictures Indus., Inc. v. Garcia, 996 F. Supp. 770 (N.D. Ill. 1998). 
Chapter 6: Exclusive Rights of the Copyright Owner 

119 

 Just as there is a public distribution when a bookseller distributes 

copies throughout the United States, so too a person who, without 

authorization, places copyrighted material on an Internet bulletin 

board or website and makes it available for all interested persons to 

download into their computer hard-drive (or even simply to view on 

their computer monitors) has publicly distributed that material, and 

has infringed.240 If, however, the alleged infringer is merely an online 

service provider that plays a passive role in allowing access to an infringing website, without creating or controlling the content of the information available to its subscribers, it will generally be found not to 

have made an unlawful public distribution.241 

First-sale doctrine 

If read literally, section 106(3) would make it an infringement for a 

book dealer to sell used books or for any private person to lend a book 

to friends. This anomaly is quickly dispelled by virtue of section 

109(a), which provides: 

Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person 

authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or 

phonorecord. 

 This provision articulates what has been a fundamental part of our 

copyright jurisprudence for a century: the “first-sale doctrine.” The 

Supreme Court in its 1908 decision in Bobbs-Merrill Co. v. Straus stated: 

“[O]ne who has sold a copyrighted article, without restriction, has 

parted with all right to control the sale of it. The purchaser of a book, 

once sold by authority of the owner of the copyright, may sell it again, 

 

240. E.g., Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997) 

(website operator “distributes” copyright-protected works “by allowing its users to download and print copies of electronic image files”). 

241. Religious Tech. Ctr. v. Netcom On-Line Communication Servs., Inc., 907 F. Supp. 

1361 (N.D. Cal. 1995). The liability of internet service providers for contributory and 

vicarious liability is a matter of detailed regulation under section 512 of the Copyright 

Act, added in 1998. 
Copyright Law 

120 

although he could not publish a new edition of it.”242 The exclusive 

right to distribute the copyrighted work to the public thus embraces 

only the first sale, and purchasers of copies or phonorecords are free 

to transfer them to others by sale, gift, or otherwise. The first sale “exhausts” the right of the copyright owner under section 106(3), and he 

or she must exact whatever royalty can be negotiated from the initial 

publisher–distributor, knowing that that will have to provide recompense for all subsequent transfers as well. 

 Thus it is lawful, for example, for a person to purchase secondhand copies of copyrighted works, to remove the covers or to bind 

them in new covers, and to resell them to the public.243 If, however, the 

reseller goes a step farther and makes some alteration in or compilation of the lawfully purchased works, he or she may be found liable for 

creating an unlawful derivative work even if not for unlawful public distribution. A court so held when the defendant purchased old copies of 

National Geographic magazine, tore out articles, and bound together 

for sale articles relating to a common subject matter.244 

 In 1998, in Quality King Distributors, Inc. v. L’Anza Research 

International, Inc.,245 the Supreme Court confronted the question 

whether the first-sale doctrine applies not only to copies and 

phonorecords manufactured in the United States and subsequently 

sold here, but also when those subsequent sales follow purchases made 

abroad. To answer that question, the Court analyzed section 602(a), 

which gives the U.S. copyright owner the exclusive right of importation. The central issue was whether the first-sale limitation set forth in 

section 109(a) applied to imported goods, or whether section 602(a) 

afforded a “free standing” right not subject to the various exemptions 

(including fair use and first sale) in the Copyright Act. The Court 

concluded that the importation right under section 602(a) is a species 

of the public-distribution right under section 106(3), so that the copyright owner exercises that right subject to the first-sale doctrine. So- 

 

242. 210 U.S. 339, 350 (1908). 

243. Fawcett Publ’ns, Inc. v. Elliot Publ’g Co., 46 F. Supp. 717 (S.D.N.Y. 1942). 

244. Nat’l Geographic Soc’y v. Classified Geographic, Inc., 27 F. Supp. 655 (D. Mass. 

1939). 

245. 523 U.S. 135 (1998). 
Chapter 6: Exclusive Rights of the Copyright Owner 

121 

called grey goods or parallel imports, at unauthorized discounted 

prices, cannot thus be restricted by U.S. manufacturers by invoking the 

Copyright Act. 

 By virtue of the first-sale doctrine, U.S. law does not afford the kind 

of “public lending right” given to the copyright owner in such nations 

as Great Britain and Germany. U.S. copyright owners can claim no 

royalty, and can interpose no ban, when third persons—such as public 

libraries or private lending libraries—lawfully purchase one or two 

copies of a work and lend them to the public many times, either free or 

for a price. Section 109(a) negates any such lending right. 

 There are, however, two exceptions to this rule. They relate to the 

rental for profit of either a phonorecord embodying a copyrighted 

sound recording of music or a copy of a copyrighted computer program. Congress concluded in 1984 that the newly emerging “record 

rental store” was being used by consumers as an inexpensive supplier 

of musical sound recordings that could be inexpensively taped at 

home, thus substituting for a purchase of the recording. Comparable 

conclusions were reached in 1990 with respect to the rental of computer software, which was also susceptible to reproduction for nonprofit personal use, by individuals on their home computers. 

 In the Record Rental Amendment of 1984 and the Computer Software Rental Amendments Act of 1990, Congress forbade the owner of a 

phonorecord or the possessor of a copy of a computer program “for 

the purposes of direct or indirect commercial advantage, [to] dispose 

of, or authorize the disposal of, the possession of that phonorecord or 

computer program . . . by rental, lease, or lending, or by any other act 

or practice in the nature of rental, lease, or lending.” These exceptions 

to the first-sale doctrine are codified in section 109(b) of the Copyright 

Act. Explicitly excluded from the ban is the not-for-profit rental, lease, 

or lending of phonorecords or computer software by most nonprofit 

libraries and educational institutions. 

The Right of Public Performance 

Another exclusive right under section 106 of the Copyright Act is the 

right “to perform the copyrighted work publicly.” The public-
Copyright Law 

122 

performance right is a particularly significant right for dramatic works, 

motion pictures, and musical works. But it is accorded to all categories 

of copyright-protected works except for pictorial, graphic, and sculptural works (for obvious reasons) and sound recordings (soundengineered performances captured on phonorecords). The exclusion 

of sound recordings from section 106(4) is largely for historical reasons; although music has had public-performance rights in the U.S. 

since the turn of the twentieth century, our copyright law was slow to 

recognize original authorship in recorded performances and gave no 

protection to sound recordings at all until 1971 and then only against 

direct “dubbing” or piracy of the recorded sounds. Thus, even today, 

when a song recording is broadcast over the air on the radio, or is 

played by a disk jockey in a nightclub, that is potentially a copyright 

infringement of the song, but it is not an infringement of the sound 

recording; the songwriter (or other copyright owner in the song) can 

claim a royalty, but neither the record company nor the recording 

artist can. As will be discussed below, however, Congress in 1995 added 

section 106(6) to the Copyright Act, which accords to the copyright 

owner of a sound recording (typically the recording company) the 

exclusive right “to perform the work publicly by means of a digital 

audio transmission”; this is a right that has become highly important in 

the age of the Internet. 

Performance 

Section 101 sets forth broad definitions of “perform” and “publicly.” 

 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. 

 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; 

 (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 re-
Chapter 6: Exclusive Rights of the Copyright Owner 

123 

ceiving the performance or display receive it in the same place or in separate places and at the same time or at different times. 

 The definition of “perform” embraces not only live face-to-face 

performances but also “rendering” a work by any device or process, 

such as a compact disk player for music and a DVD player for motion 

pictures, as well as by radio or television transmission. The definitive 

House Committee Report states that a performance can be effected 

through “all kinds of equipment for reproducing or amplifying sounds 

or visual images, any sort of transmitting apparatus, any type of electronic retrieval system, and any other techniques and systems not yet in 

use or even invented.”246 Just as a live dramatic production constitutes 

a “performance” of the work, as does its broadcast on television, the 

theater exhibition of a motion picture (which “shows its images in . . . 

sequence”) also constitutes a “performance” that if unauthorized will 

infringe the copyright. 

 Because of the breadth of the definition of “perform,” the television broadcast of a singer’s rendition of a copyrighted song will give 

rise to a multiple series of “performances.” As is stated in the House 

Report: 

[A] singer is performing when he or she sings a song; a broadcasting 

network is performing when it transmits his or her performance 

(whether simultaneously or from records); a local broadcaster is performing when it transmits the network broadcast; a cable television system is performing when it retransmits the broadcast to its subscribers; 

and any individual is performing whenever he or she plays a phonorecord 

embodying the performance or communicates the performance by turning on a receiving set.247

The private set-owner, although a “performer” of the broadcast song, 

would not normally be liable for infringement, because his or her performance would not be “public.” 

 

246. H.R. Rep. No. 94-1476, at 63 (1976). 

247. Id.
Copyright Law 

124 

Public performance 

Of course, to infringe, section 106(4) provides that the performance 

must be “public.” The definition of that word in section 101 is designed to dispel the confusion that had arisen under the 1909 Act, 

which had left the word undefined. As stated in the House Report: 

“[P]erformances in ‘semipublic’ places such as clubs, lodges, factories, 

summer camps, and schools are ‘public performances’ subject to 

copyright control. . . . Routine meetings of businesses and governmental personnel would be excluded because they do not represent the 

gathering of a ‘substantial number of persons.’”248 Performances that 

take place at any of the former venues are, in the words of the statute, 

“at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.” 

 The definition in section 101 also makes it clear that a transmitted

performance is “public” even though the recipients are themselves 

located in private settings, such as their own homes or hotel rooms. 

(Under another definition in section 101, to “transmit” a performance 

is “to communicate it by any device or process whereby images or 

sounds are received beyond the place from which they are sent.”) A 

public performance thus takes place when a work is transmitted by 

radio or television, or to a computer over the Internet. 

 Although Congress took pains to define words like “public” with 

great care and detail, there will inevitably be a need for judicial interpretation. An example is the performance held “at a place open to the 

public.” The Court of Appeals for the Third Circuit has held that copyright in motion pictures was infringed by a business that invited members of the public to rent videotapes (lawfully made and purchased) 

and then to view them in rooms provided under the same roof for very 

small groups of family or friends.249 The court concluded that the 

showings in even the small rooms were “public,” and that the defendant store had “authorized” those public performances and thus infringed. A different outcome was reached, however, by the Court of 

Appeals for the Ninth Circuit in the case of a motel that rented video-

 

248. Id. at 64. 

249. Columbia Pictures Indus., Inc. v. Aveco, Inc., 800 F.2d 59 (3d Cir. 1986). 
Chapter 6: Exclusive Rights of the Copyright Owner 

125 

cassettes for viewing in private guest rooms; the motel was deemed to 

be facilitating a number of discrete private performances.250

 The right of public performance is more broadly written than had 

been the case under the 1909 Copyright Act. Under the earlier statute, 

the exclusive right to perform music had been limited to public performances “for profit.” Accordingly, performances of copyrighted music in schools, in public parks, at charitable events, and the like were 

not infringements and generated no royalties for the copyright owner. 

Performances of copyrighted dramatic works would infringe, if in public, regardless whether or not they were “for profit.” This distinction 

between dramatic and musical works was abandoned in the definition 

of exclusive rights under the 1976 Copyright Act; section 106(4) eliminates the “for profit” limitation upon the music performance right. 

Nonetheless, the present statute provides certain specific exemptions 

for public performances of music that do not obtain for public performances of dramatic works; these exemptions will be explored below. 

 Conspicuously omitted from the section 106(4) exclusive right of 

public performance is the “sound recording,” which is the work created through the combined creative efforts of performing artists and 

recording company—as distinguished from the “musical work,” which 

does get the benefit of the public-performance right. Thus, when a 

musical recording is played on the radio, licenses must be secured 

from and royalties paid to the owner of copyright in the song, but not 

to the owner of copyright in the sound recording. This differentiation 

is more a matter of historical development than anything else. 

 But in the 1990s, with the widespread development of digital media 

for storing and transmitting music, Congress concluded that recording 

artists and companies should be compensated for uses that would 

likely displace the purchase of conventional recordings. In 1995, Congress thus added to the Copyright Act section 106(6), which gives the 

exclusive right “in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.” Initially, this provided compensation for the playing of recordings on 

digital home subscription services akin to cable-television services, but 

 

250. Columbia Pictures Indus., Inc. v. Prof’l Real Estate Investors, Inc., 866 F.2d 278 

(9th Cir. 1989). 
Copyright Law 

126 

an even greater potential source of revenue became evident as home 

computers, powered by the Internet, came more widely to be used to 

listen to music (and potentially to substitute for record purchases). 

Congress in 1998, as part of the Digital Millennium Copyright Act, saw 

the need for further articulation of policy concerning the digital transmission of music on the Internet (“nonsubscription transmission”), 

and many of these transmissions are allowed subject to a compulsory 

license, spelled out in complex detail in section 114. Compulsory licenses are discussed in Chapter 7. 

Performing rights societies 

It is obvious that the owners of copyright in, say, a popular song cannot personally monitor, license, and collect royalties from the potentially vast number of public performances of their music—in live 

nightclub and restaurant performances, in jukebox plays, in radio and 

television broadcasts, in music subscription services such as Muzak, in 

supermarkets and production plants, on college campuses, in 

“streamed” music programs on the Internet, in motion picture theaters 

from film soundtracks, and the like. The owners of musical copyright 

(songwriters and their assignees, music publishers) have formed socalled performing rights societies to do so. The first such society in the 

United States, ASCAP (American Society of Composers, Authors and 

Publishers), was formed in 1914 by eminent American composers including Victor Herbert and John Philip Sousa. The other major performing rights societies are BMI (Broadcast Music, Inc.), formed in 

1939, and SESAC (formerly, Society of European Stage Authors and 

Composers). Technically, these societies serve as nonexclusive licensees, which in turn license others (principally entertainment venues 

and broadcasters) pursuant to standard royalty arrangements the terms 

of which are regulated by antitrust decrees. Suits for infringement, 

brought in the name of the copyright owner, are typically managed by 

representatives of the performing rights societies. Public-performance 

royalties collected by these societies total about $1.5 billion per year 

and are distributed to their members according to elaborate formulas. 
Chapter 6: Exclusive Rights of the Copyright Owner 

127 

 Section 116 of the Copyright Act explicitly recognizes these societies and assigns them a role in the distribution of royalties generated by 

jukebox performances of recorded music. 

The Right of Public Display 

Under the 1909 Act, it was unclear how to treat the public display of 

copyrighted works (e.g., the showing of a painting, sculpture, or literary manuscript on television). This form of exploitation did not fit 

comfortably within the statutory terms “copy” and “performance.” 

Congress dispelled the uncertainty by providing in section 106(5) of the 

1976 Copyright Act for the exclusive right “to display the copyrighted 

work publicly.” This right applies to all copyrighted works except for 

sound recordings (for obvious reasons); the showing of a motion picture or other audiovisual work is treated as a “performance,” but the 

showing of “individual images of a motion picture or other audiovisual 

work” falls within the display right. 

 Section 101 defines the “display” of a work as the showing of “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.” 

The “public” display of a work is defined in precisely the same manner 

as the public performance of a work. Thus, to show a painting or 

sculpture on a television broadcast is a public display of the work, 

which must be authorized in order to avoid infringement. 

 The public-display right of the copyright owner has taken on 

added significance with the development of the Internet. If, for example, a copyright-protected work of art is incorporated on a website, so 

that the accessing of that site by any Internet user produces an image of 

that artwork on a computer monitor, this constitutes a public display, 

which if unauthorized will infringe. (The same is true for the text of a 

literary work.) A number of courts have held that the unauthorized 

scanning of a copyrighted picture from a magazine, and its resulting 

conversion into digital form for storage on a computer hard-drive—an 

infringing “reproduction”—will generate an infringing public display 

when that image is made available by “uploading” over the Internet 
Copyright Law 

128 

(on a website or bulletin board) to persons who can then view and 

download the image on their computer (whether or not they make 

their own hardcopy at the receiving end).251

 Were the language of section 106(5) not conditioned in any way, 

the owner of a copyrighted work of art would infringe by displaying the 

work in a public exhibition space—or even by holding it up in a classroom or other public gathering. Just as Congress’s concern about private ownership of material objects has counterbalanced the right of 

“public distribution” through the first-sale doctrine, so too has Congress decided to limit the newly created public-display right by a 

specific exemption for the owner of the physical object in which the 

copyrighted work is embodied. Section 109(c) provides: 

 Notwithstanding the provisions of section 106(5), the owner of a 

particular copy lawfully made under this title, or any person authorized by 

such owner, is entitled, without the authority of the copyright owner, to 

display that copy publicly, either directly or by the projection of no more 

than one image at a time, to viewers present at the place where the copy is 

located. 

Thus, a face-to-face display by the owner of a copy of a copyrighted 

work to a public gathering will not infringe; nor will the use of a projection device to throw an image of the work onto a screen. If, however, the display is by closed-circuit television with the work in one 

location and the viewers in another, or if the display is by multiple 

television screens or computer monitors to facilitate closer audience 

viewing, the exemption in section 109(c) will not obtain, and the unauthorized display will constitute an infringement. This fine line reflects 

Congress’s desire to protect the copyright interest of the artist against 

the incursion of new technological developments that may threaten to 

displace the artist’s market for individual copies (with attendant dilution of royalty rights). 

 

251. Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997); Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993). 
Chapter 6: Exclusive Rights of the Copyright Owner 

129 

Visual Artists’ Rights 

In the Visual Artists Rights Act (VARA) of 1990, Congress amended the 

Copyright Act to give to an “author of a work of visual art” rights that 

are different from those given to a copyright owner. These are the 

rights of “attribution and integrity” and are equivalent to those “moral 

rights” recognized in most civil-law nations as well as in the Berne 

Convention. 

 These statutory rights are accorded by section 106A to persons 

who, under the definition of “work of visual art”252 in section 101 of the 

Copyright Act, create singular paintings, sculptures, or photographs 

produced for exhibition only, or such works in a signed and numbered 

series of no more than 200. 

 The “right of attribution” entitles a visual artist to “claim authorship” of a work of visual art, and to prevent the use of his or her name 

as author of a work created by another or as author of his or her own 

work in distorted or mutilated form. The artist could, for example, 

secure an injunction directing a museum to identify a displayed work 

as her own (rather than misattributing it to another artist), or money 

damages for harm to her reputation that results from attributing to her 

a physically mangled canvas or sculpture. 

 The “right of integrity” entitles the visual artist “to prevent any 

intentional distortion, mutilation, or other modification of that work 

which would be prejudicial to his or her honor or reputation.” If, for 

example, an artist produces a three-segment painting, and a purchaser 

of that painting separates the three segments in an effort to maximize 

the proceeds of resale (or simply for display in three separate locations), the artist has a claim for copyright infringement provided she 

can prove that there has been prejudice to her reputation. Section 

106A—as part of the right of integrity—also bars the intentional or 

grossly negligent “destruction of a work of recognized stature.” (The 

latter term is not defined, although its content was delineated in earlier 

versions of the legislation.) 

 

252. The definition is narrowly drawn, and excludes inter alia “advertising.” See Pollara 

v. Seymour, 344 F.3d 265 (2d Cir. 2003). 
Copyright Law 

130 

 The 1990 amendments also added a new section 113(d) to deal with 

the removal of works of visual art that are incorporated into buildings, 

such as murals or fixed statuary. 

 The Visual Artists Rights Act excludes from infringement the 

modification or distortion of a work that results from the “passage of 

time or the inherent nature of the materials” or that results from conservation efforts (unless grossly negligent) or from the lighting or 

placement of the work in a public exhibition. Perhaps most important, 

the statute expressly excludes from its ban alleged distortions or mutilations that take the form of “any reproduction, depiction, portrayal, or 

other use of a work” in books, magazines, newspapers, posters, advertising material, motion pictures and other forms set forth in sections 

101 and 106A(c)(3). In other words, it is the physical integrity of the 

singular work of art that is protected, and not its use in discolored or 

badly cropped reproductions. (Such reproductions might, however, be 

barred by the copyright owner as unauthorized derivative works prepared in violation of section 106(2).) 

 Because a “work of visual art” is a category that fits within the 

larger category of “pictorial, graphic and sculptural work,” a case 

could arise in which an artist’s right of integrity conflicts with the rights 

of a copyright owner to create a derivative work under section 106(2). 

Thus, if in the hypothetical set forth above, the artist of a threesegment painting were to transfer both the physical property and the 

copyright in that painting to another, the copyright owner’s claim to 

separate the segments—and thus to create “derivative works”—could 

presumably be defeated by the artist’s claim under section 106A that 

such action constitutes an infringing distortion, mutilation, or 

modification. The 1990 amendments do not expressly deal with this 

possible clash of equivalent statutory rights. 

 Under section 106A(d)(2), the protections of VARA are not afforded to works created (i.e., fixed in a tangible medium) before the 

effective date of that Act, June 1, 1991, unless the title to such work was 

not as of that date transferred from the artist.253

 

253. See Pavia v. 1120 Ave. of the Americas Assocs., 901 F. Supp. 620 (S.D.N.Y. 1995) 

(work was created, title was transferred, and work was dismantled without authorization, 
Chapter 6: Exclusive Rights of the Copyright Owner 

131 

Secondary Liability: Contributory and Vicarious 

Infringement 

A copyright owner may bring infringement actions not only against the 

person actually engaging in the unauthorized exercise of one of the 

exclusive rights in section 106, but also against “contributory” and 

“vicarious” infringers. The Copyright Act makes no specific provision 

for thus extending the range of liability, but these doctrines have been 

a part of our copyright jurisprudence for many decades.254 Courts have 

come only fairly recently to articulate the differences between the two 

theories of secondary liability—and both theories are being increasingly invoked by plaintiffs in infringement cases, particularly when it 

would be costly and complicated to proceed against a host of direct 

infringers, as is the situation with Internet copying. 

 The Supreme Court endorsed and applied the law of contributory 

copyright liability in Sony Corp. of America v. Universal City Studios, 

Inc.255 The plaintiff film studio contended that the manufacturer–

distributor of a popular brand of videotape recorder was responsible 

for contributory infringement, based on the direct infringement allegedly committed by the home-taper. The Court, in effect, concluded 

that even though contributory liability is not mentioned in the Copyright Act (unlike the specific provision therefor in the patent statute256), 

it is encompassed within section 106, which gives the copyright owner 

the exclusive right not only to make copies but “to authorize” others to 

make copies. Moreover, contributory liability is akin to such liability in 

tort cases more generally, which treat a person who knowingly participates in or furthers a tortious act as jointly and severally liable with the 

primary tortfeasor. The Court essentially endorsed the definition contained in an earlier and still frequently cited decision of the Court of 

Appeals for the Second Circuit: “[O]ne who, with knowledge of the 

 

all before June 1991; its continued display in that condition after June 1991 was held not 

to violate VARA). 

254. See, e.g., Polygram Int’l Publ’g, Inc. v. Nevada/TIG, Inc., 855 F. Supp. 1314 (D. 

Mass. 1994); Demetriades v. Kaufmann, 690 F. Supp. 289 (S.D.N.Y. 1988). 

255. 464 U.S. 417 (1984). 

256. See 35 U.S.C. §§ 271(b), (c). 
Copyright Law 

132 

infringing activity, induces, causes, or materially contributes to the 

infringing conduct of another, may be held liable as a ‘contributory’ 

infringer.”257

 The Supreme Court in Sony cautioned, however, that the manufacturers and sellers of videotape machines could not be liable merely 

because they had constructive knowledge that their purchasers might 

use the equipment to make infringing copies. Borrowing from the socalled “staple article” exception in patent law,258 the Court held that 

selling the videotape recorders would not constitute contributory infringement “if the product is widely used for legitimate, unobjectionable purposes. Indeed it need merely be capable of substantial noninfringing uses.”259 Because many copyright owners of television programs do not object to home videotaping, and because even unauthorized home videotaping, for time-shifting purposes, is a fair use, the 

Court concluded that “the Betamax is, therefore, capable of substantial 

noninfringing uses. Sony’s sale of such equipment to the general public 

does not constitute contributory infringement of respondents’ copyrights.”260

 Vicarious liability, on the other hand, can be imposed on persons 

who do not “induce, cause or materially contribute to” direct infringement or indeed who do not even know that another is involved in 

infringing activity. Again, as in the law of torts generally, vicarious 

copyright liability can be imposed on the basis of principles akin to 

those underpinning so-called “enterprise liability,” as exemplified in 

the doctrine of respondeat superior. In a seminal case on the issue, 

Shapiro, Bernstein & Co. v. H.L. Green Co., the Court of Appeals for the 

Second Circuit held: 

When the right and ability to supervise coalesce with an obvious and direct financial interest in the exploitation of copyrighted materials—even 

in the absence of actual knowledge that the copyright monopoly is being 

 

257. Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d 

Cir. 1971). 

258. 35 U.S.C. § 271(c). 

259. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984). 

260. Id. at 456. 
Chapter 6: Exclusive Rights of the Copyright Owner 

133 

impaired—the purposes of copyright law may be best effectuated by the 

imposition of liability upon the beneficiary of that exploitation.261

In that case, the court imposed liability for the sales of unlawfully 

made phonograph records upon the proprietor of a department store, 

as well as upon the record concessionaire actually doing the selling 

within the store; the store owner had the right to supervise the concessionaire and to share in its gross receipts from the sale of records.262

 These two theories of secondary liability were brought to bear in 

an influential decision of the Court of Appeals for the Ninth Circuit, 

Fonovisa, Inc. v. Cherry Auction, Inc.263 The plaintiff held copyrights in 

Hispanic music recordings, and claimed infringement on the part of 

the operators of a flea market (or “swap meet”) where third-party vendors routinely sold counterfeit recordings. The vendors rented space 

for their booths, and Cherry Auction advertised, supplied parking and 

refreshments (from which it derived income, to add to its admissions 

fees), and retained the right to exclude any vendor for any reason. The 

trial court had dismissed the complaint, but the court of appeals 

viewed the allegations as sufficient to sustain secondary-infringement 

claims. After a thorough review of the precedents, the court of appeals 

held that Cherry Auction would be vicariously liable for the vendors’ 

directly infringing record sales, because through its right to terminate 

vendors it had the ability to control their activities, and because it 

reaped “substantial financial benefits from admission fees, concession 

stand sales and parking fees, all of which flow directly from customers 

who want to buy the counterfeit recordings at bargain basement 

prices.”264 The court also found sufficient allegations of contributory 

 

261. Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963). 

262. In an effort to apply or extend the principle of vicarious liability (often with a 

view toward finding more solvent defendants), plaintiffs have named as defendants such 

entities as radio stations on which allegedly pirated merchandise is advertised, as well as 

sponsors of allegedly infringing broadcasts. See Screen Gems-Columbia Music, Inc. v. 

Mark-Fi Records, Inc., 256 F. Supp. 399 (S.D.N.Y. 1966) (advertising agency); Davis v. E.I. 

DuPont de Nemours & Co., 240 F. Supp. 612 (S.D.N.Y. 1965) (sponsor of television show 

and its advertising agency). 

263. 76 F.3d 259 (9th Cir. 1996). See also Arista Records, Inc. v. Flea World, Inc., 2006 

WL 842883 (D.N.J. 2006). 

264. Id. at 263. 
Copyright Law 

134 

infringement because Cherry Auction allegedly knew of the directly 

infringing sales and because it provided the “site and facilities” (i.e., 

space, utilities, parking, advertising, plumbing and customers) for 

those infringements. 

 It was only a matter of time before these principles and precedents 

were applied so as to determine whether there was secondary infringement on the part of website operators—such as Napster, StreamCast, 

and Grokster—that have provided file-sharing software that can be 

used to facilitate the unauthorized exchange of music recordings on 

the Internet. The first important decision was that of the Court of Appeals for the Ninth Circuit in A & M Records, Inc. v. Napster, Inc.265

There the court concluded that individual Napster users were infringing (by duplicating and distributing copyright-protected music and 

recordings) and were not engaging in fair use, and that Napster, Inc. 

was secondarily liable. There was contributory infringement: “Napster 

has actual knowledge that specific infringing material is available using 

its system, that it could block access to the system by suppliers of the 

infringing material, and that it failed to remove the material,”266 and 

Napster provided the “site and facilities” to assist finding and downloading the recordings. As for vicarious infringement, Napster had the 

ability to locate infringing material on its search indices and the right 

to terminate users’ access to the system; it also derived ever-increasing 

advertising revenues as more users were drawn to its website through 

the appeal of the infringing music.267

 The same court, the Ninth Circuit, reached a different conclusion—neither contributory nor vicarious infringement—in a later case 

involving the Grokster software, which created a more decentralized 

file-sharing network than in Napster, allowing the defendants to “step 

aside,” as it were, and to let the music-file swappers do so directly, 

without going through a centralized server and indexer. When the case 

 

265. 239 F.3d 1004 (9th Cir. 2001). 

266. Id. at 1022. 

267. In a later case in which the defendant’s file-sharing technology was somewhat 

different, the Seventh Circuit reached essentially the same conclusion concerning contributory liability as did the Napster court, and reserved judgment on the question of 

vicarious liability. In re Aimster Copyright Litig., 334 F.3d 643 (7th Cir. 2003). 
Chapter 6: Exclusive Rights of the Copyright Owner 

135 

reached the Supreme Court, the respondent companies invoked the 

Sony decision and sought to prove that their software was capable of 

substantial noninfringing uses, for example, the swapping of uncopyrighted material. 

 In Metro-Goldwyn-Mayer Studios Inc. v. Grokster Ltd.,

268 however, 

the Supreme Court reversed, while declining to determine how the 

Sony “substantial noninfringing use” test would apply in the case before it.269 Rather, the Court—buttressed by the Patent Act provision 

imposing liability upon “[w]hoever actively induces infringement”270—

held instead that “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or 

other affirmative steps taken to foster infringement, is liable for the 

resulting acts of infringement by third parties.”271 Although one could 

not infer from Sony’s sale of its Betamax videotape recorder, without 

more, that it knew of substantial infringement by users, there was no 

doubt of that with Grokster, whose business plan and advertising were 

explicitly designed to encourage unlawful private copying, particularly 

by those who had been forced to leave Napster as a result of the adverse judgment against it in the Ninth Circuit. The Court rejected the 

defendants’ contention that a finding of secondary liability would significantly interfere with the development of new electronic technologies: “The inducement rule . . . premises liability on purposeful, culpable expression and conduct, and thus does nothing to compromise 

legitimate commerce or discourage innovation having a lawful promise.”272 

 Issues of secondary copyright infringement are also raised when 

the defendant is one step more removed from the direct infringement 

than in the cases just discussed—in which the defendants consciously 

designed and distributed software that was used, and was largely meant 

 

268. 125 S. Ct. 2764 (2005). 

269. Six Justices who joined in the unanimous Court opinion did, however, opine as 

to how the Sony test would apply on the record before them, with three finding contributory liability and three finding none. 

270. 35 U.S.C. § 271(b). 

271. Grokster, 125 S. Ct. at 2770. 

272. Id. at 2780. 
Copyright Law 

136 

to be used, to make illicit copies and phonorecords. What, if any, liability is there, on the part of Internet service providers (ISPs)—such 

as AOL and, increasingly, telephone and cable companies—that allow 

home computer users to connect to the Internet and to post and exchange all manner of potentially copyright-protected materials? These 

ISPs provide an appealing target for copyright infringement lawsuits, 

when the alternative would often be cumbersome suits against individuals. 

 The solution to this question has been provided partly by the federal courts and partly by Congress. Perhaps the most influential court 

decision is Religious Technology Center v. Netcom On-Line Communication Services, Inc.273 The plaintiff, a unit within the Church of Scientology, finding that a disgruntled former member, Erlich, had posted 

certain unpublished Church documents on an online “bulletin board,” 

brought a copyright infringement action against the operator of the 

bulletin board and the ISP that provided online access to the bulletin 

board and to the Internet more generally. The court held that the ISP 

(Netcom) could be liable as a contributory infringer if, after receiving a 

“take-down notice” from the Church, it could reasonably have known 

of the copyright-protected status of the posted documents, and it allowed the messages to remain on its system and to be further distributed to servers worldwide. The court also found, with respect to vicarious liability, that Netcom had a history of policing its users’ postings 

and suspending some (for obscenity, commercial advertising and the 

like); but that it derived no economic benefits from Erlich’s infringement. 

 Although the Netcom case and others like it exonerated ISPs from 

direct liability when they acted as “mere conduits” for Internet communications, the prospect of even indirect liability for contributory 

infringement spurred service providers to lobby Congress for exemptions from copyright liability and remedies. In 1998 Congress passed 

the Digital Millennium Copyright Act (DMCA), which added section 

512 to the Copyright Act.274 That section adjusted the risks of copyright 

owners and service providers so as to place the burden on the former 

 

273. 907 F. Supp. 1361 (N.D. Cal. 1995). 

274. 17 U.S.C. § 512. 
Chapter 6: Exclusive Rights of the Copyright Owner 

137 

to identify and notify “mere conduit” service providers of infringements carried by or residing on the providers’ systems. By contrast, the 

law makes no special provision for service providers who originate or 

are otherwise actively implicated in the content residing on their servers or transiting through their systems. 

 Section 512 of the Copyright Act does not purport to define the 

conduct of an ISP that would render it liable for direct, contributory or 

vicarious infringement; rather, it identifies several different ISP activities and specifies conditions for immunizing the ISP against monetary 

relief and for limiting its exposure to injunctive relief. Section 512 

distinguishes, for example, the “mere conduit” from the ISP that stores 

on its network allegedly infringing material for more than several days 

(e.g., by providing server space for a user’s website). The former is 

given immunity from monetary liability in most instances, while the 

latter is susceptible to “take-down notices”275 from copyright owners 

and an obligation under stipulated circumstances to remove the allegedly offending material from its network. Section 512 is intricate and 

requires patient reading. 

 

275. See generally Rossi v. Motion Picture Ass’n of Am., 391 F.3d 1000 (9th Cir. 2004); 

ALS Scan, Inc. v. RemarQ Cmtys., Inc., 239 F.3d 619 (4th Cir. 2001). 
Blank pages inserted to preserve pagination when printing double-sided copies.
139 

Chapter 7 

Fair Use and Other Exemptions from the 

Exclusive Rights of the Copyright Owner 

All of the rights set forth in section 106 of the Copyright Act are expressly granted “subject to sections 107 through 122.” The latter sections impose a variety of limits on the rights of the copyright owner, in 

the form of compulsory licenses, complete exemptions from liability, 

and other privileges such as fair use. A discussion of the jurisprudence 

that has developed under section 107 dealing with fair use is followed 

by an overview of sections 108 through 122. 

Fair Use 

The fair use doctrine constitutes perhaps the most significant limitation 

on the exclusive rights held by a copyright owner. The doctrine was 

developed by courts in the mid-nineteenth century to privilege what 

would otherwise have been a copyright infringement. Justice Story’s 

decision in Folsom v. Marsh,

276 rendered in the Massachusetts federal 

circuit court in 1841, appears to be the first articulation of the policies 

underlying fair use. Justice Story opined that quoting copyrighted material in the course of preparing a biography or a critical commentary 

might be excusable, but not “if so much is taken, that the value of the 

original is sensibly diminished, or the labors of the original author are 

substantially to an injurious extent appropriated by another.”277 He 

thought it proper to consider “the nature and objects of the selections 

made” and “the quantity and value of the materials used.”278 Later 

courts also placed weight on whether unauthorized quotation of copyrighted material “would serve the public interest in the free dissemination of information” and whether the preparation of the defendant’s 

work “requires some use of prior materials dealing with the same sub-

 

276. 9 F. Cas. 342 (C.C.D. Mass. 1841) (No. 4,901). 

277. Id. at 348. 

278. Id. 
Copyright Law 

140 

ject matter.”279 Although some courts and scholars anchored “fair use” 

in the plaintiff’s implied consent to quotation, as when excerpts are 

used in literary criticism or comment, this consent proved to be fictive 

more often than not. 

 The more soundly based rationale for the fair use doctrine is the 

very purpose articulated in the constitutional copyright clause: “to 

promote the progress of science.”280 The fair use doctrine comes into 

play when a too literal enforcement of the copyright owner’s rights 

would operate to the detriment of the public interest in access to and 

dissemination of knowledge and culture, and unauthorized copying 

can be tolerated without significant economic injury to the copyright 

owner.281

 The 1976 House Report set forth a number of examples of possible 

fair uses, as generally understood under the 1909 Act: 

quotation of excerpts in a review or criticism for purposes of illustration 

or comment; quotation of short passages in a scholarly or technical work, 

for illustration or clarification of the author’s observations; use in a parody of some of the content of the work parodied; summary of an address 

or article, with brief quotations, in a news report; reproduction by a library of a portion of a work to replace part of a damaged copy; reproduction by a teacher or student of a small part of a work to illustrate a lesson; 

reproduction of a work in legislative or judicial proceedings or reports; 

incidental and fortuitous reproduction, in a newsreel or broadcast, of a 

work located in the scene of an event being reported.282

Although it was easy enough to give a variety of readily accepted examples of fair use, it was not so easy to articulate any clear standards or 

a “litmus test.” “Indeed, since the doctrine is an equitable rule of reason, no generally applicable definition is possible, and each case raising the question must be decided on its own facts.”283

 

279. Rosemont Enters. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966). 

280. U.S. Const. Art. I, § 8, cl. 8. 

281. See generally Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). 

282. H.R. Rep. No. 94-1476, at 65 (1976). 

283. Id.
Chapter 7: Fair Use and Other Exemptions 

141 

Statutory uses and factors 

In the 1976 Copyright Act, Congress took the bold step of incorporating the fair use doctrine into the statute, of setting forth a number of 

illustrative fair uses and, most important, of delineating four factors 

that courts are to consider (possibly along with other factors) when 

passing upon a fair use defense. Section 107 provides: 

 Notwithstanding the provisions of section 106, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, 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 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. 

The fact that a work is unpublished shall not of itself bar a finding of fair 

use if such finding is made upon consideration of all the above factors.284

The drafters of section 107 regarded it as endorsing 

the purpose and general scope of the judicial doctrine of fair use, but there 

is no disposition to freeze the doctrine in the statute, especially during a 

period of rapid technological change. . . . [T]he courts must be free to 

adapt the doctrine to particular situations on a case-by-case basis. Section 

107 is intended to restate the present judicial doctrine of fair use, not to 

change, narrow, or enlarge it in any way.285

 

284. This final sentence was added in 1992, to deal with the issue raised in several thenrecent court of appeals decisions involving biographers’ and historians’ use of unpublished letters, diaries and the like. 

285. H.R. Rep. No. 94-1476, at 66 (1976). 
Copyright Law 

142 

 The Supreme Court has held that “fair use is a mixed question of 

law and fact.”286 If a district court has found facts sufficient to evaluate 

each of the statutory factors, the court of appeals may determine, without remand, whether the defendant has made a fair use of copyrighted 

material as a matter of law. 

 The opening paragraph of section 107 sets forth a number of 

illustrative uses that may fall within the fair use privilege. Curiously, the 

first two Supreme Court decisions that construed section 107 do not 

appear to comport with the statutory illustrations. In Sony Corp. of 

America v. Universal City Studios, Inc.,287 the Court sustained a claim of 

fair use for home videotaping of copyrighted television programs (for 

more convenient viewing)—a use rather clearly falling outside the 

enumerated categories. In Harper & Row Publishers, Inc. v. Nation Enterprises,

288 involving a news magazine’s quotations from the soon-tobe-published memoirs of President Ford relating to his pardon of 

President Nixon—a use falling rather clearly within the enumerated 

category of news reporting—the Court rejected the defendant’s claim 

of fair use. In explaining the weight to be given to the listing of uses in 

the first sentence of section 107, the Court in Harper & Row stated that 

the enumeration “give[s] some idea of the sort of activities the courts 

might regard as fair use under the circumstances. . . . This listing was 

not intended to be exhaustive, . . . or to single out any particular use as 

presumptively a ‘fair’ use.”289 The Court made clear that whether a use 

is fair in particular circumstances “will depend upon the application of 

the determinative factors, including those mentioned in the second 

sentence.”290 Even though the enumerated uses in the first sentence are 

 

286. Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985). 

287. 464 U.S. 417 (1984). 

288. 471 U.S. 539 (1985). 

289. Id. at 561 (citations omitted). 

290. Id. (citing S. Rep. No. 94-473, at 62 (1975)). A court of appeals had concluded, 

shortly before, that consideration of at least the four factors in the second sentence was a 

mandated part of the fair use analysis, by pointing out Congress’s use of the phrase “shall 

include” in that sentence. Pacific & S. Co. v. Duncan, 744 F.2d 1490 (11th Cir. 1984). See 

also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 581 (1994) (“[P]arody, like any 

other use, has to work its way through the relevant factors, and be judged case by case, in 

light of the ends of the copyright law.”). 
Chapter 7: Fair Use and Other Exemptions 

143 

not dispositive and not even presumptive, they have nonetheless come 

to play an important role in application of the first of the four factors 

in the second sentence (“purpose and character of the use”), as later 

elaborated by the Supreme Court in Campbell v. Acuff-Rose Music, Inc., 

discussed below. 

Supreme Court fair use jurisprudence 

The Supreme Court has decided several cases involving the application 

of the fair use doctrine and section 107 of the Copyright Act. Despite 

some initial inconsistencies, the Court’s jurisprudence has crystallized 

and come to provide intelligible and useful guidelines for analysis. 

 In Sony Corp. of America v. Universal City Studios, Inc.,291 decided 

in 1984, the Court, dividing 5 to 4, reviewed the statutory factors somewhat hurriedly and found that home videotaping of copyrighted television programs, for more convenient time-shifting purposes, constituted 

a fair use. The Court held that the first factor supported fair use because the home viewer taped the program for personal and noncommercial use. The Court majority in fact announced that “every commercial use of copyrighted material is presumptively an unfair [use]” 

and also presumptively demonstrates a likelihood of economic harm to 

the copyright owner (the fourth statutory factor); “but if [the copying] 

is for a noncommercial purpose, the likelihood must be demonstrated.”292 The Court acknowledged that, even though typically the 

entire program was taped (the third factor), this was not particularly 

damaging to the fair use contention because the program had in any 

event been broadcast free to the public. Finally, upon examination of 

the factual record, the Court concluded that there was inadequate evidence that home taping for time-shifting purposes would have any 

material adverse impact upon the market for the plaintiffs’ programming, either in its initial exhibition or in later exhibition on television 

(reruns) or even potentially in motion picture theaters. The four dissenters strongly disagreed with respect to the application and conclusion of the four-factor analysis. 

 

291. 464 U.S. 417 (1984). 

292. Id. at 451. 
Copyright Law 

144 

 The Court divided again (6 to 3) the following year in Harper & 

Row Publishers, Inc. v. Nation Enterprises.

293 There, the defendant publisher of The Nation magazine secured a purloined copy of the manuscript of President Ford’s memoirs, about to be published by Harper & 

Row and excerpted in Time magazine; the defendant broke its story 

about the Ford pardon of Richard Nixon and quoted verbatim some 

300 words from the unpublished manuscript. The Court traced the 

development of the fair use doctrine and noted its nearly nonexistent 

application to unpublished works under prior copyright law. It rejected 

the defendant’s claim that First Amendment concerns warranted contracting the scope of copyright and concluded, instead, that First 

Amendment interests are already protected under copyright doctrines 

such as fair use and the idea–expression dichotomy. The Court also 

rejected the contention that works of public figures are entitled to 

lesser copyright protection, and ruled against fair use. 

 The Court acknowledged that news reporting was one of the stipulated uses in section 107, but invoked the presumption from the Sony

case against commercial uses such as The Nation’s so that the defendant bore the burden of proving its use to be fair (typically by showing 

no adverse market impact upon the plaintiff’s work). As to the second 

statutory factor, the Court conceded that “the law generally recognizes 

a greater need to disseminate factual works than works of fiction or 

fantasy,”294 but it concluded that The Nation had copied more than 

merely objective facts. Moreover, “the fact that a work is unpublished 

is a critical element of its ‘nature’,”295 a “key, though not necessarily 

determinative factor” against fair use.296 Although a relatively small part 

of the Ford manuscript was copied, it comprised a large part of the 

article in The Nation and, most significantly, was qualitatively among 

the most important parts of the manuscript, containing the “most powerful passages,” the “dramatic focal points” of great “expressive value.” 

The Court characterized the fourth statutory factor—effect upon the 

potential market for the copyrighted work—as “undoubtedly the single 

 

293. 471 U.S. 539 (1985). 

294. Id. at 563. 

295. Id. at 564. 

296. Id. at 554. 
Chapter 7: Fair Use and Other Exemptions 

145 

most important element of fair use.”297 It pointed out that the “scooping” by The Nation caused Time to cancel its contract with Harper & 

Row to publish excerpts. Moreover, “[t]his inquiry must take account 

not only of harm to the original but also of harm to the market for 

derivative works,”298 for the statute refers to adverse effect upon the 

“potential market” for the work. 

 Thus, after Sony and Nation, it appeared that there would be a 

compelling case against fair use should the record show a commercial 

use by the defendant, or a potentially significant adverse economic 

impact on the copyrighted work, or an unpublished copyrighted work. 

Indeed, as to the latter element, a number of court of appeals decisions299 gave such great weight, in cases involving biographies, to the 

unpublished nature of letters, diaries and the like—the core source 

materials of historical and biographical writings—that Congress 

stepped in in 1992 to add a new closing sentence to section 107: “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.” 

 In its most recent foray into the waters of fair use,300 the Supreme 

Court used an arguably unappealing set of facts to dispel some misconceptions from the earlier cases and to establish important guidelines that have since informed the analysis of the lower courts. In 

Campbell v. Acuff-Rose Music, Inc.,301 a rap group named 2 Live 

Crew—after requesting and being denied permission to record a rap 

parody of the well-known rock song by Roy Orbison, “Oh, Pretty 

 

297. Id. at 566. 

298. Id. at 568. 

299. E.g., Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir. 1987). Compare New Era 

Pubs. Int’l v. Henry Holt & Co., 873 F.2d 576 (2d Cir.), reh’g en banc denied, 884 F.2d 659 

(2d Cir. 1989), with New Era Pubs. Int’l v. Carol Publ’g Group, 904 F.2d 152 (2d Cir. 1990). 

300. Stewart v. Abend, 495 U.S. 207 (1990), involved what the Court found to be the 

unauthorized marketing by the copyright owners of the well-known motion picture Rear 

Window, over the objection of the owner of copyright in the short mystery story upon 

which the film was based. The Court rejected the fair use defense: “[A]ll four factors 

point to unfair use. ‘This case presents a classic example of an unfair use: a commercial 

use of a fictional story that adversely affects the story owner’s adaptation rights.’” Id. at 

238. 

301. 510 U.S. 569 (1994). 
Copyright Law 

146 

Woman”—recorded it anyway, borrowing the distinctive opening guitar pattern, mimicking the opening “Pretty Woman” phrase in each 

verse, and adding, to the rhythm of the original, somewhat salacious 

lyrics. The court of appeals ruled against fair use, relying heavily upon 

what clearly appeared to be the Supreme Court cases strongly disfavoring commercial uses and the copying of the “heart” of a copyrighted 

work. 

 The Supreme Court unanimously reversed. It held that parody—

poking fun at an earlier copyright-protected work, as distinguished 

from poking fun at some extrinsic happening or individual (satire)—is 

a form of “criticism or comment” listed in the first sentence of section 

107; but that sentence is meant to give only “general guidance” about 

uses commonly found to be fair. As to the four statutory factors, they 

must not “be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of 

copyright.”302

 In examining the first factor, the Court downgraded the importance 

of the defendants’ “commercial use,” noting that essentially all fair use 

claims (and the uses enumerated in the first sentence) are made in the 

for-profit context of publishing and broadcasting. The key issue is 

whether the defendant has made a “transformative” use: not one that 

merely supersedes the objects of the earlier work by copying it, but that 

“adds something new, with a further purpose or different character, 

altering the first with new expression, meaning, or message.”303 A court 

must inquire “whether a parodic character may reasonably be perceived,” and no attention should be given to whether it is in good or 

bad taste (an issue that had been mooted in earlier decisions in the 

lower courts). As to the second factor, a court must determine whether 

the copyrighted work falls close “to the core of intended copyright 

protection” because it is creative (rather than essentially factual): the 

exemplar “Oh, Pretty Woman” was said to do so. The court of appeals 

 

302. Id. at 578. The Court, through Justice Souter, gave credit to Justice Story, and 

Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841) (No. 4,901), discussed supra page 139, 

for fashioning decisional criteria that were essentially incorporated by Congress in section 

107 nearly 150 years later. 

303. Id. at 579. 
Chapter 7: Fair Use and Other Exemptions 

147 

had emphasized the third factor, and the taking of the qualitative 

“heart” of that song, but the Supreme Court—although it acknowledged that “quality and importance” of the copied material should 

count as well as quantity—observed that the lower court had failed to 

take account of the special nature of parody. “When parody takes aim 

at a particular original work, the parody must be able to ‘conjure up’ at 

least enough of that original to make the object of its critical wit recognizable. . . . [T]he heart is . . . what most readily conjures up the song 

for parody, and it is the heart at which parody takes aim. Copying does 

not become excessive in relation to parodic purpose merely because 

the portion taken was the original’s heart.”304

 As for the fourth factor, and any adverse market impact that was to 

be “presumed” under Sony by virtue of the defendants’ commercial 

use, the Campbell decision significantly altered the standard: A presumption of market harm is not applicable to a case involving something beyond “verbatim copying of the original in its entirety,”305 and 

thus not to a “transformative” work, particularly for a parody which 

serves a “different market function.” The Court remanded to allow the 

lower court to consider further evidence of market harm (flowing from 

rap-music substitution and not from parodic criticism), the amount of 

copyrighted material taken and what the defendants added to it, and 

other elements noted by the Court in its opinion. 

 With its decision in Campbell, the Supreme Court on the one hand 

diluted the helpful litigative presumptions of the earlier cases and emphasized the complementary and interactive nature of the four statutory factors, but pointed toward the “transformative” standard and 

potential adverse market harm as of central importance to fair use 

analysis. The Court also noted that in cases of parody and other critical 

works, in which there is infringement, and a fair use defense is found 

unpersuasive, an injunction need not automatically issue; the public’s 

interest in the publication of the later work and the interest of the 

copyright owner may both be protected by an award of damages. 

 

304. Id. at 588. 

305. Id. at 591. 
Copyright Law 

148 

Fair use and the creation of new works 

With the Supreme Court jurisprudence in mind, it is useful to divide 

the lower court decisions dealing with fair use into two categories: 

those in which the defendant has borrowed for the purpose of creating 

a new work, and those in which the defendant has made and disseminated what are substantially copies of an earlier work with the aid of 

new technologies. In the former situation, the more permissive attitude 

toward “transformative” works would be expected to result in more 

frequent findings of fair use. This has in fact been the case, although 

the Supreme Court’s emphasis in Campbell v. Acuff-Rose Music, Inc.306

upon the case-by-case determination of fair use claims, and the interwoven nature of the four statutory factors, makes confident predictions 

of case outcomes all but impossible. 

 The courts have indeed given great weight to the transformative 

aspects of an otherwise infringing work, under the first fair use factor, 

although the decisions do not form an altogether coherent pattern and 

there are often inconsistencies in assessing whether a work is indeed 

transformative (which is essentially another name for a derivative work 

based on the copyrighted work). 

 Examples are several courts of appeals cases involving alleged 

transformative works in the nature of parodies. The Ninth Circuit, rejecting a fair use defense, held that it was not transformative to use the 

well-known “Cat in the Hat” poem of Dr. Seuss as the basis for a fully 

rewritten poem telling the story of the O.J. Simpson criminal trial.307

The Second Circuit also held against a fair use defense on the part of 

the publisher of a 132-page book containing some 643 newly written 

trivia questions designed to test its readers’ recollection of scenes and 

events from the Seinfeld television series; among other things, the court 

noted that the trivia game “is not critical of the program, nor does it 

parody the program; if anything, [it] pays homage to Seinfeld.”308 The 

 

306. 510 U.S. 569 (1994). 

307. Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997). 

308. Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132, 145 (2d Cir. 

1998) (quoting lower court). 
Chapter 7: Fair Use and Other Exemptions 

149 

court also found that the “trivia” market niche is one that the producers of Seinfeld might well wish to develop for themselves in the future. 

 On the other hand, that same court held transformative and a fair 

use a photograph combining the head of a middle-aged male comic 

actor with a nude pregnant female body meant to duplicate the Annie 

Leibovitz cover for Vanity Fair magazine showing the actress Demi 

Moore—even though the doctored photograph was used in an advertisement and only marginally “commented” upon the Leibovitz original.309 And in Suntrust Bank v. Houghton Mifflin Co.,

310 decided in 

2001, the Eleventh Circuit upheld the fair use defense of The Wind 

Done Gone (TWDG) against an infringement claim by the owners of 

copyright in the classic novel Gone With the Wind (GWTW). The former novel borrowed 18 characters from GWTW, made only transparent changes in the character names, and for much of the book recounted many of the same incidents—but altogether altered the virtues 

and vices of the white and the black characters, and made concomitant 

alterations in the story line, so that “the institutions and values romanticized in GWTW are exposed as corrupt in TWDG.”311 The court 

characterized TWDG as a parody in the sense of critical commentary, 

despite the fact that it lacked a comedic tone and did not take the form 

of scholarly or journalistic commentary. 

 In an influential decision arising in a quite different context—

reverse engineering (and thus copying) a computer program embodied 

in a game console—the Ninth Circuit in Sega Enterprises, Ltd. v. Accolade, Inc.312 upheld the defense of fair use. The defendant’s purpose 

was to create an “intermediate copy” which served as the basis for 

analysis of the program and ultimately for the design of compatible 

video games. Reverse engineering was the only practicable way for the 

defendant to discover unprotectible elements (e.g., ideas and methods 

of operation) that were embedded in the copyrightable “object code” 

that operated the game console; to rule otherwise would have allowed 

 

309. Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1992). 

310. 268 F.3d 1257 (11th Cir. 2001) (preliminary injunction denied). 

311. Id. at 1267. 

312. 977 F.2d 1510 (9th Cir. 1992). 
Copyright Law 

150 

the plaintiff to preclude public access to its ideas and functional concepts, in violation of the core policies of copyright law. 

 Because section 107 states that in ruling upon a defense of fair use, 

the factors considered by the court “shall include” the four already 

fully discussed here, courts have regularly introduced additional considerations into their analysis. For example, courts have inquired into 

the “amount and substantiality of the portion used” not only “in relation to the copyrighted work as a whole,” but in relation to the defendant’s work as well. The Supreme Court, in Harper & Row Publishers, 

Inc. v. Nation Enterprises,

313 pointed out that the 300 words copied from 

President Ford’s 450-page book constituted 13% of the infringing article. Courts have tended to be more lenient when the unauthorized use 

was “incidental,” that is, when the copyright-protected work was captured as part of a larger permissible reproduction or performance, 

such as a song partially heard in television news footage of a festival 

event.314 The Second Circuit Court of Appeals gave thorough consideration to the doctrine of “incidental use”—and the de minimis doctrine more generally in copyright—in a case in which a poster of a 

copyrighted artwork was incorporated in the set of a television program 

and fleetingly shown.315 The court nonetheless ruled against fair use. 

Some courts have counted it against a defendant invoking fair use that 

he or she behaved in an ethically objectionable fashion316—as exemplified by the Supreme Court’s reference to the “purloined manuscript” 

in Nation—although the Court just as readily held in Campbell that the 

defendants’ having ignored the copyright owner’s denial of a license to 

record was immaterial, and that whether “parody is in good taste or 

bad does not and should not matter to fair use.”317

 

313. 471 U.S. 539 (1985). 

314. Italian Book Corp. v. ABC, 458 F. Supp. 65 (S.D.N.Y. 1978). But see Schumann v. 

Albuquerque Corp., 664 F. Supp. 473 (D.N.M. 1987) (broadcast of entire copyrighted 

songs had “entertainment value”). 

315. Ringgold v. Black Entm’t T.V., Inc., 126 F.3d 70 (2d Cir. 1997) (holding use “decorative” rather than “transformative”). 

316. NXIVM Corp. v. Ross Inst., 364 F.3d 471 (2d Cir. 2004). 

317. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 582 (1994). 
Chapter 7: Fair Use and Other Exemptions 

151 

Fair use and new technologies of copying and dissemination 

The four factors set forth in section 107 have been applied not only in 

cases in which the defendant creates a new derivative work but also 

when it seeks to employ new technologies that permit the efficient duplication and dissemination of the copyrighted work. The fair use defense is then embedded within an assertion that the rights of the copyright owner should be counterbalanced by the public interest in increasingly inexpensive access and resulting intellectual enrichment that 

the new technologies can afford. Key cases have involved videotaping 

of copyrighted television programs, photocopying of literary materials 

useful in education, and Internet reproduction and transmission of all 

manner of copyrightable works (particularly musical sound recordings). 

 In Sony Corp. of America v. Universal City Studios, Inc.,

318 decided 

by the Supreme Court in 1984, the central issue was whether Sony, the 

manufacturer of the first commercially successful videotape recorder 

(VTR), was secondarily liable for alleged infringements on the part of 

home viewers who taped copyrighted programs and films shown on 

television for later viewing at more convenient times (“time-shifting”). 

The Court held—over a forceful dissenting opinion for four Justices—

that such home videotaping for private and noncommercial use was a 

fair use, and that Sony could not be held liable; Sony’s VTRs were 

capable of being put to “substantial noninfringing uses.” The Court 

held that noncommercial uses are presumptively fair and presumptively do not adversely affect the market of the copyright owner; and 

the record showed in any event that there was no such market impact 

of taping for the purpose of time-shifting. That entire copyrighted programs and films were copied, with no “productive” use (or in today’s 

terminology, “transformative” use) made by the home viewer, “may be 

helpful in calibrating the balance, but it cannot be wholly determinative.” 319

 Several influential decisions of lower courts explored the application of the fair use doctrine to photocopying technologies. Two proto-

 

318. 464 U.S. 417 (1984). 

319. Id. at 455 n.40. 
Copyright Law 

152 

type situations were the making and sale by commercial copy-shops of 

multiple copies of so-called coursepacks compiled by college professors (using copyright-protected material without consent); and the 

making of single copies of journal articles for individuals employed to 

do research for commercial entities. Although these activities would 

appear commonly to advance the public interest, and are mentioned in 

the first sentence of section 107, indeed quite explicitly (i.e., “teaching 

(including multiple copies for classroom use), scholarship, or research”), the trend of the few cases is to find these activities not to fall 

within the fair use privilege. Not surprisingly, there are concurring and 

dissenting opinions to be reckoned with. 

 In Basic Books, Inc. v. Kinko’s Graphics Corp.,

320 the photoreproduction by the Kinko’s company of teaching materials, using 

substantial portions of copyrighted books—without securing permission from or paying license fees to the copyright owners—was held by 

the district court in the Southern District of New York not to be a fair 

use. The court placed particular weight on the profit-making motive of 

the defendant. Several years later, in Princeton University Press v. 

Michigan Document Services, Inc.,

321 a sharply divided Sixth Circuit 

sitting en banc reached the same outcome as the Kinko’s court on similar facts. The majority held, among other things, that the reference in 

section 107 to “multiple copies for classroom use” was not meant to 

provide a blanket exemption for such activity (any more than for any 

of the other activities mentioned there, such as criticism and news reporting); that the for-profit status of the defendant (a negative under 

the first fair use factor) is not altered by the nonprofit status of the ultimate academic users (teachers and students); that the un-

“transformed” verbatim duplication of whole chapters and other large 

portions of the plaintiff–publishers’ books weighed heavily against fair 

use; and that the photocopying adversely affected not only the publishers’ book sales but also the photocopying royalties that they would 

otherwise be paid by a by-then thriving licensing and collecting agency 

(the Copyright Clearance Center). (Three separate dissenting opinions 

emphasized the weight properly to be accorded to educational uses in 

 

320. 758 F. Supp. 1522 (S.D.N.Y. 1991). 

321. 99 F.3d 1381 (6th Cir. 1996) (en banc). 
Chapter 7: Fair Use and Other Exemptions 

153 

the fair use framework in particular and, more generally, in promoting 

the objectives of copyright.) 

 The principal decision considering, and rejecting, the fair use defense in connection with single photocopies of short journal articles 

made to assist researchers is that of the Court of Appeals for the Second Circuit in American Geophysical Union v. Texaco, Inc.322 Researchers engaged in developing new chemical products for the Texaco company received copies of scientific-journal tables of contents and indicated which articles they wished to read or to retain in their files for 

future use, so that the articles could be photocopied for them; in most 

cases, Texaco paid for two or three subscriptions to each journal in 

order to make the articles more accessible to its research staff. The 

court (2 to 1) concluded, inter alia, that the use of the photocopies was 

“archival” and a substitute for purchasing additional subscriptions (or 

paying photocopying license fees); that it was hardly “transformative”; 

that the measure for applying the “amount and substantiality” factor in 

section 107 was the individual journal article and not the entire journal 

issue (or volume); and that potential lost license fees were to be taken 

into account because courts should consider “traditional, reasonable, 

or likely to be developed markets when examining and assessing a secondary use’s ‘effect upon the potential market for or value of the copyrighted work.’”323

 Of course, perhaps the most powerful new technology of reproduction of copyrighted works is the computer and in particular the Internet. Not surprisingly, fair use defenses have been asserted in this setting. As already noted, the Court of Appeals for the Ninth Circuit held 

it to be a fair use to “decompile” a computer program in a video game 

console—thus converting an object-code version into a humanreadable source-code version—in order to unearth unprotectible ideas 

and methods of operation. The defendant’s purpose was to author 

video games that would be compatible with, and playable on, the 

plaintiff’s game console.324 The same court of appeals also ruled upon 

the fair use defense asserted by the compiler of a pictorial (as distin-

 

322. 60 F.3d 913 (2d Cir. 1994). 

323. Id. at 930. 

324. Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992). 
Copyright Law 

154 

guished from textual) database, who included without consent the 

copyright-protected photographs displayed on a photographer’s website.325 The court held that small “thumbnail” versions of the photographs could not be enlarged by a computer user with sufficient clarity 

to result in competitive injury to the photographer;326 moreover (although the analysis is debatable), the court held the thumbnail versions to be “transformative” because they were meant to be used not 

for aesthetic purposes but rather to be a part of an exhaustive pictorial 

database. The database-compiler’s display on its website of full-size 

photographic images, however, was determined not to be transformative327 and to threaten economic injury to the plaintiff photographer.328

 Confronted with the question whether so-called peer-to-peer filesharing of copyrighted music recordings is a fair use, however, the 

Ninth Circuit held that it is not. In A & M Records, Inc. v. Napster, 

Inc.,

329 the Napster website made available free software that could be 

utilized for the purpose of searching for and copying recordings located on other computer hard-drives, and for the purpose of making 

accessible to others recordings stored on one’s own computer. The 

contributory liability of Napster depended upon whether the filesharing computer users were infringing or were engaged in fair uses. 

Unlike the videotaping of copyrighted television programs for temporary “time-shifting” purposes, found by the Supreme Court to be a fair 

use,330 the Ninth Circuit held the Internet-facilitated sharing of music 

files not to be thus privileged. As for the first factor in section 107, the 

court found the reproduction and distribution of copyrighted music 

recordings not to be in any way “transformative”; moreover, the computer user was engaged in a “commercial” use (“[C]ommercial use is 

demonstrated by a showing that repeated and exploitative unauthor-

 

325. Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir. 2002). But compare Perfect 10 v. 

Google, Inc., 416 F. Supp. 2d 828 (C.D. Cal 2006) (Google’s display of thumbnail photos is 

not a fair use, in light of its profit motive and the adverse impact on potential royalties 

from cellphone use). 

326. Id. at 944. 

327. Id. at 947. 

328. Id. at 948. 

329. 239 F.3d 1004 (9th Cir. 2001). 

330. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984). 
Chapter 7: Fair Use and Other Exemptions 

155 

ized copies of copyrighted works were made to save the expense of 

purchasing authorized copies.”).331 The musical compositions and 

sound recordings were “creative,” and file transfer “necessarily ‘involves copying the entirety of the copyrighted work.’”332 Under the 

fourth factor, the court concluded that Napster causes economic harm 

to the copyright owners by reducing the sale of music compact disks 

and by creating obstacles to their attempts to enter the market for the 

legal digital downloading of music for a fee. 

 This conclusion was confirmed in a lawsuit directly against a 

home-computer user who downloaded more than 1,300 recorded 

songs, claiming that this was a fair use because it merely allowed her to 

“sample” songs with a view toward possible purchase. The Court of 

Appeals for the Seventh Circuit concluded that the fourth statutory 

factor cut heavily against the defendant, in view of the lost revenues for 

the copyright owner resulting from displaced broadcasting royalties 

and fees for lawful Internet sampling and downloading.333

 It has also been held not to be a fair use for a website operator 

(“My MP3.com”) to reproduce on its computer servers tens of thousands of compact disks of popular music. These disks could be played 

over the computer, at or away from home, by subscribers who accessed the website and “proved” there that he or she already owned the 

CD or would purchase it from a cooperating online retailer; the 

avowed objective was to allow “place-shifting” of one’s own recordings 

to a variety of locations in a convenient listening format. The court 

found a commercial use (through the selling of advertising for the 

MP3.com website), a nontransformative use, copying of creative recordings in their entirety, and injury to the market for such computerbased access to music that was “likely to be developed” by plaintiff 

recording companies.334

 

331. Napster, 239 F.3d at 1015. 

332. Id. at 1016 (quoting the district court in Napster, 114 F. Supp. 2d 896, 912 (N.D. 

Cal. 2000)). 

333. BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005). The court noted that the 

Supreme Court had assumed in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125 S. 

Ct. 2764 (2005), that the file-sharers there were directly infringing the copyright in the 

music and sound recordings. BMG Music, 430 F.3d at 889. 

334. UMG Recordings, Inc. v. MP3.Com, Inc., 92 F. Supp. 2d 349 (S.D.N.Y. 2000). 
Copyright Law 

156 

 The fair use defense was considered and also rejected, outside the 

context of music dissemination by the Internet, in a case in which the 

text of copyright-protected newspaper articles was duplicated in full as 

a springboard for public commentary on a “bulletin board” website. 

Despite the nonprofit and “public-benefit” nature of the copying, and 

the “predominantly factual” nature of the newspaper articles copied, 

the court found that the Internet copying was not transformative, that it 

was full-text, and that it diverted potentially paying users from the 

newspaper’s website and other licensed providers.335

Exemptions and Compulsory Licenses 

Library copying 

Section 108 gives to certain libraries the right, despite section 106(1), to 

make single copies and phonorecords of copyrighted works, subject to 

certain conditions. Most significantly, the library must be open to the 

public or to specialized researchers, and the copying must not be for 

commercial advantage. The reproduction must serve one of these purposes: preservation and security of an unpublished work; replacement 

of a copy or record that is damaged, deteriorating, lost or stolen (when 

an unused replacement is unavailable on the market); furnishing a 

single periodical article or a “small part” of a larger work to a person 

using it for private study, scholarship or research; furnishing to a person for such private use a copy or record of an “entire work, or . . . a 

substantial part of it” if the work is not available at a fair price. 

 The library’s privileges under section 108 are lost if it “is aware or 

has substantial reason to believe that it is engaging in the related or 

concerted reproduction or distribution of multiple copies or phonorecords of the same material” or if it “engages in the systematic reproduction or distribution of single or multiple copies or phonorecords” 

of articles or “small parts” of works for private use. Thus, if a faculty 

member, instead of making 150 photocopies of a copyrighted article 

for her entire class, instructs the students to approach the library separately with requests for individual copies, the library will no doubt be 

 

335. Los Angeles Times v. Free Republic, 54 U.S.P.Q.2d 1453 (C.D. Cal. 2000). 
Chapter 7: Fair Use and Other Exemptions 

157 

found to have “substantial reason to believe” that it is engaging in the 

“related or concerted reproduction” of multiple copies of the same 

copyrighted material. There are other limitations on the library privilege as well, as set out in detail in section 108. 

 A library can insulate itself altogether against liability for copying 

done independently on the premises by library users. It need only 

provide a photocopy machine for unsupervised use by library patrons 

and place a notice on the machine that the making of copies is subject 

to the copyright law. 

 Section 108 has provided guidance to the library community. In 

effect, it provides a list of “fair uses” that libraries may make of copyrighted materials to preserve their collections and serve their patrons. 

Section 108 was updated in 1998 to make a number of the copying 

privileges set forth above available “in digital format” as well as in traditional facsimile form. There appear to be no reported decisions construing section 108. 

First-sale doctrine and direct displays 

Despite the exclusive right of the copyright owner to sell or otherwise 

dispose of copies and phonorecords, the first-sale doctrine (discussed 

in Chapter 6), set forth in section 109(a), gives an immunity to subsequent owners who transfer title (or lend) to others. And despite the 

exclusive right of public display, the owner of a copy is free by virtue 

of section 109(c) to display it “to viewers present at the place where the 

copy is located.” Section 109(b) in turn limits the first-sale doctrine by 

barring the commercial renting of musical recordings and computer 

software. Congress’s concern was with speedy, inexpensive, and fully 

accurate duplication by the overnight borrower. 

Educational, nonprofit and other performances and displays 

Section 110 exempts a variety of public performances and displays, 

typically in the context of educational and other nonprofit uses. 

 Section 110(1) exempts face-to-face classroom performances of 

copyrighted works for teaching purposes in a nonprofit educational 

institution. 
Copyright Law 

158 

 Section 110(2) as originally enacted in 1976 exempted performances of nondramatic musical and literary works through transmissions 

on what was then known as instructional television, i.e., basically a 

nonprofit school transmitting to classrooms or to students whose disabilities prevented them from getting to a classroom. With the advent 

of the Internet, however, and a fuller appreciation of its extraordinary 

(and interactive) capabilities for reaching students, even in their 

homes, with a mix of text, sound, graphics and film, the original text of 

section 110(2) became unduly confining. In 2002 Congress amended 

the Copyright Act by enacting the so-called TEACH (Technology, Education and Copyright Harmonization) Act, which enlarges the statutory 

exemption for uses of copyrighted works in what is now known as 

“digital distance education”—while attempting to protect the copyright 

owner against the hazards of unauthorized digital retransmissions. 

Section 110(2) still shelters transmissions by governmental bodies and 

accredited nonprofit educational institutions, but it now exempts not 

only the performance of a nondramatic literary or musical work but 

also “reasonable and limited portions of any other work” (i.e., dramatic works, motion pictures, television programs) or “display of a 

work in an amount comparable to that which is typically displayed in 

the course of a live classroom session.” Exempted transmissions by an 

educational institution must be at the direction of an instructor, an 

integral part of instructional activities and “directly related and of material assistance” thereto, and they must be limited to students officially 

enrolled in the pertinent course. Moreover, the transmitting institution 

must, inter alia, apply “technological measures” that prevent students 

from retaining the copyrighted works “for longer than the class session” and that also prevent “unauthorized further dissemination” by 

the students to others (known as downstream transmissions). 

 Section 110(3) exempts certain uses of copyrighted works in the 

course of religious services. 

 Section 110(4), a particularly significant provision, largely continues the approach of the 1909 Act toward nonprofit performances of 

music, and adds other nondramatic works (speeches, lectures, poetry). 

The subsection is elaborate, but its basic thrust is to exempt live performances of such works when there is no commercial purpose, when 
Chapter 7: Fair Use and Other Exemptions 

159 

the performers are not being paid, and when there is no admission 

charge—or when any admission proceeds “are used exclusively for 

educational, religious, or charitable purposes and not for private 

financial gain, except where the copyright owner has served notice of 

objection to the performance” under certain circumstances stipulated 

in the subsection. It is this exemption that shelters performances of 

music and readings of literature in school assembly programs, in amateur performances in public parks, and at school literary and athletic 

events. The exemption does not apply to performances on college 

radio stations, for these are “transmissions” that are expressly excluded 

from the section 110(4) exemption. Nor does this particular exemption 

apply to nonprofit performances of copyrighted dramatic literary or 

musical works (i.e., plays, operas, musicals). 

 Section 110(5) is designed to shelter the playing of radios and televisions in order to create a pleasant atmosphere in restaurants, retail 

establishments, doctors’ offices and the like. Subsection 110(5)(A) has 

been a part of the statute since its enactment in 1976. It was designed 

by Congress to endorse the Supreme Court’s decision in Twentieth 

Century Music Corp. v. Aiken,

336 holding that the undefined word “performance” in the 1909 Act did not reach the use of simple loudspeakers 

to amplify radio sounds in a small fast-food restaurant. Subsection 

110(5)(A) shelters the “communication of a transmission” from a radio 

or television set “of a kind commonly used in private homes.” Absent 

this exemption, the broad definition given in section 101 to the right of 

“public performance” would make it an infringement for a doctor, 

barber, or bartender to have copyrighted music or dramatic programming emanating from a radio or television set placed in a waiting 

room, shop, or tavern. With the exemption, simply turning on the set 

does not infringe. In a situation in which most of some 2,500 retail 

clothing and shoe stores (all owned by the same parent company) operated a radio receiver with two attached shelf speakers to play music 

broadcasts, the exemption for a “single” receiving apparatus within 

each store was deemed to apply.337 The exemption is lost, however, if 

sound-amplification equipment not commonly found in a home is 

 

336. 422 U.S. 151 (1975). 

337. Edison Bros. Stores, Inc. v. Broadcast Music, Inc., 954 F.2d 1419 (8th Cir. 1992). 
Copyright Law 

160 

utilized, or if a direct charge is made to see or hear the transmission, 

or if the transmission “is further transmitted to the public.”338 The exemption applies only to works already being transmitted through a 

broadcast; it does not embrace, for example, the doctor’s playing of 

music in her waiting room from a compact-disk player. 

 Section 110(5)(B) was added to the statute in 1998 as the Fairness in 

Music Licensing Act, with a stormy history before and since. As something of a quid pro quo for the 20-year extension of the copyright term, 

which was designed largely to assist the music industry, restaurant and 

retail-store owners prevailed upon Congress to enlarge the so-called 

“home-style equipment” exemption just described—and to exempt the 

“communication by an establishment of a transmission” from radio or 

television of nondramatic music in a larger area. The music may lawfully be played throughout an eating and drinking establishment of less 

than 3,750 square feet, and other retail establishments of less than 2,000 

square feet—and also throughout even larger establishments based on 

certain limits as to the number of loudspeakers (even commercial 

rather than home-style equipment) and television sets. This obviously 

represents a significant incursion upon the exclusive publicperformance rights of music copyright owners, and was in fact challenged by foreign songwriters and music publishers as a violation of 

U.S. treaty obligations. A dispute resolution panel of the World Trade 

Organization held section 110(5)(B) to be inconsistent with the Berne 

Convention, but the United States has yet to make revisions needed to 

avoid trade sanctions. 

 Subsections 110(6) through 110(10) exempt certain public performances at state fairs, at stores promoting the sale of records of the copyrighted work or of the radio or television sets communicating the 

works, in transmissions for the blind or other handicapped persons, 

and at social functions organized by nonprofit veterans or fraternal 

organizations. Section 110(11), added to the Copyright Act in 2005, 

exempts the “making imperceptible,” within a private household, of 

“limited portions” (i.e., sex, profanity, or violence) of a motion picture 

being viewed there, provided no fixed copy of the altered film is made. 

 

338. Sailor Music v. Gap Stores, 668 F.2d 84 (2d Cir. 1982); Broadcast Music, Inc. v. 

United States Shoe Corp., 678 F.2d 816 (9th Cir. 1982). 
Chapter 7: Fair Use and Other Exemptions 

161 

Cable television and other retransmissions 

Section 111 creates a compulsory license for cable television retransmissions of copyrighted programs that are shown on broadcast television. (Otherwise, such retransmission would be an infringing “public 

performance” of the program.) The section is extremely elaborate and 

complex, and does not lend itself to easy summarization. 

 Section 111 grants a complete exemption from liability for cable 

systems that bring broadcast programming to subscribers who are near 

the broadcast source (i.e., within the “must carry” area as set out by 

the Federal Communications Commission) or that are at a sufficiently 

great distance that the broadcast programming can be received only by 

cable. If, however, the cable system carries broadcast signals into distant but already served television markets, the compulsory license applies. The cable operator may do so, but it must pay a royalty for the 

privilege of this compulsory license. The royalty is based principally 

on the system’s receipts and the amount of distantly-originated nonnetwork programming that the cable system retransmits to its subscribers. (The statute in effect assumes that the copyright owner has already 

been fully compensated by the television network for the broadcasts 

that are viewed wherever the network is accessible, whether through the 

originating broadcast or through cable retransmissions.) The statute as 

enacted in 1976 set forth certain royalty rates, which have since been 

increased by the Copyright Royalty Tribunal (CRT) and, since the 

CRT’s abolition, these rates are now subject to modification by the 

Copyright Royalty Judges. The cable system must forward regular 

statements of account and royalty fees to the Copyright Office, to be 

later distributed so as to provide fair recompense to owners of copyrighted material retransmitted over cable systems. A cable system that 

fails to comply with the requirements of the compulsory license provisions of section 111 will be fully liable for copyright infringement. 

 Section 111 also exempts from liability the relaying, by a hotel or 

apartment house, of sounds emanating from a radio or television 

broadcast into the private lodgings of guests or residents, without any 

direct charge therefor. 

 Sections 119 and 122 give satellite transmitters of television broadcasts to private “dish” owners a compulsory license similar to that pro-
Copyright Law 

162 

vided for cable systems under section 111. The compulsory-royalty 

payments collected from ordinary cable systems and satellite systems 

have generated for owners of copyrighted television programs between 

$180 million and $210 million for each of the years since 1988. 

Musical compulsory licenses: recordings and jukeboxes 

Section 115, as already discussed,339 sets forth the compulsory license 

for the manufacture and distribution of phonorecords of nondramatic 

musical works (as distinguished from the sound recordings, the recorded performances of those musical works). Once the music copyright owner allows the distribution in the United States of one recorded 

version, then any other performers and recording companies may 

make and distribute their own (“cover”) recordings, upon the payment 

of royalties and compliance with other statutory obligations. Beginning 

in 1978 with 2.75 cents per recording of a copyright-protected work, the 

compulsory royalty that must be paid by the record manufacturer 

gradually increased by administrative action to 8.5 cents per record (or 

1.65 cents per minute of playing time, whichever was larger) during the 

period 2004–2005, and became 9.1 cents (or 1.75 cents per minute) on 

January 1, 2006.340 These rates pertain to each recording of each copyrighted musical composition, rather than, say, per-recording of the 

total 10 or 15 tracks on the typical compact disk. The compulsorylicense format and rates apply not only to disks and tapes sold to record purchasers in retail establishments but also to the so-called “digital phonorecord deliveries”341 that can be transmitted through the Internet. Whichever the distribution medium, the recording company 

invoking the compulsory license is required by the statute to make 

regular periodic accountings and royalty payments; in the typical situation, these licenses and payments are monitored by the Harry Fox 

Agency in New York City. 

 As originally enacted, section 116 of the Copyright Act of 1976 provided another compulsory license relating to nondramatic musical 

 

339. See supra Chapter 6. 

340. See 37 C.F.R. § 255.3. 

341. The phrase is defined in section 115(d). 
Chapter 7: Fair Use and Other Exemptions 

163 

works (but not for sound recordings)—this one for public performances through jukeboxes or, in the language of the statute, “coinoperated phonorecord players.” From 1909 through 1977, jukebox 

operators had been the beneficiaries of what was known as the “jukebox exemption.” Jukebox performances, heard at penny arcades in 

1909, had become a billion-dollar industry in the 1970s, and Congress 

took a much-contested step in the 1976 Act by stripping the industry of 

its total exemption, and affording jukebox operators a compulsory 

license upon payment to the Copyright Office of an annual fee of $8 

per jukebox to cover all of the music recordings placed in the box 

during the year. The now-defunct Copyright Royalty Tribunal (CRT) 

gradually increased the per-box annual royalty to $63 effective in 1986. 

The CRT distributed the royalties to the performing rights societies—

ASCAP, BMI and SESAC—which in turn redistributed them to their 

respective songwriter and music-publisher members. 

 Because of doubts that the jukebox compulsory license conformed 

with U.S. obligations under the Berne Convention concerning publicperformance rights of music copyright owners, section 116 was 

modified by Congress effective March 1, 1989. Congress now expresses 

a preference for freely negotiated licenses for jukebox plays; owners of 

nondramatic music copyrights and owners of coin-operated phonorecord players “may negotiate and agree upon the terms and rates of 

royalty payments for the performance of such works and the proportionate division of fees paid among copyright owners” (in effect insulating such coordinated treatment from antitrust liability). Only if such 

negotiations are unsuccessful is there to be resort to the compulsorylicense royalty structure, with rates and distributions determined by the 

Copyright Royalty Judges appointed by the Librarian of Congress. 

Since 1990, voluntary agreements have in fact been negotiated between 

ASCAP, BMI, and SESAC on one side and the Amusement and Music 

Operators Association on the other, so that the jukebox compulsory 

license has essentially been a dormant “back-up” arrangement since 

that time. 
Copyright Law 

164 

Sound-recording performance and digital-transmission rights 

Section 114342 reiterates the exclusive right of the copyright owner to 

reproduce (by direct dubbing) the sounds of a sound recording, but 

expressly provides that an independently fixed imitation of those 

sounds will not constitute an infringement. Nor will it infringe to give a 

public performance of the sound recording by playing it in a face-toface setting (such as by a DJ in a disco) or through an analog transmission (such as in a radio broadcast). 

 Since 1995, however, it has been an exclusive right of the soundrecording copyright owner, under section 106(6), “to perform the 

copyrighted work publicly by means of a digital audio transmission” 

such as to a subscriber to a digital-audio radio service or, most significantly, to an Internet user. (Such public performances of the musical 

works that are covered by separate copyrights are regulated by other 

statutory provisions.) Despite the broad language of this grant to the 

sound-recording copyright owner, elaborate provisions in subsections 

114(d) through 114(j) provide for certain limitations upon this “digital 

audio transmission” right. For example, there is a complete exemption 

for nonsubscription digital transmissions (free digital radio broadcasts, 

not yet commonplace); and a compulsory license—with royalty rates 

to be set, absent successful private negotiation, by the Copyright Royalty Judges—is afforded for most subscription transmissions and for 

most Internet transmissions (most commonly through the “streaming” 

or “webcasting” of copyrighted sound recordings). In the compulsorylicense situations, the license will be lost if the transmissions are of a 

nature that pose a significant risk of digital copying, by the subscriber 

or Internet user, that would substitute for direct purchases of the recordings (such as when the transmitting entity makes available an advance listing of its record plays or when it plays within a three-hour 

period several selections from the same sound recording or featured 

artist). 

 

342. See supra Chapter 6. 
Chapter 7: Fair Use and Other Exemptions 

165 

Other exempted uses 

Section 112 gives persons entitled to make certain public performances 

or displays, pursuant to contract or statutory provisions, the additional 

right to make an “ephemeral recording” of the copyrighted work simply for the purpose of facilitating the performance or display, provided 

the recordings are promptly thereafter destroyed. 

 Section 113, as already discussed,343 allows certain uses of pictorial, 

graphic, and sculptural works, particularly as they relate to useful articles. 

 Section 117(a) exempts certain reproductions of computer programs that would otherwise violate subsections 106(1) or 106(2). The 

“owner” of a copy of a computer program (e.g., one who purchases 

the program for use in one’s home or business) may make a copy or 

adaptation of the program for “archival purposes” (as a safeguard 

against damage or destruction) or when such reproduction or adaptation is “an essential step in the utilization of the computer program in 

conjunction with a machine.” The latter exemption—which most typically allows the program-copy owner and computer operator to load 

the program (e.g., as encoded on a disk) into the computer in order to 

use it for its intended purpose—is needed because loading from a medium of storage into computer memory is technically the making of a 

“copy” of the copyrighted program.344 For much the same reason, 

Congress found it to be an unobjectionable use of a computer program—and so created an express exemption in section 117(c)—“for 

the owner or lessee of a machine to make or authorize the making of a 

copy of a computer program if such copy is made solely by virtue of 

the activation of a machine that lawfully contains an authorized copy 

of the computer program, for purposes only of maintenance or repair 

of that machine,” subject to certain limited restrictions. 

 Section 118 as written in 1976 gave to public radio and television 

broadcasters a compulsory license to perform nondramatic music and 

to display works of art upon the payment of certain royalties. This format was later subordinated by section 118(b) to license agreements 

 

343. See supra Chapter 2. 

344. Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988). 
Copyright Law 

166 

voluntarily negotiated between such “public broadcast entities” and 

such music and graphic copyright owners. These agreements—

expressly sheltered by section 118 from the antitrust laws—may establish “the terms and rates of royalty payments and the proportionate 

division of fees paid among” those owners. Failing such voluntary 

agreements, the Copyright Royalty Judges, appointed by the Librarian 

of Congress, are to set terms and rates. 

 Finally, section 120 provides for certain exemptions to the exclusive rights of copyright owners of “architectural works,” including the 

right to photograph such works from public places, and the right of the 

owner of a copyright-protected building to make alterations to it, and 

even to destroy it. 
167 

Chapter 8 

Enforcement of Copyright 

Jurisdictional and Procedural Issues 

Jurisdiction 

Jurisdiction to hear actions “arising under any Act of Congress relating 

to . . . copyrights” is given exclusively to federal courts pursuant to 

28 U.S.C. § 1338(a). The typical infringement action therefore cannot 

be brought in a state court. In what appears to be an unprecedented 

holding, the Indiana Supreme Court held that in a contract action 

brought by a publisher against an author, in which the author files a 

counterclaim for copyright infringement, a state court may hear and 

decide the copyright counterclaim.345 Although so-called common-law 

copyright claims (relating to unpublished works) could have been 

brought in state courts under the 1909 Copyright Act, that is no longer 

true because section 301 of the 1976 Act has abolished state copyright 

law. 

 It is sometimes difficult to determine whether a claim “arises under” the federal Copyright Act, particularly when the principal issue to 

be determined relates to contract interpretation or disputed ownership. 

Federal jurisdiction will be exclusive if the action is for copyright infringement or if its determination turns on an interpretation or application of the federal Copyright Act. In a frequently cited passage from the 

opinion of Judge Friendly in T.B. Harms v. Eliscu, the Court of Appeals for the Second Circuit stated: 

 Mindful of the hazards of formulation in this treacherous area, we 

think that an action “arises under” the Copyright Act if and only if the 

complaint is for a remedy expressly granted by the Act, e.g., a suit for infringement or for the statutory royalties for record production, or asserts 

a claim requiring construction of the Act . . . or, at the very least and perhaps more doubtfully, presents a case where a distinctive policy of the Act 

requires that federal principles control the disposition of the claim. The 

 

345. Green v. Hendrickson Publishers, Inc., 770 N.E.2d 784 (Ind. 2002). 
Copyright Law 

168 

general interest that copyrights, like all other forms of property, should 

be enjoyed by their true owner is not enough to meet this last test.346

Even if a dispute over title must be resolved antecedent to determining 

infringement and remedies, and the title dispute turns on contract construction, a federal court will have jurisdiction.347 Moreover, as suggested in the Harms quotation, if the only dispute before the court 

relates to disputed title, even that will provide a basis for exclusive 

federal jurisdiction if the dispute turns on application of statutorily 

defined terms such as “work made for hire” or “joint work.”348 But if, 

for example, co-ownership is conceded, and the only issue is the division of royalties pursuant to principles of contract or equity, that is 

simply a matter of state law and does not provide a basis for federal 

jurisdiction.349 The same is true if the plaintiff’s complaint raises only 

the question whether a license has been effectively terminated because 

of misconduct on the part of the other party to the agreement.350

 As with any federal court action, a substantial copyright claim will 

carry with it pendent jurisdiction to hear state-law claims that are 

significantly related. The usual rules that obtain in federal actions concerning the determination of personal jurisdiction over the defendant 

and proper venue also apply in copyright cases. 

 Copyright actions have historically been treated throughout the 

world as “local” actions, in the sense that jurisdiction to adjudicate a 

claim of infringement will lie only in the courts of the nation where the 

claimed infringement occurred, and those courts will apply only their 

own law (at least on the issue of whether the defendant’s conduct constituted an infringement). Article 5(2) of the Berne Convention, the 

principal international copyright convention since 1886 that was joined 

by the United States in March 1989, provides: “[A]part from the provisions of this Convention, the extent of protection, as well as the means 

 

346. 339 F.2d 823, 828 (2d Cir. 1964) (citations omitted). This formulation has been 

more recently endorsed, e.g., in Bassett v. Mashantucket Pequot Tribe, 204 F.3d 343 (2d Cir. 

2000). 

347. Vestron, Inc. v. Home Box Office, Inc., 839 F.2d 1380 (9th Cir. 1988). 

348. Lieberman v. Estate of Chayefsky, 535 F. Supp. 90 (S.D.N.Y. 1982). 

349. Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004). 

350. Scholastic Entm’t, Inc. v. Fox Entm’t Group, Inc., 336 F.3d 982 (9th Cir. 2003). 
Chapter 8: Enforcement of Copyright 

169 

of redress afforded to the author to protect his rights, shall be governed 

exclusively by the laws of the country where protection is claimed.” 

 In recent years, however, there has been an increasing willingness 

on the part of the U.S. courts to consider claims of infringement committed on foreign soil and to apply foreign copyright law. In other 

words, infringement actions are increasingly viewed as “transitory” 

(rather than “local”), as much as an action in tort or for breach of 

contract. If there is personal jurisdiction over the defendant and a basis 

for subject-matter jurisdiction (diversity of citizenship, even if not a 

federal question), it has been held that “[A] copyright owner may sue 

an infringer in United States courts even though the only alleged infringement occurred in another country. Under the territoriality principle, the copyright law of the other country, and not United States 

copyright law, will govern the action in the United States.”351

 In Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co.,352 in 

which the assignees of Igor Stravinsky challenged the rights of Disney 

to market videocassettes of the well-known film Fantasia, containing 

the composer’s The Rite of Spring, copyright infringements were asserted under the laws of 18 foreign nations. In 1998 the Court of Appeals for the Second Circuit held that the federal district court in New 

York should not dismiss the case because of forum non conveniens, but 

should rather be prepared to hear the case and apply foreign law. That 

same court, the same year, held that it is particularly appropriate to 

apply foreign law (there, Russia’s) with respect to the matter of copyright ownership (as distinguished from the issue of infringement) when 

at issue were the respective rights of Russian newspaper reporters and 

publishers.353

 

351. Armstrong v. Virgin Records, 91 F. Supp. 2d 628 (S.D.N.Y. 2000) (alleged infringements in England). See also Carell v. Shubert Org., 104 F. Supp. 2d 236 (S.D.N.Y. 

2000) (alleged infringements in the U.S., Australia, Canada, Japan and the U.K.). 

352. 145 F.3d 481 (2d Cir. 1998). 

353. Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998). 
Copyright Law 

170 

Who may sue 

The 1976 Act defines “infringer of the copyright” and accords rights to 

institute infringement actions. Section 501(a) provides that “Anyone 

who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 119, or who imports copies or phonorecords into the United States in violation of section 602, is an infringer 

of the copyright.” Section 501(a), particularly when read in conjunction with section 201(d)(2), makes clear what had been a source of 

confusion under the prior law. Under section 201(d)(2), any of the 

exclusive rights in section 106 may be transferred and owned separately, and the “owner of any particular exclusive right is entitled, to 

the extent of that right, to all of the protection and remedies accorded 

to the copyright owner by this title.” Copyright ownership is thus said 

to be “divisible” under the 1976 Copyright Act. 

 This has implications regarding who can bring an action for copyright infringement. Section 501(a) states that “The legal or beneficial 

owner of an exclusive right under a copyright is entitled . . . to institute 

an action for any infringement of that particular right committed while 

he or she is the owner of it.” Thus, if novelist A transfers her hardcover 

publication rights to B, her paperback rights to C, her translation rights 

to D, and her motion picture rights to E, each of those persons—

provided the transfers were exclusive—may bring an infringement action against any other person who, without authorization, is exercising 

the particular exclusive right held. Because, in any one of these infringement actions, A’s interests will likely be affected—and perhaps so 

too will the interests of some or all of the other hypothetical characters—section 501(b) provides that the court may (and sometimes must) 

direct the plaintiff to give these others notice, and “may require the 

joinder, and shall permit the intervention, of any person having or 

claiming an interest in the copyright.” 

 A person holding a nonexclusive license to exercise one or more of 

the rights set forth in section 106 may not sue for infringement. Thus, 

an action for infringement resulting from the unauthorized public performance of a popular song must be brought by the copyright owner, 

typically a music publishing company, and may not be brought by the 

performing rights society of which the songwriter or publisher is a 
Chapter 8: Enforcement of Copyright 

171 

member, such as ASCAP or BMI (even though the society will be conducting the litigation in all of its details).354

 Section 501(b) gives the right to sue to the “legal or beneficial 

owner.” If, for example, a novelist or songwriter conveys copyright 

under an agreement providing for the payment of royalties based on 

sales, the transferee publisher is the legal copyright owner, but the 

novelist or songwriter is regarded as the beneficial owner and may 

bring an action even if the publisher does not.355

Registration as a prerequisite to suit 

Prior to March 1, 1989, it was a requirement of an infringement action 

that the copyright in the allegedly infringed work be registered in the 

Copyright Office (typically by the plaintiff copyright owner). As a result 

of U.S. adherence to the Berne Convention, implementing legislation 

eliminated this prerequisite to suit—but only for works initially published in other nations that are members of the Berne Union. Works 

initially published in the United States must still be registered with the 

Copyright Office prior to suit.356 This two-tiered system of registration 

has been criticized on the ground that it operates to the disadvantage 

of U.S. authors and publishers. 

 Even apart from the requirement of registration as a condition of 

suit, the Copyright Act affords sufficient incentives to registration such 

that it is common for copyright owners (at least of published works) to 

register their copyright long before there is any hint of litigation. If, for 

example, registration is made before a work is published or within five 

years after it is published, the certificate of registration “shall constitute 

prima facie evidence of the validity of the copyright and of the facts 

 

354. Ocasek v. Hegglund, 116 F.R.D. 154 (D. Wyo. 1987); Broadcast Music, Inc. v. CBS 

Inc., 421 F. Supp. 592 (S.D.N.Y. 1983). 

355. H.R. Rep. No. 94-1476, at 159 (1976). The beneficial owner may himself, however, 

be an infringer of the copyright held by the legal owner if he fails to secure the consent of 

the latter to copying or to preparing a derivative work. Fantasy, Inc. v. Fogerty, 654 F. 

Supp. 1129 (N.D. Cal. 1987). 

356. For a discussion of how the courts have administered this requirement, see supra

Chapter 5, pages 94–96. 
Copyright Law 

172 

stated in the certificate.”357 This can be a significant aid to a plaintiff in 

proving copyright ownership, the originality of the work, the validity of 

the copyright, and priority of publication. Prompt registration is also a 

means of ensuring that in any possible future litigation the plaintiff will 

be eligible to claim attorney’s fees and statutory damages.358

 In some instances, the Copyright Office may choose not to register 

a person’s claim of copyright, perhaps because the work is regarded as 

lacking in original authorship. In those cases in which the plaintiff 

must allege registration (which continue to be the overwhelming number of copyright infringement actions), the statute deals with the Register of Copyright’s nonregistration by permitting the lawsuit—after the 

plaintiff has made proper efforts to register the copyright—but requiring the plaintiff to serve the Register with a copy of the complaint. In 

such cases, the Register is afforded the opportunity to become a party 

to the action with respect to the issue of registrability.359

Limitations on liability: statute of limitations and sovereign 

immunity 

There are two important limitations on exposure to copyright liability. 

The first is section 507 of the Copyright Act, which sets forth a period 

of limitations of three years for civil proceedings and five years for 

criminal proceedings. The running of the statute is “tolled” during any 

period of fraudulent concealment of the infringement or, more generally, when a reasonable person in the plaintiff’s shoes would not have 

discovered the infringement.360 The courts are divided, however, on 

the question whether repeated acts of infringement—the latest of which 

may be minor and may occur long after the principal infringements 

have ceased—should be treated as a single “continuing” wrong, such 

that the plaintiff may sue for all infringing acts so long as the most recent one falls within the three-year statutory period.361

 

357. 17 U.S.C. § 410(c). 

358. See supra pages 94–95; 17 U.S.C. § 412. 

359. 17 U.S.C. § 411(a). 

360. Taylor v. Meirick, 712 F.2d 1112 (7th Cir. 1983). 

361. Compare Meirick, 712 F.2d 1112 (“continuing wrong”), with Roley v. New World 

Pictures, Ltd., 19 F.3d 479 (9th Cir. 1994) (rejecting a “rolling statute of limitations”). 
Chapter 8: Enforcement of Copyright 

173 

 A second, and controversial, limitation on copyright liability is the 

doctrine of sovereign immunity. The Eleventh Amendment to the Constitution prevents federal courts from hearing claims against states. 

Although the Supreme Court has held that Congress has the power to 

abrogate that immunity, the scope of that congressional power has 

been the subject of evolving and not altogether clear standards since 

the 1980s (accompanied by sharp divisions within the Court). The 

Court held in 1989 that Congress could abrogate the immunity of the 

states in substantive areas falling within Article I of the Constitution, 

such as interstate commerce and patents and copyrights.362 However, 

the intention to make states liable for money damages had to be manifested in very explicit statutory language,363 and so the statute was 

amended in 1990 by the Copyright Remedy Clarification Act. To section 501(a), which defines “an infringer of the copyright” as “anyone” 

who violates any of the exclusive rights of the copyright owner, Congress added two new sentences: 

As used in this subsection, the term “anyone” includes any State, any instrumentality of a State, and any officer or employee of a State acting in his 

or her official capacity. [They] shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity. 

To make the congressional purpose doubly clear, a new section 511 

was added, explicitly providing that the state, the state instrumentality, 

or their employees “shall not be immune, under the Eleventh Amendment of the Constitution of the United States or any other doctrine of 

sovereign immunity” from suit in a federal court for copyright infringement, and that the full range of remedies ordinarily available 

against private defendants is also available in such suits. 

 Within a mere six years, the constitutionality of these provisions 

fell subject to serious question. In Seminole Tribe of Florida v. Florida,

364 the Supreme Court in 1996 overruled earlier precedent and held 

(5 to 4) that the Commerce Clause is not a source of congressional 

 

362. Pennsylvania v. Union Gas Co., 491 U.S. 1 (1989). 

363. Atascadero State Hosp. v. Scanlon, 473 U.S. 234 (1985). 

364. 517 U.S. 44 (1996). 
Copyright Law 

174 

authority to overturn states’ sovereign immunity. Then, in 1999, the 

Court considered whether it was constitutional for Congress to subject 

the states to patent-infringement or trademark-infringement liability by 

means of provisions that were essentially the same as those added to 

the Copyright Act in 1990. In the two Florida Prepaid Postsecondary

cases, the Court considered the Commerce and Patent Clauses of the 

Constitution, as well as the Fourteenth Amendment, which empowers 

Congress to enact legislation implementing the constitutional ban on 

state deprivation of “property” without due process of law. The Court 

held (again, 5 to 4) that on the facts presented none of those constitutional sources empowered Congress to abrogate the immunity of the 

states against federal-court actions for damages for patent or trademark 

infringement.365 

 The following year, in Chavez v. Arte Publico Press,

366 the Florida 

Prepaid Patent Act decision was held dispositive by the Court of Appeals for the Fifth Circuit in an action for copyright infringement by an 

author against the University of Houston, a state agency. The court 

held that the 1990 amendments to the Copyright Act purporting to 

render states fully liable for copyright infringement, including damages, exceeded Congress’s power under both Article I and the Fourteenth Amendment. (Under generally prevailing sovereign-immunity 

jurisprudence, there is no bar to the issuance of injunctions against 

state instrumentalities or to judgments for damages against state officials in their individual capacity.) 

 Given the broad use of copyrighted materials by state instrumentalities—libraries, schools, universities, as well as the wide range of 

typical executive and administrative agencies—their immunity against 

damages actions would create a major gap in the enforcement of the 

copyright laws, especially with the compounding inequity of the states’ 

ability to enforce those laws against private parties. It remains to be 

seen whether this gap will long continue, in the face of further decisionmaking by the courts and by Congress. 

 

365. Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 

(1999) (Lanham Trademark Act); Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. 

Sav. Bank, 527 U.S. 627 (1999) (Patent Act). 

366. 204 F.3d 601 (5th Cir. 2000). 
Chapter 8: Enforcement of Copyright 

175 

Remedies 

Injunctive relief, both temporary and final, is commonly issued in 

copyright actions and is expressly provided for in section 502 of the 

1976 Copyright Act. It is commonly held that once the plaintiff establishes a prima facie case of a valid copyright and its infringement, irreparable injury will be presumed and a temporary injunction will 

issue.367 The Supreme Court has, however, urged circumspection in the 

issuance of injunctions—at least in those cases in which the infringing 

material makes its own “transformative” literary, artistic or musical 

contribution. In such cases, the interests of the copyright-owner and of 

the public (in having access to the infringing work) may be best served 

by limiting the remedy to one for damages.368 The court may also order, pursuant to section 503, the impounding and the reasonable disposition (including the destruction) of all infringing copies and phonorecords and of the devices used to manufacture them. 

 Perhaps the most intricate, and most important, remedial section 

of the statute is section 504, which spells out in detail the circumstances 

under which damages and profits may be awarded. The Act provides 

for the award of either actual damages and any additional profits, or 

what are known as statutory damages. 

 In order to dispel the confusion that had existed under the 1909 

Act regarding the possible duplicative award of actual damages and 

profits, section 502 of the 1976 Act provides: 

 The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the 

infringer that are attributable to the infringement and are not taken into 

account in computing the actual damages. In establishing the infringer’s 

profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her 

deductible expenses and the elements of profit attributable to factors 

other than the copyrighted work. 

 

367. Apple Computer, Inc. v. Formula Int’l, Inc., 725 F.2d 521 (9th Cir. 1984). 

368. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994); N.Y. Times Co. v. Tasini, 

533 U.S. 483 (2001). 
Copyright Law 

176 

The principal purpose of the statutory provision is to avoid doublecounting in the computation of monetary remedies. Thus, if the copyright owner marketed its copyrighted wares only east of the Mississippi 

River at a profit of $1 per unit, and the infringer marketed its infringing 

wares from coast to coast at a profit of 50 cents per unit, a court should 

award damages measured by the loss of $1 for each of the plaintiff’s 

displaced east-region sales and the infringer’s profits measured by 50 

cents for each of the west-region sales. A frequently used measure of 

the plaintiff’s damages is the reasonable value that the defendant would 

have paid for a license to use the copyrighted material legally.369 It is, 

of course, sometimes difficult to determine which of the defendant’s 

sales should be treated as causing a direct economic loss to the plaintiff 

(i.e., damages) and which should be treated exclusively as generating 

noncumulative profits for the defendant.370

 Once the court separates out the defendant’s profits, it is at least as 

difficult to determine which of those profits “are attributable to the 

infringement.” All that the plaintiff need do is prove the defendant’s 

gross profits derived from the enterprise of which the infringement is a 

part. The burden then shifts to the defendant to reduce the award of 

profits, which can be done in two different ways. 

 The defendant may show that its profits were derived from elements of its activities other than the infringement. A motion picture 

producer who has made illicit use of a copyrighted novel can show, for 

instance, that the bulk of its box-office (and video sale and rental) receipts can be traced to its starring players, its original plot elements, its 

cinematography and special effects, its advertising campaign, and the 

like.371 The defendant may also show—whether or not its gross profits 

were attributable to noninfringing elements—that its venture in fact was 

so costly as to eliminate most or all of its profits. Thus, even if an infringing theatrical production is based word-for-word on a copyrighted 

 

369. On Davis v. The Gap, Inc., 246 F.3d 152 (2d Cir. 2001). 

370. See Taylor v. Meirick, 712 F.2d 1112 (7th Cir. 1983). 

371. See Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390 (1940). See generally

Caffey v. Cook, 409 F. Supp. 2d 484 (S.D.N.Y. 2006), for a thorough discussion of the 

noninfringing elements contributing to profits, as well as the costs of a theatrical production. 
Chapter 8: Enforcement of Copyright 

177 

dramatic text, the defendant can attempt to prove that the salaries of 

the performers, the cost of renting the theater, the cost of advertising 

and the like were so high as totally to absorb its box-office receipts. In 

such a case, it would be proper for the court to award no profits—

although it would of course be perfectly appropriate for the court to 

award damages as measured by the reasonable value of a license to 

perform the play publicly, or as measured by the lost opportunity to 

market the script to a film producer (because of the bad press received 

by the infringing theatrical performance). 

 Two decisions by the Court of Appeals for the Ninth Circuit, in 

which the court had to make difficult determinations in assessing the 

defendant’s profits, are illustrative. In one case, the infringing brewing 

company used the plaintiff’s music as a minor accompaniment pattern 

in a beer commercial.372 In another, the infringer was a hotel and gambling enterprise that used the plaintiff’s music in one part of a multiscene musical revue in the hotel theater.373 The court’s decisions 

should be examined for thoughtful suggestions as to how to assess the 

plaintiffs’ possible claims, respectively, to all of the brewer’s profits on 

the advertised beer and to all of the profits from the hotel’s gambling 

operations that were presumably fueled in part by those who attended 

the nearby musical theater. In a more recent case raising the issue, the 

Court of Appeals for the Second Circuit observed: 

 [I]f a publisher published an anthology of poetry which contained a 

poem covered by the plaintiff’s copyright, we do not think the plaintiff’s 

statutory burden would be discharged by submitting the publisher’s 

gross revenue resulting from its publication of hundreds of titles, including trade books, textbooks, cookbooks, etc. In our view, the owner’s burden would require evidence of the revenues realized from the sale of the 

anthology containing the infringing poem. The publisher would then bear 

the burden of proving its costs attributable to the anthology and the extent to which its profits from the sale of the anthology were attributable 

to factors other than the infringing poem, including particularly the other 

poems contained in the volume. . . . [T]he statutory term “infringer’s 

 

372. Cream Records, Inc. v. Jos. Schlitz Brewing Co., 754 F.2d 826 (9th Cir. 1985). 

373. Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505 (9th Cir. 1985). 
Copyright Law 

178 

gross revenue” should not be construed so broadly as to include revenue 

from lines of business that were unrelated to the act of infringement.374

 In making all of these calculations, courts are obviously often reduced to engaging in approximations. It is commonly held that “Any 

doubt as to the computation of costs or profits is to be resolved in 

favor of the plaintiff.”375

 As an alternative to an award of actual damages and profits, section 

504(c)(1) gives to the plaintiff the right to “elect, at any time before 

final judgment is rendered, to recover . . . an award of statutory damages for all infringements involved in the action, with respect to any 

one work . . . in a sum of not less than $750 or more than $30,000 as 

the court considers just.” Such an award is referred to as “statutory 

damages.” The Supreme Court has held—based on constitutional law 

and history—that when an infringement case is being tried to a jury, all 

issues pertinent to the award of statutory damages are to be decided by 

a jury.376 

 Statutory damages provide a vindication of the copyright owner’s 

interest when litigation would otherwise appear largely futile even 

though just. For example, in some cases of copyright infringement, 

such as the occasional unauthorized music performance in a restaurant 

or nightclub, proof of actual damages and profits may be difficult or 

nonexistent—despite the acknowledged violation of the plaintiff’s 

rights. Such cases are appropriate for the award of statutory damages. 

In addition the purpose of the statutory-damage remedy is largely deterrent and even punitive. Indeed, under section 504(c)(2), the court 

has the discretion to award as much as $150,000 upon determining that 

the infringement was committed “willfully” (which is generally understood to require proof that the defendant knew it was violating the law). 

For that reason it is generally regarded as inappropriate to award puni-

 

374. The Gap, 246 F.3d at 160. See also Mackie v. Rieser, 296 F.3d 909 (9th Cir. 2002) 

(copyrighted sculpture was depicted in symphony orchestra brochure, without permission; sculptor unsuccessfully based claim for profits upon the orchestra’s gross box-office 

income for the musical season). 

375. Frank Music Corp., 772 F.2d at 514.

376. Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998). 
Chapter 8: Enforcement of Copyright 

179 

tive damages in an infringement action in which statutory damages are 

sought.377 

 Although the plaintiff need not offer proof of actual damages or 

profits to secure statutory damages, the court of course may—and generally does—take account of such proof in making an award of statutory damages. It should be noted that the general statutory range of 

$750 to $30,000 applies not to each infringement but rather to each 

work infringed by the defendant, regardless of the number of infringements. Thus, if a nightclub without a performance license stages twicenightly performances of 10 songs over a period of four months, the 

court can make only 10 statutory-damage awards, one for each copyrighted song. Section 504(c) expressly provides that “For the purposes 

of this subsection, all the parts of a compilation or derivative work 

constitute one work.” Copying without consent all of an author’s poems in her anthology would most likely give rise to a single award of 

statutory damages, while copying and marketing videotapes containing 

several television shows from a single season would most likely give 

rise to multiple awards.378

 Just as the statute provides for an award of statutory damages five 

times as great as the usual amount in the case of willful infringement, 

section 504(c) also provides for reductions below the statutory “floor” 

in certain cases of demonstrated innocent infringement. If the infringer 

can prove that he or she “was not aware and had no reason to believe 

that his or her acts constituted an infringement,” the court may reduce 

the award to as little as $200. (Since the effective date of the Berne Convention Implementation Act, March 1, 1989, this has been the principal 

remaining statutory inducement to copyright owners to place a conspicuous copyright notice on their works.) And statutory damages may 

be remitted by the court completely if the defendant reasonably believed that his or her use was a fair use under section 107 and the defendant was an employee of a nonprofit school or library, acting in the 

 

377. The Gap, 246 F.3d 152. 

378. Compare Stokes Seeds, Ltd. v. Geo. W. Park Seed Co., 783 F. Supp. 104 (W.D.N.Y. 

1991) (flower photographs on seed packets copied from book of flower photographs), 

with MCA T.V., Ltd. v. Feltner, 89 F.3d 766 (11th Cir. 1996) (television series). 
Copyright Law 

180 

scope of employment (or was, under certain conditions, a public 

broadcaster). 

 As a final element of compensatory relief, a court has the discretion, under section 505, to award costs to either party and to award a 

reasonable attorney’s fee to the prevailing party. Recall that, under 

section 412, a plaintiff is not entitled to attorney’s fees (or statutory 

damages) if, in the case of a published work, registration of the copyright is not effected until after the infringement has “commenced”; the 

plaintiff does, however, have a three-month post-publication grace 

period during which registration will protect against the sacrifice of 

costs and attorney’s fees even for pre-registration infringements.379 

 In 1994, the Supreme Court, in Fogerty v. Fantasy, Inc.,380 addressed a question that had divided the circuits: whether attorney’s fees 

are more readily to be awarded to successful plaintiffs (in order to 

encourage the litigation of meritorious claims of copyright infringement, which promotes the public interest in creativity) or whether a 

more evenhanded standard should be applied. The Supreme Court 

endorsed the latter view, noting that in order to serve “the purpose of 

enriching the general public through access to creative works, . . . defendants who seek to advance a variety of meritorious copyright defenses should be encouraged to litigate them to the same extent that 

plaintiffs are encouraged to litigate meritorious claims of infringement.”381 The Court, however, rejected the argument that the prevailing party should routinely be awarded attorney’s fees, as is true under 

the “British Rule.” Rather, the Court concluded that the language of 

the Copyright Act makes it clear that such fees are to be awarded to 

prevailing parties only as a matter of the court’s discretion, based upon 

such factors as frivolousness, motive, objective unreasonableness, and 

the need in certain cases to advance considerations of compensation 

and deterrence (so long as applied evenhandedly to prevailing plaintiffs and defendants).382 

 

379. 17 U.S.C. § 412. 

380. 510 U.S. 517 (1994). 

381. Id. at 527. 

382. Id. at 534 & n.19. See Gonzales v. Transfer Techs., Inc., 301 F.3d 608, 610 (7th Cir. 

2002) (in the interest of deterrence, “the prevailing party in a copyright case in which the 
Chapter 8: Enforcement of Copyright 

181 

 In rare cases, copyright infringement may result in the imposition 

of criminal liability under section 506. Under section 506(a), the government must prove that the infringement was willful (understood to 

mean that there is awareness of illegal activity) and either “for purposes 

of commercial advantage or private financial gain” or “by the reproduction or distribution, including by electronic means” of copies or 

phonorecords—during any 180-day period—with a total retail value of 

more than $1,000. The punishment is set forth in 18 U.S.C. § 2319, and 

involves a sliding-scale of fines and imprisonment based on the total 

value of the goods involved and the frequency with which the offense 

has been committed. The court also has the discretion to order the 

forfeiture and destruction of all infringing copies or phonorecords and 

of devices used in the infringement. Subsections 506(c), (d) and (e), 

respectively, set forth the crimes of fraudulent placement of a copyright 

notice, fraudulent removal of a copyright notice, and false statements 

of material fact in a copyright registration application. As already 

noted, the statute of limitations for criminal proceedings under the 

Copyright Act is five years (compared with three years in civil infringement cases). 

Technological Protection Measures 

Given the speed with which the Internet can be used both to reproduce 

near-perfect copies and phonorecords and to transmit them around 

the world, Congress concluded it was important to support the efforts 

of copyright owners to prevent infringement at the outset, rather than 

merely to seek judicial relief afterward. The Digital Millennium Copyright Act (DMCA) was added to the Copyright Act in 1998. Its purpose 

(apart from the secondary-liability provisions just discussed) is to ensure that “technological protection measures”—such as scrambling or 

encrypting digital versions of recordings, films and books—are not 

circumvented without proper authorization. Such technological protection measures typically ensure that the copyright-protected work will 

not be copied, stored or transmitted to others. Section 1201(a) provides 

 

monetary stakes are small should have a presumptive entitlement to an award of attorneys’ fees”). 
Copyright Law 

182 

that “no person shall circumvent a technological protection measure 

that effectively controls access to a work” protected by copyright, and 

that “no person shall manufacture, import, offer to the public, provide 

or otherwise traffic in any technology, product, service, device, component, or part thereof” that (among other things) is “primarily designed or produced” for the purpose of circumvention or is knowingly 

marketed for use in circumvention. While section 1201(a) thus forbids 

circumvention of what is known as “access-protection” technology, 

section 1201(b) imposes comparable proscriptions upon “copyprotection” technology (which effectively protects against the violation 

of rights held by copyright owners). Violations of section 1201 are not 

technically infringements of copyright, but sections 1203 and 1204 impose civil and criminal liability, respectively, much like that for copyright infringement. 

 Although the provisions of section 1201 are rather elaborate (and 

include a half-dozen exemptions, to which several more have been 

added by the Copyright Office), their core application can be illustrated by the 2001 decision of the Court of Appeals for the Second Circuit in Universal City Studios, Inc. v. Corley.

383 There, the plaintiffs were 

eight major motion picture studios that had incorporated in their DVD 

versions of their copyrighted films a Content Scramble System (CSS), 

which prevented making copies of the DVDs, or playing them on devices lacking licensed decryption technology, or transmitting them on 

the Internet. After a Norwegian teenager succeeded in reverseengineering CSS and devising a computer program to circumvent it 

(DeCSS), the defendants posted DeCSS on their Internet website and 

linked to other sites that also made DeCSS generally available. The 

court readily found the defendants to have violated section 1201(a)(2) 

(“trafficking”) of the DMCA, by offering and providing on their website 

circumvention software that was “primarily designed” for the purpose 

of circumventing the CSS “technological measure that effectively controls access to a work” protected by copyright. The court also found 

that the defendants and DeCSS did not fall within any of the several 

 

383. 273 F.3d 429 (2d Cir. 2001). 
Chapter 8: Enforcement of Copyright 

183 

statutory exemptions, and that the finding of liability and the issuance 

of an injunction did not violate the First Amendment. 

 In a criminal prosecution arising from the Internet distribution of 

software designed to circumvent the access-protection technology used 

on so-called e-books marketed on the Internet, the district court upheld section 1201(a) against a series of constitutional challenges, including vagueness, the “limited times” provision of the Copyright and 

Patent Clause, and the limits upon Congress’s power to regulate interstate commerce.384

 It has, however, been held that section 1201 does not bar the unauthorized use of an access password, or similar decryption device, that 

has been issued by the copyright owner to a third party from whom the 

defendant obtained it; the defendant was held to have merely bypassed 

permission to move through the technological measure, rather than 

having surmounted or evaded that measure.385 And courts have resisted 

the efforts of manufacturers of everyday consumer products—such as 

computer-printer cartridges386 and garage-door openers387—to use 

section 1201 of the DMCA to bar those who would design and sell replacement parts, even when those competitors circumvent software 

codes that enable, respectively, the cartridges to interact with the 

printer and the opener to operate the garage door. A principal reason 

was that section 1201 was designed not to allow sellers of consumer 

goods to monopolize the sale of aftermarket parts, but rather to bar 

access to and copying of underlying works that are themselves within 

the intended protection of the Copyright Act, such as music recordings, video games and motion pictures. 

 Section 1202 of the DMCA is designed to encourage the copyright 

owner to embed important copyright-related information in digital 

copies and phonorecords, including the name of the author and copyright owner and the terms and conditions for use of the work. This is 

known as copyright management information (CMI). Section 1202 

 

384. United States v. Elcom, Ltd., 203 F. Supp. 2d 1111 (N.D. Cal. 2002). 

385. I.M.S. Inquiry Mgmt. Sys., Ltd. v. Berkshire Info. Sys., Inc., 307 F. Supp. 2d 521 

(S.D.N.Y. 2004). 

386. Lexmark v. Static Control Corp., 387 F.3d 522 (6th Cir. 2004). 

387. Chamberlain v. Skylink, 381 F.3d 1178 (Fed. Cir. 2004). 
Copyright Law 

184 

prohibits knowingly providing false CMI with the intent to facilitate or 

conceal copyright infringement, as well as furthering the removal or 

alteration of CMI with reasonable grounds for knowing it will facilitate 

or conceal an infringement.388

 

388. For cases illustrating the difficulty of securing relief under section 1202(b), see 

Gordon v. Nextel Communications, 345 F.3d 922 (6th Cir. 2003); Schiffer Publishing, Ltd. v. 

Chronicle Books, LLC, 76 U.S.P.Q.2d 1493 (E.D. Pa. 2005). 
185 

Chapter 9 

State Law and Its Preemption 

State Anti-Copying Laws 

Throughout the history of copyright law in the United States, the laws 

of the several states—under a variety of legal theories—have afforded 

protection against the unauthorized copying or other use of the intellectual creations of others. Most significantly, until 1978, state law generally forbade the unauthorized first printing or public distribution of 

an unpublished work. This was known as common-law copyright, typically afforded by judicial development but sometimes by state statute. 

Since the amendment of the Copyright Act, effective January 1, 1978, 

which extended federal protection to all works from the moment they 

are “fixed in a tangible medium of expression,”389 federal copyright has 

automatically attached to even unpublished works. Under the terms of 

section 301 of the Act, “no person is entitled to any such right or 

equivalent right in any such work under the common law or statutes of 

any State.” Because state common-law copyright afforded relief against 

conduct—copying or public distribution pure and simple—that is 

exactly the same as that proscribed by the 1976 Act, Congress determined that the exclusive rights, limitations, remedies, and federal jurisdiction that are provided through the federal act should preempt 

state copyright law. 

 There are, however, a number of other state theories that bar one 

person’s unauthorized use of another’s intellectual product. State laws 

of unfair competition forbid one person’s “passing off” his or her own 

work as having been created by another. This theory is frequently applied to prevent the use of a title or a character (or character name) 

that has become popular in identifying another person’s earlier work. 

State trademark law is an application of the doctrine of “passing off” to 

goods and services, the labeling of which would cause confusion in the 

consumer marketplace. Another branch of unfair competition law is 

 

389. 17 U.S.C. § 102(a). 
Copyright Law 

186 

known as “misappropriation.” The converse of passing off, misappropriation prevents one person from representing expressly or impliedly 

to be his or her own a work actually created by another person; the 

layman labels this as plagiarism, but the law has called this kind of 

typically unattributed copying “misappropriation.” The Supreme Court 

decision in International News Service v. Associated Press,

390 rendered as 

an elaboration of federal tort law in the early years of the twentieth 

century, articulated this doctrine and its underlying rationale, and inspired state courts in developing their own local laws of unfair competition. 

 States may also bar copying or other unauthorized uses of intellectual creations when such use would be in breach of contract or in 

breach of trust or some other fiduciary relationship. The reproduction 

or other use of a person’s unpublished and carefully guarded industrial 

formulae, business schemes, or customer lists may run afoul of a state’s 

trade secret laws. The publishing of another’s work might also be forbidden under various state tort theories—such as the right of privacy 

(e.g., when A writes a love letter to B, who publishes it), defamation 

(e.g., when A writes B a letter stating scurrilous things about C, and B

publishes that letter), and the right of publicity (e.g., when A’s performing style is mimicked by another performer). 

 In addition to these state laws against copying the work of another, 

federal laws may often be available. The federal Patent Act391 bars the 

use or sale of products, processes, or designs of useful articles for 

which a federal patent has been issued. Under the federal trademark 

statute, the Lanham Act,392 phrases and pictorial works can be registered if they have come to identify goods or services, and federal actions may be brought to forbid their copying. Even unregistered works 

are protected against copying under section 43(a) of the Lanham Act if 

their use in connection with goods and services in interstate commerce 

could be viewed as a 

 

390. 248 U.S. 215 (1918). 

391. 35 U.S.C. §§ 101 et seq. 

392. 15 U.S.C. §§ 1051 et seq. 
Chapter 9: State Law and Its Preemption 

187 

false designation of origin, false or misleading description of fact, or false 

or misleading representation of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive . . . as to the origin, sponsorship, 

or approval of his or her goods, services, or commercial activities by another person.393

This section creates, in effect, a federal statutory law of unfair competition. 

Federal Preemption 

When relief is sought under state law against unauthorized use of literary, artistic, or musical creations, a question arises as to the compatibility of state relief with the federal Copyright Act. For a state to forbid 

copying permitted under federal law, or for a state to permit copying 

that federal law proscribes, would equally raise questions of compliance with the Supremacy Clause of the Constitution, Article VI, Clause 

2. 

 In a number of significant cases that arose prior to the 1976 Copyright Act, the Supreme Court dealt with claims that state anti-copying 

laws were preempted because of their incompatibility with either the 

patent or copyright law of the United States. In two well-known companion cases decided in 1964, the Court overturned, as inconsistent 

with federal patent law, the application of a state unfair competition 

law that would have forbidden the copying and marketing of lighting 

fixtures for which utility and design patents were unavailable or had 

expired. The Court stated its holding in broad terms: 

[W]hen an article is unprotected by a patent or a copyright, state law may 

not forbid others to copy that article. To forbid copying would interfere 

with the federal policy, found in Art. I, § 8, cl. 8, of the Constitution and in 

the implementing federal statutes, of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain.394

 

393. Id. § 1125. 

394. Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 237 (1964) (citing Sears, 

Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964)). The Court reiterated these views in 

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989). 
Copyright Law 

188 

The Court made clear that it had no objection to state law “which requires those who make and sell copies to take precautions to identify 

their products as their own,”395 i.e., state labeling laws forbidding unfair competition in the form of “passing off.” 

 In a later decision pointing in a somewhat different direction, the 

Supreme Court upheld a state law making it a crime to “pirate” (by 

directly dubbing sounds from) recordings manufactured by others, at a 

time when the federal Copyright Act had not yet extended copyright 

protection to “sound recordings.” In Goldstein v. California,

396 decided 

in 1973, the Court concluded that Congress’s omission of sound recordings was not intended to prevent states from enacting anti-piracy 

laws, because much potentially copyrightable subject matter is amenable to “local” regulation and because Congress had (in the time period 

pertinent to the case) left the matter of protection for sound recordings 

“unattended.” 

 Congress did not leave the general issue of preemption of state 

anti-copying laws unattended for long. In the 1976 Copyright Act, Congress incorporated elaborate preemption provisions in section 301. 

Section 301(a) provides: 

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. 

In section 301(b), Congress reiterated that state rights and remedies are 

not annulled or limited if they relate to subject matter falling outside 

section 102 and 103, including “unfixed” works, or if the rights afforded 

by state law are not “equivalent to” the rights accorded by section 

106.397 To make it clear that preemption is intended only of state laws, 

 

395. Compco, 376 U.S. at 238. 

396. 412 U.S. 546 (1973). 

397. Also sheltered against preemption are state causes of action arising before January 1, 1978 (long since barred by the three-year statute of limitations in section 507(b) of 
Chapter 9: State Law and Its Preemption 

189 

section 301(d) provides: “Nothing in this title annuls or limits any 

rights or remedies under any other Federal statute.” Accordingly, it is 

still possible to seek anti-copying relief under, say, federal design patent law to protect the shape of useful articles, or under the Lanham Act 

to bar the use of words or pictures that confuse the public regarding 

the source of goods or services.398

 Section 301 clearly preempts what was known as common-law 

copyright: the right of first publication of, typically, a literary or musical manuscript. State laws that are not preempted fall into two categories. First are anti-copying laws that relate to works not within the subject matter of copyright; the principal statutory example of this is a 

work not fixed in a tangible medium of expression. Thus, if a work is 

communicated by the author only in “live” form—such as an improvised lecture or comedy routine—the unauthorized copying of that 

work (e.g., by shorthand notation or by tape recording) or the unauthorized performance of that work can be forbidden by state law. To 

that extent, it can be said that common-law copyright continues to 

exist, but only with respect to works that have not been “fixed” (or that 

have been fixed without the author’s consent). 

 Pursuant to U.S. treaty obligations, the Copyright Act was amended 

in 1994 to add section 1101 which protects a live musical performance 

against unauthorized fixation, the distribution of copies or phonorecords of the unauthorized fixation, or the transmission of the performance to the public. This unique example of federal protection of an 

unfixed work (granting in effect a federal right of first fixation) was 

sustained against constitutional attack by the Court of Appeals for the 

Eleventh Circuit in United States v. Moghadam.

399 The court found section 1101 to be supported by the Interstate Commerce Clause. Section 

 

the Copyright Act), and state laws prohibiting the reproduction of sound recordings that 

were fixed before February 15, 1972, the effective date of the federal statute first barring 

such “record piracy.” See 17 U.S.C. § 301(c). 

398. But see Dastar Corp. v. Twentieth Century Fox Film, 539 U.S. 23 (2003) (Lanham 

Act is narrowly construed so as to deny relief for unattributed copying of video footage). 

399. 175 F.3d 1269 (11th Cir. 1999). District courts in other circuits are divided on the 

issue. See Kiss Catalog, Ltd. v. Passport Int’l Prods., Inc., 405 F. Supp. 2d 1169 (C.D. Cal. 

2005); United States v. Martignon, 346 F. Supp. 2d 413 (S.D.N.Y. 2004) (appeal pending). 
Copyright Law 

190 

1101(d) expressly provides that state common-law or statutory remedies for such wrongdoing are not preempted. 

 Given the wide range of the categories of works listed in sections 

102 and 103, it is difficult to imagine any fixed work that falls outside 

the scope of the federal act. Nonetheless, the statute, or unambiguous 

legislative history, makes it clear that certain components within the 

covered categories are not eligible for federal copyright protection. 

The most obvious example is “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,” which section 102(b) declares unprotected. Some courts 

have concluded that because Congress excluded ideas and concepts 

from the subject matter of copyright, it follows that states may outlaw 

their copying.400 Most courts, however, take what would appear to be 

the clearly correct view, that Congress in section 102(b) was articulating 

an affirmative policy of making ideas and concepts available for all to 

copy, such that state anti-copying laws embracing such subject matter 

would be inconsistent with the federal scheme.401 As the Court of Appeals for the Fourth Circuit concluded, denying state relief for the alleged copying of ideas and methods developed in a Ph.D. dissertation, 

the “scope” (i.e., subject matter) of the Copyright Act and its “protection” are not synonymous: “[T]he shadow actually cast by the Act’s 

preemption is notably broader than the wing of its protection.”402

 Even if a work is within the categories of federally copyrightable 

subject matter and is fixed in a tangible medium of expression, a state 

may forbid unauthorized use of such works provided that such use is 

not “equivalent to any of the exclusive rights within the general scope 

of copyright as specified by section 106.” If, for example, a state were 

 

400. E.g., Dunlap v. G & L Holding Group, Inc., 381 F.3d 1285 (11th Cir. 2004); Past 

Pluto Prods. Corp. v. Dana, 627 F. Supp. 1435 (S.D.N.Y. 1986). See also Storch Enters. v. 

Mergenthaler Linotype, 202 U.S.P.Q. 623 (E.D.N.Y. 1979) (state protection against copying of typeface, despite legislative history showing Congress’s desire not to afford protection). 

401. E.g., Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d 195 (2d Cir. 1983), 

rev’d on other grounds, 471 U.S. 539 (1985). 

402. United States ex rel. Berge v. Bd. of Trustees of Univ. of Ala., 104 F.3d 1453, 1463 

(4th Cir. 1997). 
Chapter 9: State Law and Its Preemption 

191 

to attempt to forbid the copying or the public performance of a “fixed” 

dramatic work, the defendant could properly move to dismiss on the 

ground of preemption under section 301 of the Copyright Act. If, however, the state’s ban on copying or public performance rests upon a 

theory that is not “equivalent” to federal copyright, state jurisdiction 

and law can be effective. 

 Section 301 does not expressly itemize the “nonpreempted” state 

causes of action. Nonetheless, an earlier version of the copyright revision bill did,403 and the itemization is useful, for despite some confusing subsequent legislative history (in the form of a colloquy on the 

floor of the House of Representatives), there is good reason to believe 

that the deletion of the list from the bill was not intended as a repudiation. Included in the earlier version, as nonequivalent and nonpreempted state claims, were “rights against misappropriation not equivalent to any of such exclusive rights [in section 106], breaches of contract, breaches of trust, trespass, conversion, invasion of privacy, defamation, and deceptive trade practices such as passing off and false 

representation.” 

 What appears to link these nonpreempted state claims is the presence of a significant element in the theory of relief that goes beyond 

“mere” copying or public performance (or some other right set forth 

in section 106 of the Copyright Act). As has been stated by the Court of 

Appeals for the Second Circuit: 

When a right defined by state law may be abridged by an act which, in and 

of itself, would infringe one of the exclusive rights, the state law in question must be deemed preempted. Conversely, when a state law violation is 

predicated upon an act incorporating elements beyond mere reproduction 

or the like, the rights involved are not equivalent and preemption will not 

occur.404

This has come to be known as the “extra element” test for nonpreemption.405

 

403. See H.R. Rep. No. 94-1476, at 131–32 (1976). 

404. Harper & Row, 723 F.2d at 200. 

405. E.g., Wrench LLC v. Taco Bell Corp., 256 F.3d 446 (6th Cir. 2001). This test has 

been criticized as conclusory. See Ritchie v. Williams, 395 F.3d 283 (6th Cir. 2005). 
Copyright Law 

192 

 Thus, a plaintiff’s claim that the defendant has copied a work in 

violation of a contractual promise, or in violation of an obligation of 

trust imposed by the state law of fiduciary obligations, is based on a 

state policy different from the economic-incentive policy underlying 

the Copyright Act; there are additional elements (above and beyond 

the copyright claim) to be proved to establish the state cause of action, 

and state remedies can protect interests beyond those protected by 

copyright.406 Moreover, state relief in such contract and fiduciary cases 

reaches the conduct of only one or a very limited number of persons 

bound to the plaintiff in the special relationship; the state anti-copying 

relief does not bar members of the public more generally.407 Some 

courts, however, have been more inclined than others to find preemption in situations in which the alleged contract breach is nothing more 

than the reproduction of expressive materials.408

 Conversion of a physical manuscript—the wrongful assertion of 

ownership in the tangible property—could give rise to an unpreempted 

state cause of action, but conversion of “literary” property in the 

manuscript would be preempted, for the latter is essentially another 

name for copyright protection.409 That is also true for a claim of “interference with contractual relationships” when the interference takes the 

form of a third person’s refusal to print the plaintiff’s book because the 

defendant has already marketed an unauthorized copy; the refusal to 

print is simply an element of the plaintiff’s damages that are compensable in a copyright infringement action.410 Similarly, the plaintiff 

 

406. ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996); Acorn Structures, Inc. v. 

Swantz, 846 F.2d 923 (4th Cir. 1988); Smith v. Weinstein, 578 F. Supp. 1297 (S.D.N.Y.), aff’d 

without opinion, 738 F.2d 419 (2d Cir. 1984). See Computer Assocs. Int’l, Inc. v. Altai, Inc., 

982 F.2d 693 (2d Cir. 1992) (trade secret). 

407. See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996), for a particularly 

thoughtful—if not uncontroversial—analysis. Zeidenberg enforced, on a state contract 

theory, the terms of a so-called shrinkwrap license wrapped with a mass-distributed CDROM and barring commercial use of the largely uncopyrighted material (white-page 

telephone information) embedded thereon. 

408. Taco Bell, 256 F.3d 446; Kabehie v. Zoland, 125 Cal. Rptr. 2d 721 (2d Dist. 2002). 

409. Ehat v. Tanner, 780 F.2d 876 (10th Cir. 1985). 

410. Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d 195 (2d Cir. 1983), rev’d 

on other grounds, 471 U.S. 539 (1985). 
Chapter 9: State Law and Its Preemption 

193 

will ordinarily not be able to avoid the preemptive thrust of section 301 

by claiming under the state anti-copying law that the defendant had 

acted intentionally, or had been unjustly enriched by tapping into the 

plaintiff’s effort and expense, or had behaved in a “commercially immoral” manner.411 Although none of these elements of the claim is 

technically a requisite for a copyright claim under section 106, they are 

generally regarded as incidental to and not markedly different in substance from a claim for infringement.412

 It remains to be seen whether courts will uphold state claims that 

are framed as “misappropriation not equivalent to any of [the] exclusive rights” in section 106 (borrowing the language that had appeared 

in the earlier copyright revision bill). It is, for example, doubtful 

whether a modern-day equivalent of the theory fashioned by the Supreme Court in International News Service v. Associated Press413—

reaping where one had not sown in the reporting of uncopyrightable 

news—could be sustained against a preemption defense by a state (or 

federal) court applying state tort law.414 But if the state misappropriation tort is narrowly enough circumscribed, it may survive preemption 

because it is not equivalent to copyright. So the Second Circuit Court 

of Appeals held in National Basketball Ass’n v. Motorola, Inc.,415 when it 

stated “that only a narrow ‘hot-news’ misappropriation claim survives 

preemption for actions concerning material within the realm of copyright.”416 In the court’s view, such a nonpreempted claim would have 

to have the following elements: 

 

411. E.g., Mayer v. Josiah Wedgwood & Sons, 601 F. Supp. 1523 (S.D.N.Y. 1985). 

412. For all such “equivalent” and preempted state claims, some federal courts have 

applied the doctrine of “complete preemption,” which results not only in a dismissal, but 

also in a “recharacterization” of the state claims as federal copyright claims, which thus 

fall within the exclusive (and removal) jurisdiction of the federal courts. See Ritchie v. 

Williams, 395 F.3d 283 (6th Cir. 2005). 

413. 248 U.S. 215 (1918). 

414. The House Report, however, contemplates the nonpreemption of state misappropriation laws that bar the unauthorized use of electronic means to steal a computer 

database. H.R. Rep. No. 94-1476, at 133 (1976) (citing International News). 

415. 105 F.3d 841 (2d Cir. 1997). 

416. Id. at 852. 
Copyright Law 

194 

(i) the plaintiff generates or collects information at some cost or expense; 

(ii) the value of the information is highly time-sensitive; (iii) the defendant’s use of the information constitutes free-riding on the plaintiff’s 

costly efforts to generate or collect it; (iv) the defendant’s use of the information is in direct competition with a product or service offered by 

the plaintiff; (v) the ability of other parties to free-ride on the efforts of 

the plaintiff would so reduce the incentive to produce the product or 

service that its existence or quality would be substantially threatened.417

 Although the bulk of the decided cases dealing with the issue of 

preemption of state law focus, naturally enough, upon the application 

of the explicit preemption provisions in section 301 of the Copyright 

Act, a number of cases have invoked a broader theory of preemption 

based upon a conflict with some substantive term or policy of the federal statute. As with preemption situations generally, beyond copyright, 

the question for the court is whether the federal policies reflected in 

some provision of the Copyright Act would be “set at naught, or its 

benefits denied” by the application of state law, or whether state law 

“stands as an obstacle to the accomplishment and execution of the full 

purposes and objectives of Congress.”418 

 This “conflict preemption” might concern such issues as ownership and transfers of rights—matters that do not raise issues of “equivalence” to the exclusive rights set forth in section 106. For example, a 

state statute purporting to give copyright ownership to an employee 

who had prepared a literary work within the scope of his employment 

would disrupt the allocation of ownership rights dictated by Congress 

and would thus be an obstacle to the policies reflected in the Copyright 

Act. So too would a state law that would enforce an author’s transfer of 

a copyright despite the absence of a signed writing. 

 Some courts are more willing than others to effect an “accommodation” of the federal and state laws, and thus to deny that the state law 

is preempted. Two examples are instructive. One deals with the 

community-property laws in eight states, which raise the question 

 

417. Id. (citations omitted). 

418. For a comprehensive treatment of the issue, see Foley v. Luster, 249 F.3d 1281 

(11th Cir. 2001) (Florida law regarding indemnification is not preempted as applied to 

joint copyright infringers). 
Chapter 9: State Law and Its Preemption 

195 

whether the initial copyright ownership given by the Copyright Act to 

the “author” of a work must be shared in some way with that author’s 

spouse. Despite arguments that such a forced sharing would dilute and 

conflict with federal policy, which is designed to ensure financial rewards that foster creativity, it has been held that state law resulting in 

co-ownership of the copyright is not preempted; the non-author 

spouse will share equally in the proceeds from copyrighted works created during the marriage (and even from post-divorce derivative 

works), although the author–spouse alone will have the right to “manage” the copyright through licensing and transfers.419

 Different courts of appeals have reached different conclusions on 

the question whether the 35-year termination power granted by section 

203 of the Copyright Act preempts state laws that allow for the termination at will of all contracts (typically oral) that fail to specify a termination date. The Court of Appeals for the Ninth Circuit found a conflict 

and held that California law was preempted.420 But the Seventh and 

Eleventh Circuits, noting the extensive academic criticism of that sistercircuit decision, viewed section 203 as author-protective and as setting 

a maximum and not a minimum term of a copyright grant, so that state 

laws more generous to authors and termination were not in conflict 

and so not preempted.421 

 

419. Rodrigue v. Rodrigue, 218 F.3d 432 (5th Cir. 2000) (applying Louisiana law); In re

Marriage of Susan M. & Frederick L. Worth, 241 Cal. Rptr. 135 (1st Dist. 1987) (applying 

California law, leaving open the question of licensing and transfer rights). 

420. Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir. 1993). 

421. Walthal v. Rusk, 172 F.3d 481 (7th Cir. 1999) (Illinois law); Korman v. HBC Fla., 

Inc., 182 F.3d 1291 (11th Cir. 1999) (Florida law). 
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197 

Glossary 

The definitions in this list of common terms relating to copyright are 

drawn from the language of 17 U.S.C. § 101. (Definitions of additional 

terms may also be found in that section.) 

Architectural work: The design of a building as embodied in any tangible medium of expression, including a building, architectural plans, 

or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but 

does not include individual standard features. 

Audiovisual works: Works that consist of a series of related images 

which are intrinsically intended to be shown by the use of machines or 

devices such as projectors, viewers, or electronic equipment, together 

with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied. 

Collective work: A work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate 

and independent works in themselves, are assembled into a collective 

whole. 

Compilation: A work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged 

in such a way that the resulting work as a whole constitutes an original 

work of authorship. The term “compilation” includes collective works. 

Computer program: A set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain 

result. 

Copies: 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. 
Copyright Law 

198 

Copyright owner: The owner of any one of the exclusive rights that 

make up a copyright. 

Created: Fixed in a copy or phonorecord for the first time; where a 

work is prepared over a period of time, the portion of it that has been 

fixed at any particular time constitutes the work as of that time, and 

where the work has been prepared in different versions, each version 

constitutes a separate work. 

Derivative work: A work based on one or more preexisting works, such 

as a translation, musical arrangement, dramatization, fictionalization, 

motion picture version, sound recording, art production, abridgment, 

condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent 

an original work of authorship is a “derivative work.” 

Digital transmission: A transmission in whole or in part in a digital or 

other non-analog format. 

Display: To show a copy of a work, 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. 

Fixed: Embodied in a copy or phonorecord (tangible medium of expression), by or under the authority of the author, in a medium 

sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds or images, or both, that are 

being transmitted is “fixed” for purposes of Title 17 if a fixation of the 

work is being made simultaneously with its transmission. 

Joint work: A work prepared by two or more authors with the intention 

that their contributions be merged into inseparable or interdependent 

parts of a unitary whole. 

Literary works: Works, other than audiovisual works, expressed in 

words, numbers, or other verbal or numerical symbols, or indicia, 

regardless of the nature of the material objects, such as books, periodi-
Glossary 

199 

cals, manuscripts, phonorecords, film, tapes, disks, or cards, in which 

they are embodied. 

Motion pictures: Audiovisual works consisting of a series of related 

images which, when shown in succession, impart an impression of 

motion, together with accompanying sounds, if any. 

Perform: To recite, render, play, dance, or act a work, 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. 

Phonorecords: Material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by 

any method now known or later developed, and from which the 

sounds can be perceived, reproduced, or otherwise communicated, 

either directly or with the aid of a machine or device. The term 

“phonorecords” includes the material object in which the sounds are 

first fixed. 

Pictorial, graphic, and sculptural works: Include two-dimensional and 

three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, 

models, and technical drawings, including architectural plans. Such 

works include works of artistic craftsmanship insofar as their form but 

not their mechanical or utilitarian aspects are concerned; the design of 

a useful article is considered a pictorial, graphic, or sculptural work 

only if, and only to the extent that, such design incorporates pictorial, 

graphic, or sculptural features that can be identified separately from, 

and are capable of existing independently of, the utilitarian aspects of 

the article. 

Publication: The distribution of copies or phonorecords of a work to 

the public by sale or other transfer of ownership, or by rental, lease, or 

lending. The offering to distribute copies or phonorecords to a group 

of persons for purposes of further distribution, public performance, or 

public display, constitutes publication. A public performance or display of a work does not of itself constitute publication. 
Copyright Law 

200 

Publicly: (1) To perform or display a work 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. 

Sound recordings: Works that result from the fixation of a series of 

musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work, regardless of 

the nature of the material objects, such as disks, tapes, or other phonorecords, in which they are embodied. 

Transfer of copyright ownership: An assignment, mortgage, exclusive 

license, or any other conveyance, alienation, or hypothecation of a 

copyright or of any of the exclusive rights comprised in a copyright, 

whether or not limited in time or place of effect, but not including a 

nonexclusive license. 

Transmit: To communicate a performance or display by any device or 

process whereby images or sounds are received beyond the place from 

which they are sent. 

Useful article: An article having an intrinsic utilitarian function that is 

not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is also considered a “useful article.” 

Work of visual art: (1) A painting, drawing, print, or sculpture, existing 

in a single copy, in a limited edition of 200 copies or fewer that are 

signed and consecutively numbered by the author, or, in the case of a 

sculpture, in multiples of 200 or fewer that are signed or marked and 

consecutively numbered by the author; or (2) a still photographic image produced for exhibition purposes only, existing in a single copy 

that is signed by the author, or in a limited edition of 200 copies or 

fewer that are signed and consecutively numbered by the author. A 

“work of visual art” does not include: any poster, map, globe, chart, 
Glossary 

201 

technical drawing, diagram, model, applied art, motion picture or 

other audiovisual work, book, magazine, newspaper, periodical, database, electronic information service, electronic publication, or similar 

publication; or any advertising, promotional, descriptive or packaging 

material or container; or any work made for hire; or any work not subject to copyright protection under Title 17. 

Work of the U.S. government: A work prepared by an officer or employee of the U.S. government as part of that person’s official duties. 

Work made for hire: (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, afterwords, 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. 
Blank pages inserted to preserve pagination when printing double-sided copies.
203 

Table of Cases 

Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), 71 

Abli Inc. v. Standard Brands Paint Co., 323 F. Supp. 1400 (C.D. Cal. 

1970), 17 

ABR Benefits Services Inc. v. NCO Group, 52 U.S.P.Q.2d 1119 (E.D. Pa. 

1999), 29 

A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001), 

102, 134, 154 

Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 1446 (9th Cir. 1991), 3, 87 

Acorn Structures, Inc. v. Swantz, 846 F.2d 923 (4th Cir. 1988), 192 

Aimster Copyright Litigation, In re, 334 F.3d 643 (7th Cir. 2003), 134 

ALS Scan, Inc. v. RemarQ Communities, Inc., 239 F.3d 619 (4th Cir. 

2001), 137 

Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951), 

16, 41 

American Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977 (7th 

Cir. 1997), 32, 39 

American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. 

1994), 153 

American Vitagraph, Inc. v. Levy, 659 F.2d 1023 (9th Cir. 1981), 87 

Anderson v. Stallone, 11 U.S.P.Q.2d (C.D. Cal. 1989), 51 

Apple Computer, Inc. v. Formula International, Inc., 725 F.2d 521 (9th 

Cir. 1984), 175 

Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 

(3d Cir. 1983), 21, 30, 31 

Apple Computer, Inc. v. Microsoft Corp., 779 F. Supp. 133 (N.D. Cal. 

1991), 110 

Arista Records, Inc. v. Flea World, Inc., 2006 WL 842883 (D.N.J. 2006), 

133 

Armstrong v. Virgin Records, 91 F. Supp. 2d 628 (S.D.N.Y. 2000), 169 

Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946), 102–05 
Copyright Law 

204 

Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989), 18 

Atari Games Corp. v. Oman, 979 F.2d 242 (D.C. Cir. 1992), 11, 32 

Atascadero State Hospital v. Scanlon, 473 U.S. 234 (1985), 173 

ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & 

Parts, Inc., 402 F.3d 700 (6th Cir. 2005), 38 

Avtec Systems, Inc. v. Peiffer, 21 F.3d 568 (4th Cir. 1994), 75 

Aymes v. Bonelli, 980 F.2d 857 (2d Cir. 1992), 74, 75 

Bailie v. Fisher, 258 F.2d 425 (D.C. Cir. 1958), 18, 42 

Baker v. Selden, 101 U.S. 99 (1879), 24–29, 47 

Banks v. Manchester, 128 U.S. 244 (1888), 53 

Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941 (2d Cir. 1975), 59 

Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir. 1968), 79 

Basic Books Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522 

(S.D.N.Y. 1991), 152 

Bassett v. Mashantucket Pequot Tribe, 204 F.3d 343 (2d Cir. 2000), 168 

BellSouth Advertising & Publishing Corp. v. Donnelley Information 

Publishing, Inc., 999 F.2d 1436 (11th Cir. 1993), 38 

Bibbero Systems v. Colwell Systems, Inc., 893 F.2d 1104 (9th Cir. 1990), 

29 

Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903), 14–15 

BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005), 102, 155 

Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908), 119–20 

Bonazoli v. R.S.V.P. Int’l, Inc., 353 F. Supp. 2d 218 (D. R.I. 2005), 47 

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989), 187 

Bonneville Int’l Corp. v. Peters, 347 F.3d 485 (3d Cir. 2003), 12 

Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 

481 (2d Cir. 1998), 79, 169 

Brandir International v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d 

Cir. 1987), 47 

Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 

2005), 105, 111 

Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 

(S.D.N.Y. 1976), 106 
Table of Cases 

205 

Broadcast Music, Inc. v. CBS Inc., 421 F. Supp. 592 (S.D.N.Y. 1983), 

171 

Broadcast Music, Inc. v. Roger Miller Music, Inc., 396 F.3d 762 (6th 

Cir. 2005), 57 

Broadcast Music, Inc. v. United States Shoe Corp., 678 F.2d 816 

(9th Cir. 1982), 160 

Burke v. NBC, 598 F.2d 688 (1st Cir. 1979), 89 

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884), 13–14 

Cablevision Systems Development Co. v. Motion Picture Ass’n of 

America, Inc., 836 F.2d 599 (D.C. Cir. 1988), 12 

Caffey v. Cook, 409 F. Supp. 2d 484 (S.D.N.Y. 2006), 176 

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), 140, 142, 143, 

145–47, 148, 150, 175 

Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 

1985), 45, 47 

Carell v. Shubert Org., 104 F. Supp. 2d 236 (S.D.N.Y. 2000), 169 

Carter v. Helmsley-Spear, Inc., 71 F.3d 77 (2d Cir. 1995), 74 

Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc., 150 

F.3d 132 (2d Cir. 1998), 148 

CCC Information Services v. Maclean Hunter Market Reports, Inc., 44 

F.3d 61 (2d Cir. 1994), 38, 54 

Celebration Int’l, Inc. v. Chosun Int’l, Inc., 234 F. Supp. 2d 905 (S.D. 

Ind. 2002), 45 

Chamberlain v. Skylink, 381 F.3d 1178 (Fed. Cir. 2004), 183 

Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000), 174 

Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 

U.S. 837 (1984), 11–12 

Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991), 70–71 

Coach, Inc. v. Peters, 386 F.S.2d 495 (S.D.N.Y. 2005), 11 

Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1988), 79 

College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 52 U.S. 666 (1999), 174 
Copyright Law 

206 

Columbia Pictures Industries, Inc. v. Aveco, Inc., 800 F.2d 59 (3d Cir. 

1986), 100, 124 

Columbia Pictures Industries, Inc. v. Garcia, 996 F. Supp. 770 (N.D. 

Ill. 1998), 118 

Columbia Pictures Industries, Inc. v. Professional Real Estate Investors, 

Inc., 866 F.2d 278 (9th Cir. 1989), 125 

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

73–74 

Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964), 187–88 

Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), 

30, 31, 109–10, 192 

Continental Casualty Co. v. Beardsley, 253 F.2d 702 (2d Cir. 1958), 27 

Corbis Corp. v. Amazon.com, 351 F. Supp. 2d 1090 (W.D. Wash. 

2004), 96 

County of Suffolk, N.Y. v. First American Real Estate Solutions, 261 

F.3d 179 (2d Cir. 2001), 53 

Cream Records, Inc. v. Jos. Schlitz Brewing Co., 754 F.2d 826 

(9th Cir. 1985), 177 

Dastar Corp. v. Twentieth Century Fox Film, 539 U.S. 23 (2003), 189 

Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988), 31 

Davis v. E.I. DuPont de Nemours & Co., 240 F. Supp. 612 (S.D.N.Y. 

1965), 133 

Dawson v. Hinshaw Music, Inc., 905 F.2d 731 (4th Cir. 1990), 104 

De Acosta v. Brown, 146 F.2d 408 (2d Cir. 1944), 106 

De Sylva v. Ballentine, 351 U.S. 570 (1956), 12, 57 

DeCarlo v. Archie Comic Publications, Inc., 127 F. Supp. 2d 497 

(S.D.N.Y. 2001), 50 

Demetriades v. Kaufman, 690 F. Supp. 289 (S.D.N.Y. 1988), 131 

Demetriades v. Kaufman, 680 F. Supp. 658 (S.D.N.Y. 1988), 47 

Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 

(9th Cir. 1997), 148 

Dunlap v. G & L Holding Group, Inc., 381 F.3d 1285 (11th Cir. 2004), 

190 
Table of Cases 

207 

E.H. Tate Co. v. Jiffy Enterprises, Inc., 16 F.R.D. 571 (E.D. Pa. 1954), 

17 

Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984), 38 

Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 

1982), 41 

Edison Bros. Stores, Inc. v. Broadcast Music, Inc., 954 F.2d 1419 (8th 

Cir. 1992), 159 

Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990), 78 

Ehat v. Tanner, 780 F.2d 876 (10th Cir. 1985), 192 

Eldred v. Ashcroft, 537 U.S. 186 (2003), 5, 64 

Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 

122 F.3d 1211 (9th Cir. 1997), 42 

Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994), 71 

Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211 (11th 

Cir. 1999), 3, 87 

Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003), 42, 43 

Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000), 43 

Fantasy, Inc. v. Fogerty, 654 F. Supp. 1129 (N.D. Cal. 1987), 171 

Faulkner v. National Geographic Enterprises Inc., 409 F.3d 26 (2d Cir. 

2005), 76 

Fawcett Publications, Inc. v. Elliot Publishing Co., 46 F. Supp. 717 

(S.D.N.Y. 1942), 120 

Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 

(1991), 15, 16–17, 28–29, 36–37, 39, 40, 42, 103, 105 

Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998), 178 

Ferris v. Frohman, 223 U.S. 424 (1912), 88 

Filmvideo Releasing Corp. v. Hastings, 668 F.2d 91 (2d Cir. 1981), 51 

Financial Information, Inc. v. Moody’s Investors Service, 808 F.2d 204 

(2d Cir. 1986), 38 

Florida Prepaid Postsecondary Education Expense Board v. College 

Savings Bank, 527 U.S. 627 (1999), 174 

Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), 180 

Foley v. Luster, 249 F.3d 1281 (11th Cir. 2001), 194 
Copyright Law 

208 

Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841) (No. 4,901), 139, 

146 

Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996), 

133–34 

Forward v. Thorogood, 985 F.2d 604 (1st Cir. 1993), 3 

Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505 

(9th Cir. 1985), 177, 178 

Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643 (1943), 58–

59 

Frybarger v. International Business Machines Corp., 812 F.2d 525 

(9th Cir. 1987), 31 

Futuredontics, Inc. v. Applied Anagramics, Inc., 45 U.S.P.Q.2d 2005 

(C.D. Cal. 1998), 118 

G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 (2d Cir. 

1951), 61 

Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004), 50 51, 70, 168 

Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2003), 78 

Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 

443 F.2d 1159 (2d Cir. 1971), 132 

Gilliam v. American Broadcasting Cos., 538 F.2d 14 (2d Cir. 1976), 117 

Goldstein v. California, 412 U.S. 546 (1973), 188 

Gonzales v. Transfer Techs., Inc., 301 F.3d 608 (7th Cir. 2002), 180 

Gordon v. Nextel Communications, 345 F.3d 922 (6th Cir. 2003), 184 

Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983), 41 

Green v. Hendrickson Publishers, Inc., 770 N.E.2d 784 (Ind. 2002), 167 

Greenberg v. National Geographic Soc’y, 244 F.3d 1267 (11th Cir. 

2001), 76 

Greenwich Workshop, Inc. v. Timber Creations, Inc., 932 F. Supp. 

1210 (C.D. Cal. 1996), 118 

Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 

(1985), 142, 144–45, 150 

Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195 

(2d Cir. 1983), 190–92 
Table of Cases 

209 

Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir. 1996), 

45 

Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 

(9th Cir. 1971), 28, 108 

Hoague-Sprague Corp. v. Frank C. Meyer, Inc., 31 F.2d 583 (E.D.N.Y. 

1929), 16 

Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d Cir. 1980), 

28, 108 

Horgan v. MacMillan, Inc., 789 F.2d 157 (2d Cir. 1986), 117 

I.M.S. Inquiry Management Systems, Ltd. v. Berkshire Information 

Systems, Inc., 307 F. Supp. 2d 521 (S.D.N.Y. 2004), 183 

International News Service v. Associated Press, 248 U.S. 215 

(1918), 186, 193 

Italian Book Corp. v. ABC, 458 F. Supp. 65 (S.D.N.Y. 1978), 150 

Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d 

Cir. 1998), 169 

John Muller & Co. v. New York Arrows Soccer Team, 802 F.2d 989 

(8th Cir. 1986), 18, 42 

Kabehie v. Zoland, 125 Cal. Rptr. 2d 721 (2d Dist. 2002), 192 

Kahle v. Ashcroft, 72 U.S.P.Q.2d 1888 (N.D. Cal. 2004), 60, 91 

Kalem Co. v. Harper Bros., 222 U.S. 55 (1911), 117 

Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir. 2002), 154 

Key Publications, Inc. v. Chinatown Today Publishing Enterprises, 

Inc., 945 F.2d 509 (2d Cir. 1991), 38 

Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 

1980), 46 

Kiss Catalog, Ltd. v. Passport Int’l Productions, Inc., 405 F. Supp. 2d 

1169 (C.D. Cal. 2005), 20, 189 

Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 

(2d Cir. 1957), 18, 43 

Korman v. HBC Florida, Inc., 182 F.3d 1291 (11th Cir. 1999), 195 

L. Batlin & Son v. Snyder, 536 F.2d 486 (2d Cir. 1976), 41 

La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir. 1995), 88 
Copyright Law 

210 

Laureyssens v. Idea Group, Inc., 964 F.2d 131 (2d Cir. 1992), 103 

Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997), 118 

Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1992), 149 

Letter Edged in Black Press, Inc. v. Public Building Commission of 

Chicago, 320 F. Supp. 1303 (N.D. Ill. 1970), 88 

Lexmark v. Static Control Corp., 387 F.3d 522 (6th Cir. 2004), 183 

Lieberman v. Estate of Chayefsky, 535 F. Supp. 90 (S.D.N.Y. 1982), 168 

Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315 F. Supp. 2d 1053 

(C.D. Cal. 2004), 96 

Los Angeles Times v. Free Republic, 54 U.S.P.Q.2d 1453 (C.D. Cal. 

2000), 156 

Lotus Development Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 

1995), 32 

Lyons Partnership, L.P. v. Morris Costumers, Inc., 243 F.3d 789 (4th 

Cir. 2001), 104 

Mackie v. Rieser, 296 F.3d 909 (9th Cir. 2002), 178 

Magic Marketing v. Mailing Services, 634 F. Supp. 769 (W.D. Pa. 1986), 

18 

MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993), 

102 

Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005), 

26, 28, 108 

Marriage of Susan M. & Frederick L. Worth, In re, 241 Cal. Rptr. 135 

(1st Dist. 1987), 195 

Martha Graham School & Dance Foundation, Inc. v. Martha Graham 

Center of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004), 

3, 73 

Marvel Characters, Inc. v. Simon, 310 F.3d 280 (2d Cir. 2002), 81 

Mattel, Inc. v. Goldberger Doll Manufacturing Co., 365 F.3d 133 (2d 

Cir. 2004), 18, 43 

Matthew Bender & Co. v. West Publishing Co., 158 F.3d 674 (2d Cir. 

1998), 35, 39 
Table of Cases 

211 

Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693 (2d Cir. 

1998), 39 

Mayer v. Josiah Wedgwood & Sons, 601 F. Supp. 1523 (S.D.N.Y. 1985), 

193 

Mazer v. Stein, 347 U.S. 201 (1954), 12, 18, 43–44, 45 

MCA T.V., Ltd. v. Feltner, 89 F.3d 766 (11th Cir. 1996), 179 

Meltzer v. Zoller, 520 F. Supp. 847 (D.N.J. 1981), 70 

Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., 900 F. 

Supp. 1287 (C.D. Cal. 1995), 51 

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125 S. Ct. 2764 

(2005), 102, 135, 155 

Midway Manufacturing Co. v. Dirkschneider, 543 F. Supp. 466 (D. 

Neb. 1981), 21 

Miller v. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir. 1981), 28 

Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985), 83 

Milne ex rel. Coyne v. Stephen Slesinger, Inc., 430 F.3d 1036 (9th Cir. 

2005), 81, 83 

Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 

(9th Cir. 1988), 118 

Mitek Holdings, Inc. v. ArcE Engineering Co., 89 F.3d 1548 (11th Cir. 

1996), 32 

Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997), 32 

Morris v. Business Concepts, Inc., 283 F.3d 502 (2d Cir. 2002), 12 

Morris v. Business Concepts, Inc., 323 F.3d 502 (2d Cir. 2002), 96 

Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967), 27–28 

Muller v. Triborough Bridge Authority, 43 F. Supp. 298 (S.D.N.Y. 

1942), 44 

Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989), 108 

National Basketball Association v. Motorola, Inc., 105 F.3d 841 (2d Cir. 

1997), 193–94 

National Geographic Society v. Classified Geographic, Inc., 27 F. Supp. 

655 (D. Mass. 1939), 120 
Copyright Law 

212 

New Era Publications Int’l v. Carol Publishing Group, 904 F.2d 152 (2d 

Cir. 1990), 145 

New Era Publications Int’l v. Henry Holt & Co., 873 F.2d 576 (2d Cir. 

1989), 145 

New York Times Co. v. Tasini, 533 U.S. 483 (2001), 75, 79, 175 

Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003), 105, 114 

Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), 26, 51, 

107, 108, 109 

NXIVM Corp. v. Ross Institute, 364 F.3d 471 (2d Cir. 2004), 150 

Ocasek v. Hegglund, 116 F.R.D. 154 (D. Wyo. 1987), 171 

OddzOn Products, Inc. v. Oman, 924 F.2d 346 (D.C. Cir. 1991), 11 

On Davis v. The Gap, Inc., 246 F.3d 152 (2d Cir. 2001), 176–79 

Pacific & Southern Co. v. Duncan, 744 F.2d 1490 (11th Cir. 1984), 142 

Pasha Publications, Inc. v. Enmark Gas Corp., 22 U.S.P.Q.2d 1076 

(N.D. Tex. 1992), 101 

Past Pluto Productions Corp. v. Dana, 627 F. Supp. 1435 (S.D.N.Y. 

1986), 190 

Pavia v. 1120 Avenue of the Americas Assocs., 901 F. Supp. 620 

(S.D.N.Y. 1995), 130–31 

Pennsylvania v. Union Gas Co., 491 U.S. 1 (1989), 173 

Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828 (C.D. Cal 2006), 154 

Perma Greetings Inc. v. Russ Berrie & Co., 598 F. Supp. 445 (E.D. Mo. 

1984), 17 

Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 

(2d Cir. 1960), 26, 104, 106 

Phillips v. Kidsoft, L.L.C., 52 U.S.P.Q.2d 1102 (D. Md. 1999), 102 

Pivot Point Int’l, Inc. v. Charlene Products, Inc., 372 F.3d 913 (7th Cir. 

2004), 45, 47 

Playboy Enterprises, Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993), 

128 

Playboy Enterprises, Inc. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. 

Tex. 1997), 22, 102, 119, 128 
Table of Cases 

213 

Playboy Enterprises Inc. v. Sanfilippo, 46 U.S.P.Q.2d 1350 (S.D. Cal. 

1998), 22 

Pollara v. Seymour, 344 F.3d 265 (2d Cir. 2003), 49, 129 

Polygram Int’l Publishing, Inc. v. Nevada/TIG, Inc., 855 F. Supp. 1314 

(D. Mass. 1994), 131 

Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357 (5th 

Cir. 2004), 103 

Practice Management Information Corp. v. American Medical Ass’n, 

121 F.3d 516 (9th Cir. 1997), 54 

Princeton University Press v. Michigan Document Services, Inc., 99 

F.3d 1381 (6th Cir. 1996), 152 

ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996), 192 

Quality King Distributors, Inc. v. L’Anza Research International, Inc., 

523 U.S. 135 (1998), 120 

Random House, Inc. v. Rosetta Books, L.L.C., 150 F. Supp. 2d 613 

(S.D.N.Y. 2001), 79 

Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir. 1993), 195 

Recording Industry Ass’n of America v. Diamond Multimedia Systems, 

Inc., 180 F.3d 1072 (9th Cir. 1999), 116 

Religious Technology Center v. Netcom On-Line Communication 

Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995), 119, 136 

Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 

1997), 105, 150 

Ritchie v. Williams, 395 F.3d 283 (6th Cir. 2005), 191, 193 

Rodrigue v. Rodrigue, 218 F.3d 432 (5th Cir. 2000), 195 

Rohauer v. Killiam Shows, Inc., 551 F.2d 484 (2d Cir. 1977), 61–62 

Roley v. New World Pictures, Ltd., 19 F.3d 479 (9th Cir. 1994), 172 

Rosemont Enterprises v. Random House, Inc., 366 F.2d 303 (2d Cir. 

1966), 140 

Rosette v. Rainbo Record Manufacturing Corp., 354 F. Supp. 1183 

(S.D.N.Y. 1973), 88 

Rossi v. Motion Picture Ass’n of America, 391 F.3d 1000 (9th Cir. 

2004), 137 
Copyright Law 

214 

Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970), 

35 

Sailor Music v. Gap Stores, 668 F.2d 84 (2d Cir. 1982), 160 

Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir. 1987), 145 

Satellite Broadcast & Communications Ass’n of America v. Oman, 17 

F.3d 344 (11th Cir. 1994), 12 

Schiffer Publishing, Ltd. v. Chronicle Books, LLC, 76 U.S.P.Q.2d 1493 

(E.D. Pa. 2005), 184 

Scholastic Entertainment, Inc. v. Fox Entertainment Group, Inc., 336 

F.3d 982 (9th Cir. 2003), 168 

Schumann v. Albuquerque Corp., 664 F. Supp. 473 (D.N.M. 1987), 150 

Screen Gems-Columbia Music, Inc. v. Mark-Fi Records, Inc., 256 F. 

Supp. 399 (S.D.N.Y. 1966), 133 

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), 187 

Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), 30, 

109, 149, 153 

Sem-Torq, Inc. v. K Mart Corp., 936 F.2d 851 (6th Cir. 1991), 35 

Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1996), 173 

Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304 (2d Cir. 

1963), 132–33 

Shaul v. Cherry Valley–Springfield Cent. Sch. Dist., 363 F.3d 177, 185–

86 (2d Cir. 2004) 

Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936), 

15, 26, 106, 108, 109 

Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390 (1940), 176 

Sherry Mfg. Co. v. Towel King of Florida, Inc., 753 F.2d 1565 (11th Cir. 

1985), 41 

Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., 

562 F.2d 1157 (9th Cir. 1977), 104 

Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989), 51 

Skinder-Strauss Assocs. v. Massachusetts Continuing Legal Education, 

Inc., 914 F. Supp. 665 (D. Mass. 1995), 40 

Smith v. Weinstein, 578 F. Supp. 1297 (S.D.N.Y. 1984), 192 
Table of Cases 

215 

Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 

(1984), 100, 115, 131–32, 135, 142–45, 147, 151, 154 

Southco, Inc. v. Kanebridge Corp., 390 F.3d 276 (3d Cir. 2004), 38 

Steinberg v. Columbia Pictures Industries, Inc., 663 F. Supp. 706 

(S.D.N.Y. 1987), 104 

Stern Electronics, Inc. v. Kaufman, 669 F.2d 852 (2d Cir. 1982), 21 

Stewart v. Abend, 495 U.S. 207 (1990), 62, 145 

Stokes Seeds, Ltd. v. Geo. W. Park Seed Co., 783 F. Supp. 104 

(W.D.N.Y. 1991), 179 

Storch Enterprises v. Mergenthaler Linotype, 202 U.S.P.Q. 623 

(E.D.N.Y. 1979), 190 

Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th Cir. 2001), 

149 

T.B. Harms v. Eliscu, 339 F.2d 823 (2d Cir. 1964), 167–68 

Taylor v. Meirick, 712 F. 2d 1112 (7th Cir. 1983), 172, 176 

Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998), 71 

Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000), 106 

Time, Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968), 

43 

Tin Pan Apple Inc. v. Miller Brewing Co., 30 U.S.P.Q.2d 1791 

(S.D.N.Y. 1994), 17 

Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 

F.3d 869 (9th Cir. 2005), 73 

Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975), 159 

Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167 (7th Cir. 1997), 104 

UMG Recordings, Inc. v. MP3.Com, Inc., 92 F. Supp. 2d 349 (S.D.N.Y. 

2000), 155 

United States v. Elcom, Ltd., 203 F. Supp. 2d 1111 (N.D. Cal. 2002), 183 

United States v. Hamilton, 583 F.2d 448 (9th Cir. 1978), 42 

United States v. Martignon, 346 F. Supp. 2d 413 (S.D.N.Y. 2004), 20, 

189 

United States v. Mead Corp., 533 U.S. 218 (2001), 12 

United States v. Moghadam, 175 F.3d 1269 (11th Cir. 1999), 20, 189 
Copyright Law 

216 

United States ex rel. Berge v. Board of Trustees of University of Alabama, 104 F.3d 1453 (4th Cir. 1997), 190 

Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001), 182 

Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988), 165 

Veeck v. Southern Building Code Congress Int’l, Inc., 293 F.3d 791 (5th 

Cir. 2002), 54 

Venegas-Hernandez v. Asociacion de Compositores, Editores De Musica Latinoamericana, 424 F.3d 50 (1st Cir. 2005), 57 

Vestron, Inc. v. Home Box Office, Inc., 839 F.2d 1380 (9th Cir. 1988), 

168 

Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978), 50 

Walthal v. Rusk, 172 F.3d 481 (7th Cir. 1999), 195 

Washingtonian Publishing Co. v. Pearson, 306 U.S. 30 (1939), 89, 94 

Well-Made Toy Manufacturing Corp. v. Goffa Int’l Corp., 354 F.3d 112 

(2d Cir. 2003), 95 

West Publishing Co. v. Mead Data Central, Inc., 99 F.2d 1219 

(8th Cir. 1986), 39 

Whelan Assocs., Inc. v. Jaslow Dental Laboratory, Inc., 609 F. Supp. 

1307 (E.D. Pa. 1985), 70 

Williams Electronics, Inc. v. Artic International, Inc., 685 F.2d 870 (3d 

Cir. 1982), 21 

Williams v. Broadus, 60 U.S.P.Q.2d 1051 (S.D.N.Y. 2001), 115 

Wrench LLC v. Taco Bell Corp., 256 F.3d 446 (6th Cir. 2001), 191 

Zitz v. Pereira, 232 F.3d 290 (2d Cir. 2000), 48 
217 

Index 

A 

Abie’s Irish Rose, 51, 107 

Abbreviation 

infringing derivative works, as, 117 

Abridgments, 24, 26 

derivative works, 33, 116, 117 

Actual damages, generally, 95, 175–80 

See also Damages; Statutory damages 

Advertisements, 14, 149 

Aesthetic merit, 16, 42 

Agency principles 

“employee” status for works made for hire, 73–75 

Agreement on Trade Related Aspects of Intellectual Property (TRIPs), 20 

American Society of Composers, Authors and Publishers, 126, 163, 171 

Amusement and Music Operators Association, 163 

Annotations 

derivative works, as, 33, 116 

Anthologies, 38 

Arbitration panel, ad hoc, 112 

“Architectural work,” 19, 22, 47–48, 166 

plans, 45, 47–48, 70 

useful articles, 47–48 

See also Pictorial, graphic, and sculptural works 

Architectural Works Copyright Protection Act of 1990, 47 

Archival copying 

computer programs, exempted use, 165 

Art in books, 49 

Art work 

derivative works, as, 41–42 

See also Visual Artists Rights Act of 1990; Works of visual art 

ASCAP 

See American Society of Composers, Authors and Publishers 

Assignment 

license, distinguished from, under 1909 Act, 77 

distinction eliminated under 1976 Act, 78 
Copyright Law 

218

reversion interest, statutory, effect on, under 1909 Act, 58–59 

Attorney’s fees, 94, 97, 172, 180 

Attribution, right of, 4, 48–49, 129 

See also Visual Artists Rights Act of 1990 

Audio Home Recording Act, 115 

Audiovisual works, 18, 21–23, 49, 72, 99, 114, 122, 127 

“Author” and works of authorship, 1, 9, 13–16 

categories of works, 22–23 

computer materials, 29–32 

statutory categories of works of authorship, 22–23 

See also Original authorship requirement; Originality; Jointly authored works 

B 

Baseball cards, listing of, 38 

Belt buckles, 46 

Ben Hur, 117 

Berne Convention of 1886, 4–5, 129, 160, 168–69 

architectural protection provisions, 48 

jukebox license, made voluntary, to conform to, 163 

notice requirement, U.S. elimination of, to conform to, 89 

Berne Convention Implementation Act of 1988, 91, 95, 97, 179 

deposit requirement under 1976 Act, no affect on, 93 

registration, 171–72 

“Best edition” element of deposit requirement under 1976 Act, 94 

Bicycle racks, 97 

Biography, under fair use doctrine, 139 

Blank form rule, 25, 27, 29, 96 

See also Practical methods, systems, and processes 

BMI 

See Broadcast Music, Inc. 

Books, 9, 119–21 

libraries 

no restriction against lending books, 121 

See also Classroom; Libraries; Literary works; E-books 

Bootleg recordings, 20 

British censorship laws, 1 

Broadcast Music, Inc., 126, 163, 171 
Index 

219 

C 

Cards 

baseball, 38 

greeting, 35, 118 

Cat in the Hat, 148 

Catalogues, 23 

Certificate of copyright 

prima facie evidence of validity under 1976 Act, 94, 171–72 

refusal of Register of Copyrights to issue, 96, 172 

Characters 

idea–expression dichotomy, 107–08 

literary characters, generally, 50–52 

prototypes, fictional, 26 

Charts, 13, 45 

Choreographic works, 22, 99, 117 

Classroom 

fair use doctrine, 141, 152, 157–58 

photocopying, 152 

public display, 128 

TEACH Act, 158 

Cohens and the Kellys, The, 51, 107 

Collective works, 75–76 

See also Compilations; Jointly authored works 

Coloring, 17, 42 

“Colorized” motion pictures, 42 

Commentary, under fair use doctrine, 139–40, 149, 156 

Commerce Clause, 5, 20, 173, 174, 183, 189 

Commission on New Technological Uses of Copyrighted Works, 22 

Common-law copyright 

See State copyright protection 

Compilations, 28, 32–40, 75 

compilation/derivative work distinction, 33–34 

computer databases, 40 

defined, 33, 36–37, 38 

digital, 76 

“sweat of the brow” standard, 28–29, 36 

See also Collective works; Derivative works; Jointly authored works 

Compulsory licenses, 5, 111–14, 161–66 
Copyright Law 

220

Computers 

commands, 6–7, 31–32 

databases, 23, 40, 76 

hardware, 21, 109 

menus, 32 

programs 

archival copying, exempted use, 165 

defined, 30 

fair use, 149–50, 153 

first-sale doctrine, 121 

generally, 2, 4, 6–7, 19, 21–23, 29–32, 102, 109–10 

idea–expression dichotomy, 29–32 

literary works, as, 30 

technological protection, 182 

screen displays, 21, 29, 31, 32, 39 

public display, monitor, 127 

 “star pagination” of legal decisions, 39 

totality of visual elements, consideration of, 31–32 

See also Video games 

software 

circumvention, 182–84 

file-sharing, 135–36, 154 

first-sale doctrine, 157 

Computer Software Rental Amendments Act of 1990, 81 

Condensations, as derivative works, 23, 78 

Content Scramble System (CSS), 182 

Contributory infringement 

See Infringement actions 

Copies 

defined, 101 

Copying, substantial, requirement for infringement, 25 

Copyright Act of 1909 

generally, 2–3 

originality requirement, 16 

transactions governed by, 2–3 

Copyright and Patent Clause, 2, 5, 64 

Copyright Clearance Center, 152 

Copyright management information, 183–84 
Index 

221 

Copyright Office 

generally, 2, 78, 94–96, 171, 172 

judicial review, 10–12 

regulations, 11, 17, 29, 42, 112 

Copyright Remedy Clarification Act, 173 

Copyright Royalty Judges, 112, 161, 163–64, 166 

Copyright Royalty Tribunal, 112, 161, 163 

Copyright Term Extension Act 

See Sonny Bono Copyright Term Extension Act 

Creation, defined, 19, 89 

Creativity, requirement of, 16–17 

Criminal liability 

generally, 181–82 

statute of limitations, 172 

D

Damages 

actual, 175–81 

burdens of proof, 176–77, 179 

measuring, 176–79 

election of, 178 

statutory 

generally, 175, 178–81 

innocent infringement, reduction for, 91–93, 179 

pre-infringement registration required to obtain, in infringement actions 

under 1976 Act, 94–95, 172 

remittitur 

for nonprofit school, library employees having reasonable belief of 

fair use, 179 

for public broadcasters, 180 

Visual Artists Rights Act of 1990, under, for attribution right 

infringement, 129 

Data compilations, 23, 28, 33, 38, 40 

Databases, 23, 40, 76 

Deletion, as infringing derivative works, 117 

Deposit requirement, 10, 11, 93–94, 96–97 

historically, 2, 85 

See also Registration 
Copyright Law 

222

Derivative works, 32–42 

anthologies, 33, 38, 75, 177, 179 

“colorized” motion pictures, 42 

compilation/derivative work distinction, 33–34 

“distinguishable variation” concept, 40 

elaborations, 33, 116 

integrity, right of, potential conflict with, 130 

renewal, 60–62 

right to prepare, generally, 116–18 

translations, 33, 40 

unlawful derivative works in form of artwork, 120 

use following termination of transfer, 81–83 

Diaries, 29 

Digital Audio Home Recording Act, 4 

Digital audiotapes, transmissions, 99, 100, 115, 116, 122, 125, 164 

Digital Millennium Copyright Act, 5, 126, 136, 181 

Directories 

generally, 2, 23 

original authorship, 35–36, 40, 105 

“Display” 

defined, 127 

display stand, 42 

exemptions, 165 

 “public” display, 4, 90, 99, 100, 122–23, 127–28, 131, 154, 157–58 

“Distinguishable variation” concept for derivative works, 15, 40 

“Distribution” 

as “publication” under 1976 Act, 90 

file-sharing, computer, 154 

phonorecords, when not a divestive general publication, 88 

teaching materials, as “publication,” unclear, 90 

Distribution (public) right, 87, 99, 118–21 

first-sale doctrine as limitation upon, 119–21 

import right as species of, 120–21 

Divestive general publication 

See “Publication” 

Downloading, 22, 102, 113, 119, 128, 134, 155 

Dr. Seuss, 148 

Dramatic works, 22, 33, 121, 125, 158 
Index 

223 

Dubbing, 114, 122, 164, 188 

Duration of copyright protection 

See also Fixed in a tangible medium of expression; Period of copyright protection; Renewal of copyright 

E

E-books, 79, 182 

Editorial revisions/enhancements 

derivative works, as, 33, 35, 39, 116 

infringing derivative works, as, 117 

Electronic books 

See E-books 

Electronic database, 76 

Electronic publication rights, 76 

Eleventh Amendment, 173 

Employees 

See Agency principles; Works made for hire 

Encyclopedias, as “collective work” under 1976 Act, 75 

Enforcement in federal court, 7 

Errors in copyright notice 

See Mistakes in copyright notice; Omissions from copyright notice 

Exclusive/nonexclusive transfer distinction, 78 

Exclusivity of federal copyright, 1–6 

See also Preemption of state law 

Exemptions from infringement, 156–66 

Architectural Works Copyright Protection Act, 47–48 

archival-purpose copying of computer programs, 165 

cable television and other retransmissions, 161–62 

compulsory license to perform nondramatic musical works and display works 

of art, for public broadcasters, 165–66 

educational uses, 157–60 

“ephemeral recording” to facilitate performances or displays, 165 

first-sale doctrine, 157 

jukebox, 162–63 

library copying, 156–57 

musical compulsory licenses for recordings and jukeboxes, 162–63 

nonprofit uses, 157–60 

pictorial, graphic, and sculptural works, 42–49, 165 
Copyright Law 

224

public broadcasters, 165–66 

sound recordings, 164 

“staple article” exception to contributory infringement, 132 

useful articles, 43–47 

Exhibition 

of derivative work under 1909 Act, 81 

of sculpture, as not divestive general publication, 88 

Expression/fact distinction, 28–29 

See also Idea–expression dichotomy 

F

Fair use doctrine, 139–56 

biography, 139 

commercial use, 143–47 

critical commentary, 139–40, 149 

exemptions 

cable tv, 161–62 

educational uses, 157–60 

library uses, 156–57 

parody, 140, 145–50 

statutory uses and factors, 141–43 

Fairness in Music Licensing Act, 160 

Federal Trademark Act 

See Lanham Act 

Fictional works 

character prototypes, 26 

derivative works, as, 33, 116 

infringing derivative works, 116 

generally, 25–26 

plot, 26, 50, 107–08 

story line, 26, 31, 50, 107, 149 

File-sharing, 102, 116, 134, 154–55 

Fines 

for continued failure to comply with deposit requirement, 97 

First Amendment, 64, 144, 182 

First-sale doctrine, 119–21, 128, 157 
Index 

225 

Fixed in a tangible medium of expression 

as beginning of copyright protection, 18–22, 55, 95 

derivative work, need not be fixed, 117 

generally, 3, 13, 40 

uncertain prerequisite to joint author status, 71 

unfixed works, 100, 188–90 

Ford, President Gerald, 142, 144, 150 

Formalities 

generally, 85–97 

under 1909 Act, 85–89 

under 1976 Act, 89–93 

deposit and registration, 93–96, 97 

notice requirement, 89–93 

“publication” requirement, 90 

Furniture and accessories, as useful articles, 43 

See also Pictorial, graphic, and sculptural works 

G

Government works, 52–54 

Graphic works, 8, 18, 29, 45, 49–50

Grey goods, 121 

Grokster, 134–35 

H

Harry Fox Agency, 113, 162 

Herbert, Victor, 126 

Home recording and taping, 115–16, 131–32, 136 

Computer Software Rental Amendments Act of 1990, 121 

copyrighted television, of, for private use, 142–43, 151, 154, 162 

Record Rental Amendment of 1984, 121 

House Report, viii, 16, 22, 23, 25, 30, 33, 45, 46, 52, 59, 65, 123, 124, 140, 193 

I

Idea–expression dichotomy, 23–32, 106–10 

computer programs, 109 

First Amendment interests protected by, 144 

literary characters, 50 
Copyright Law 

226

merger doctrine, 26–31, 43 

plays, 108–09 

Immunity 

See Copyright Remedy Clarification Act; Eleventh Amendment; Sovereign 

immunity 

Importation right, 120–21 

Independent contractors 

See Works made for hire 

Indivisibility, 77 

Industrial design/works of applied art distinction concerning useful articles, 45–

46 

Industrious collection theory 

See “Sweat of the brow” theory 

Infringement actions 

certificate of copyright, 94–96, 171–72 

contributory infringement, 99–100, 131–37 

 “staple article” exception, 132 

defenses 

“innocent infringer” defense available in absence of notice, 91–93, 97, 

118, 179 

no “unconscious” or “subconscious” copying defense, 106 

exemptions, 100, 156–66 

expert witnesses, 104 

idea–expression dichotomy, 106–10 

proof of access, 103–04 

proof of similarity, 103–05 

registration requirement 

actions under 1909 Act, 89, 94 

actions under 1976 Act as originally enacted, 94 

eliminated for infringement actions involving works initially published 

in other Berne Convention countries, 171 

retained for infringement actions involving works first published in U.S., 

96, 171 

retained for suits seeking attorney's fees and statutory damages under 

1976 Act, 94, 179–80 

reproduction right, proving infringement of, 102–06 

substantial copying requirement, 25, 104–06 
Index 

227 

“unfixed” infringing works, 100 

vicarious liability, 131–37 

Ingenuity, not a copyright requirement, 16 

Initial-term transfer of renewal-term interest 

validity of, 58–59 

Injunctive relief, 129, 175 

Innocent infringement 

See Infringement actions, defenses 

Integrity, right of, 4 

derivative works, right to create, potential conflict with, 129, 130 

under Visual Artists Rights Act of 1990, 48, 129, 130 

Interim extensions of protection under 1976 Act, 63–64 

International copyright conventions 

See Berne Convention of 1886; Berne Convention Implementation Act of 

1988; TRIPs Agreement 

Internet 

public display, 127–28 

public distribution, 118–19 

service providers (ISPs), 136–37 

transmissions, 164 

Interstate Commerce Clause 

See Commerce Clause 

Irreparable injury presumption, 175 

J

Jewelry, 28, 46, 108 

Joint works 

defined, 65 

duration of copyright under 1976 Act, 65–66 

initial ownership of copyright, 69–72 

Judicial opinions, 53 

Judicial review, 10–12 

Jukebox, 126, 127, 162–63 

Jurisdiction, 167–69 

preemption, 185, 191 

registration, 95 
Copyright Law 

228

L

Lamps, bases, 43, 44 

Lanham Act, 8, 186, 189 

Lending, 119, 121 

Computer Software Rental Amendments Act of 1990, 121 

Record Rental Amendment of 1984, 121 

Lettering, 17, 42 

Librarian of Congress, 10, 112, 163, 166 

Libraries 

exemption for copying, 156–57 

“fair uses” list, 157 

lending books, no restriction against, 121 

nonprofits not limited by 

Computer Software Rental Amendment Act of 1990, 121 

Record Rental Amendment of 1984, 121 

remittitur of statutory damages for employees having reasonable belief of fair 

use, 179 

License 

made voluntary, to conform to Berne Convention, 163 

perform, to, dramatic works, 78 

public performance through jukeboxes, 163 

reproduce music and sound recordings, compulsory, to, 110–14 

statutory royalty rate, 111–13 

reversion interest, statutory, effect on, under 1909 Act, 56–57 

societies, 126–27, 163 

Licensing 

assignment, distinguished from, under 1909 Act, 77 

compulsory, for music and sound recording reproductions, statutory royalty 

rates, 111–12, 162–64 

distribute and exhibit, 60–62 

exclusive/nonexclusive distinction, 77–79 

joint authorship context, 71–72 

Literary characters, 50–52 

Literary merit, not a copyright requirement, 23 

Literary works, generally, 22–23, 31, 107, 158 

compulsory license, not subject to, 113 

computer programs, 21 

performances of, 114 
Index 

229 

recordings of, 113 

See also Operas and recordings of other literary works 

Logos, sports team, 42 

M 

Madame Butterfly, 61 

Magazines 

collective works, as, 75–76 

digital versions, 79–80 

excluded from “works of visual art” definition of Visual Artists Rights Act of 

1990, 130 

fair use, 144 

infringement of right to produce derivative works, 120 

scanning picture from, 127 

See also Periodicals 

Mannequin torsos, 45 

Maps, 13, 42, 45, 53 

Merger doctrine, 27, 30, 31, 65 

Mistakes in copyright notice 

effect under 1976 Act, 89, 93 

registration as cure under 1976 Act, as amended, 92 

Monty Python, 117 

“Moral rights,” 48, 49, 129 

See also Visual Artists Rights Act of 1990 

Motion pictures, 22, 50, 51, 52, 72, 79, 160 

“colorized,” as derivative works, 42 

derivative works, as, 33, 34, 40–43, 60, 81–82 

ban on making further derivative works following 

termination of transfer, 61, 62 

infringing derivative works, 116–17 

use following termination of transfer, 81–83 

excluded from “works of visual art” definition of Visual Artists Rights Act of 

1990, 49, 130 

Musical arrangements and compositions, 3, 13, 22, 58, 77, 104, 155 

derivative works, 33, 116–17 

nondramatic musical works, compulsory license to perform, 113 

right to perform, 77, 122–26 
Copyright Law 

230

right to reproduce, 101, 111, 114 

compulsory license for musical recordings, 111, 113, 159, 162 

statutory royalty rate, 112–13 

See also Sound recordings 

N

Names, 91 

mistake in copyright notice, 77, 86, 93 

Napster, 134–35, 154–55 

Nation, The, 144–45 

National Geographic, 120 

News reporting, 87, 152, 193 

fair use doctrine, 141–44 

presumption of unfair use in commercial context, 144 

Newspapers 

articles, fair use, 156 

excluded from “works of visual art” definition of Visual Artists Rights Act of 

1990, 49, 130 

online, 76, 79–80 

See also News reporting 

 “Nonobviousness” not a copyright requirement, 15, 16, 37 

for patents, 6, 7, 43 

Notice requirement 

Berne Convention, to conform to, 89, 91 

defined by 1976 Act, 90–91 

elimination of under Berne Convention Implementation Act, 89, 91 

format required, 91 

“innocent infringer” defense, 91–93 

limited significance of, from March 1, 1989, 89, 91–93 

omissions 

cure under 1976 Act, 92, 93, 97 

optional for works published after March 1, 1989, 4 

under 1909 Act, 2, 5, 85–86, 89 

under 1976 Act, 3–4, 89–93 

Novels, 64, 77, 176 

derivative works, 34, 40, 60–61, 116 

idea–expression distinction, 31, 110 

infringement, 99, 105, 117, 149, 170 
Index 

231 

ownership, termination of transfer, 81–83 

public distribution, 118 

unauthorized copying, 26 

Novelty, not a copyright requirement, 15, 16 

O

Ode on a Grecian Urn, 15 

Omissions of copyright notice 

effect under 1976 Act, 92 

cure, 92, 93, 97 

limited significance of, from March 1, 1989, 89, 91–93 

See also Mistakes in copyright notice 

Operas and recordings of other literary works 

not subject to compulsory license, 113, 159 

Order forms, 29 

Original authorship requirement, 13–18, 20, 21, 28, 29, 75–76 

collective works, 75–76 

compilations, 32–40 

computer program, 21 

derivative works, 40–42 

digital compilations, 76 

directories, 33, 35–38, 40 

pictorial, graphic, and sculptural works, 42–43 

translations, 33 

works made for hire, 72–75 

Originality, 15–16 

compilations, requirement as to, 29, 32, 36–37, 38 

derivative works, standards for, 41 

preexisting materials, in the expression of, 32–34 

Ownership, 1–5, 9, 69–83 

ownership and transfer of rights, 9–10, 76–79 

collective works, 75–76 

joint authors, 69–72 

presumption against transfer, 9 

reversion under 1909 Act, 56 

transfer requirements, 9–10, 76–79 
Copyright Law 

232

works made for hire, 72–75 

excluded from “works of visual art” definition of Visual Artists 

Rights Act of 1990, 49 

transfer termination power not available for, 81, 82 

P

“P notice,” 91, 101 

Packaging 

excluded from “works of visual art” definition of Visual Artists Rights Act of 

1990, 49 

Paintings, 15, 45, 116, 127 

included in “works of visual art” definition of Visual Artists Rights Act of 

1990, 49, 129–30 

nondivestive general publication of, 88 

Pantomime, 22, 99 

Paraphrasing, 6, 24, 26, 107 

Parody, under fair use doctrine, 140, 142, 145–50 

Passing off, 7, 188, 191 

as unauthorized use of literary character's name, 185–86 

Patent law 

distinguished from copyright law, 5–7, 15, 23–25, 43–44, 96, 102, 109 

“Perform” 

defined, 122–23 

Performance (public) right, 99, 100, 121–27 

nondramatic music, compulsory license for public broadcasters, 165–66 

“performance” defined, 122–23 

“public” defined, 90 

sound recordings, not accorded to, 122 

under 1909 Act, 3 

works not accorded to, 125 

Performing rights societies, 126–27, 163, 170 

See also American Society of Composers, Authors and Publishers; Broadcast 

Music, Inc.; SESAC 

Period of copyright protection 

common-law, 55 

Copyright Act of 1909, under, 2–3, 5, 55–60, 62–63, 66, 67 

Copyright Act of 1976, under, 2–5, 55–56, 59–60, 62–66, 67 

duration and renewal, generally, 55–67 
Index 

233 

“interim extensions,” 63 

Statute of Anne, 1–2 

See also Renewal of copyright 

Periodicals, 23 

“collective work” under 1976 Act, included in definition of, 75 

excluded from “works of visual art” definition of Visual Artists Rights Act of 

1990, 49 

Phonorecords, 90–94, 99 

defined, 19 

digital, 114 

distribution as not divestive general publication, 88 

“P notice,” 91 

“publication,” 90–91 

Record Rental Amendment of 1984, 121 

right to reproduce, 101, 110, 111–15 

compulsory license for musical recordings, 111–14 

See also Sound recordings 

Photographs, 9, 14, 43–45, 49, 76, 101, 108, 117, 118, 154, 179 

exhibition purposes only, for, included in “works of visual art” 

definition of Visual Artists Rights Act of 1990, 49, 129 

thumbnails, 154 

Pictorial characters, 50–51 

Pictorial, graphic, and sculptural works 

defined, 45 

exempted uses, 43–47, 165 

generally, 22, 42–49, 99, 108 

original authorship requirement, 42 

public performance right, not accorded, 122 

reproduction right, 44 

separability requirement, 46–47 

useful articles, 46–47 

works of visual art, 48–49, 130 

Plot, fictional, 26, 50, 107–09, 176 

Poems, 8, 9, 15, 32–33, 38, 110, 148, 177, 179 

Posters, 14, 150 

excluded from “works of visual art” definition of Visual Artists Rights Act of 

1990, 49, 130 

Posthumous works, renewal of copyright, 59 
Copyright Law 

234

Practical methods, systems, and processes, 24–27 

See also Blank form rule 

“Pre-1978 saving clause” for architecture, 47 

Preemption of state law 

generally, 19, 49, 185–95 

upon creation/fixation in a tangible medium of expression under 1976 Act, 89 

Presumptions 

irreparable injury, 175 

unfair use in commercial context, 143, 144, 147 

Printing right under 1909 Act, 3, 24 

Property law, distinguished from copyright law, 8–10, 23 

Prototypes of fictional characters, 26 

Public broadcasters 

exemption for display of works of art (compulsory license), 165 

remittitur of statutory damages, 180 

“Public” display or performance 

defined, 90, 121–28 

Public domain, 33, 34, 36, 63, 67, 77, 85–89, 92, 97, 104–05, 110, 114, 187 

idea–expression dichotomy, 26 

original authorship, 15 

under 1909 Act, 2, 3 

under 1976 Act, 4, 63 

Public figures, no lesser protection afforded to, 144 

Public lending right, none in U.S., 121 

exceptions to first-sale doctrine 

Computer Software Rental Amendments Act of 1990, 121 

Record Rental Amendment of 1984, 121 

“Publication” 

defined under 1976 Act, 90 

“general publication” rule of divestment of copyright, 86–87 

“limited publication” exception, 86–87 

“I Have a Dream” speech, 87–88 

interpreted under 1909 Act, 85–89 

not a dividing line between state and federal protection under 1976 Act, 89 

not defined by 1909 Act, 86 

painting, 88 

sculpture, 88 
Index 

235 

“Published” 

defined for purposes of 1909 Act, 85–89 

defined under 1976 Act, 89–93 

Purpose of copyright, 1 

Q

Qualitative value, not a copyright requirement, 23 

R

Radio broadcasts 

as fixation, 20 

digital, 164 

generally, 115, 122–26, 159–61 

Random access memory (RAM), 21, 102 

Rear Window, 62 

Record Rental Amendment of 1984, 121 

Records 

See Phonorecords; Sound recordings 

Register of Copyrights, 10–12, 18, 172 

Registration 

certificate, 11, 60, 94, 171–72 

deposit, distinguished from, 94–95 

generally, 10–12, 89, 92–97, 171–72 

incentives to effect, 94–95, 171–72 

initial term, for, required for valid renewal application under 1909 Act, 89 

pre-infringement registration required to obtain attorney's fees and statutory 

damages in infringement actions under 1976 Act, 94–95, 171–72, 180 

three-month grace period, 180 

renewal, for, 55, 56, 59, 60 

Statute of Anne, under, 2 

transfers of ownership, 78 

validity of copyright, not dependent upon, 89 

Remedies, 20, 173, 175–81 

Remittitur of statutory damages, 179 

Renewal of copyright 

generally, 3–5, 55–67, 78, 80, 82–83 

initial-term registration required for valid renewal application under 1909 

Act, 89 
Copyright Law 

236

initial-term transfer of renewal term interest, earlier validity of, 58 

subsequent statutory bar to, 80 

renewal-term use of derivative works prepared during initial term of underlying work, 60–62 

Replicas of three-dimensional works, 9 

Report forms, 29 

Reproduce, right to, 99, 101–16, 164 

individual contributions to collective works, 75 

music and sound recordings, 110–16, 164 

compulsory license for musical recordings, 111–14 

file-sharing, computer, 101–02, 154–55 

infringement, 111, 113–15 

phonorecords, 101 

record piracy, 114, 122, 189 

statutory royalty rate, 111–14 

pictorial, graphic, and sculptural works, 44 

Visual Artists Rights Act of 1990, 49 

Reversion of interest, statutory, 56–62 

assignment/license distinction, 77 

derivative works, 60–62 

independent contractor’s, 73 

works made for hire, 72–75, 81–82 

Royalties 

jukebox, 127, 163 

public broadcasters, 122, 165–66 

rate, statutory, for compulsory licenses, 111–12, 114, 161–63 

See also Copyright Royalty Judges 

S

Sampling, 105, 114–15, 155 

Scènes à faire doctrine, 31, 38, 108 

Screen displays 

See Computer screen displays 

Sculptural works, 9, 43, 116, 127 

included in “works of visual art” definition of Visual Artists 

Rights Act of 1990, 48–49, 129 

nondivestive general publication of, 87–88 

See also Pictorial, graphic, and sculptural works 
Index 

237 

Secondary meaning, 8 

Seinfeld, 148–49 

Semiconductor chips, 21 

Separability and merger 

joint work, 69–70 

Separability requirement for pictorial, graphic, and sculptural works, 46–48 

architectural works, no requirement for, 47–48 

SESAC, 126, 163 

Shapes of useful articles, 18, 43–47 

Short stories, 26, 62, 110 

Simultaneous recording as fixation, 20 

Slogans, 17, 96 

Society of European Stage Authors and Composers 

See SESAC 

Software programs, 102, 116, 134–35, 154, 182, 183 

Computer Software Rental Amendments Act of 1990, 121 

See also Computer programs 

Son of the Sheik, 62 

Songs, 8, 9, 64, 122, 123, 125, 126, 155, 170, 179 

compulsory royalty rates, 111–14 

fair use, 145–47, 150, 155 

infringement, 100, 105–06, 117 

joint work, 69–72, 

performance, 123 

“publication,” 88 

sampling, 105 

termination of transfer of copyright, 83 

Sonny Bono Copyright Term Extension Act, 5, 56, 60, 63–66 

Sound recordings, 19, 22, 33, 91, 110, 114–16, 121–22, 188 

defined, 114 

derivative works, as, 116 

digital public performance, 5, 99, 100, 125–26 

display right, not accorded to, 125 

exempted uses, 116 

Internet, 118–19, 153–56, 181–82 

preemption, 188 

public domain compositions, 114 

public performance right, not accorded, 100, 127 
Copyright Law 

238

Record Rental Amendment of 1984, 121 

right to reproduce, 101, 110–18 

compulsory license for musical recordings, 111–14 

infringement, 111, 113, 114 

record piracy, 122, 188, 189 

state antipiracy laws, 188 

statutory royalty rate, 111–14 

Sousa, John Philip, 126 

Sovereign immunity, 173–74 

Standing to sue, 170–71 

“Staple article” exception to contributory infringement, 132 

Star chamber, 1 

State and local governments, treatment of works prepared by employees of, 52–54 

State anti-copying laws, 185–87 

See also Preemption of state law 

State copyright protection, 19, 20, 49 

preemption of, 49, 89, 185–95 

under 1909 Act, 2, 55 

under 1976 Act, 89 

unfixed, unpublished works, 19, 188, 189 

State instrumentalities 

Copyright Remedy Clarification Act, 173 

State rules of chattel ownership, 10, 49 

Stationers’ Company, 1 

Statute of Anne, 1–2, 55 

Statute of limitations, 172, 181, 188 

Statutory damages 

generally, 94–95, 175, 178–81 

pre-infringement registration required to obtain, in infringement 

actions under 1976 Act, 94–95, 171–72 

three-month grace period, 180 

reduction for innocent infringement, 179 

Statutory reversion of interest, 56–62 

derivative works, 60–62 

Statutory royalty rate for compulsory licenses, 111–13 

Story line, fictional, 26, 31, 50, 107, 149 

Structure, computer programs, 7, 31, 109–10 
Index 

239 

Substantial copying, 115 

requirement for infringement, 25, 103–06 

Substantial similarity 

requirement for infringement of right to prepare derivative works, 117 

Supervision requirement 

for vicarious liability, 132–33 

Supremacy Clause, 187 

“Sweat of the brow” theory, 28–29, 36 

Sweepstakes rules, 27 

Symbols, 8, 9, 17, 42 

T

Tape recording, unauthorized, 19–20, 121 

Technical drawings 

excluded from “works of visual art” definition of Visual Artists Rights Act of 

1990, 49 

Technology, Education, and Copyright Harmonization Act (TEACH), 158 

Television 

broadcast as fixation, 20, 22 

cable, 161–62 

transmission by, 4, 9, 123, 158 

Termination of transfer 

derivative works, use following, 81–83 

generally, 69, 80–83 

works made for hire, not available for, 74 

works made prior to Jan. 1, 1978, special provision for, 80 

Time, 144–45 

Time-shifting, 115, 132, 143, 151, 154 

Titles, 17 

Trademark Act 

See Lanham Act 

Trademark law 

distinguished from copyright law, 7–8, 174 

Transfer of copyright ownership 

generally, 9–10, 76–80 

government, 52 

initial-term transfer of renewal term interest, earlier validity of, 56–59 
Copyright Law 

240

presumption against transfer, 9 

reversion, statutory, of interest under 1909 Act, 56–59 

Translations, 26 

derivative works, as, 33, 40, 116 

infringing derivative works, 170 

original authorship, 33 

unauthorized, as uncopyrightable, 34–35 

work made for hire, 72 

“Transmit” 

defined, 124 

TRIPs Agreement, 20 

Typography, 17, 42 

U

Unauthorized copying, 1, 19–20, 23, 26, 35, 40, 85, 140, 185, 189 

Unauthorized translations, 26, 34 

Unfair use, presumption of in commercial context, 143, 145 

Unpublished works, 2, 94, 144, 145 

common law protection under 1909 Act, 55, 85, 167, 185 

duration of protection under 1976 Act, 66, 67 

protection for both published and unpublished works, 3, 55, 56, 185, 188 

unfair use, 141, 145 

Useful articles, protectibility of shapes of, 18, 43–48, 189 

architecture, 47–48 

defined, 44 

exemptions from infringement, 44–48, 165, 186 

pictorial, graphic, and sculptural works as, 43–47 

three-dimensional shape of, 45, 48 

two-dimensional drawing of, 45 

works of applied art/industrial designs distinction, 45 

Use in commerce, no proof of required, 8 

V

Vanity Fair, 149 

Vicarious liability, 119, 131–37 

Video game displays, 31 

merger doctrine, 31 
Index 

241 

Video games, 50, 109, 149, 153, 183 

“fixed,” 20–21 

Videotape copies 

home copying under fair use doctrine, 115, 132, 142, 143, 151 

time shifting, 115, 132, 143, 151, 154 

Visual Artists Rights Act of 1990, 48–49, 74, 129–31 

W

Webpage/website 

copying/downloading from, 22 

fair use, 154–56 

infringement, 100, 101 

public display, 127–28 

public distribution, 118–19 

secondary liability, 134, 137 

See File-sharing; Internet 

White-page telephone directories 

as compilation, 35 

creativity requirement, 16–17, 36, 37 

Wilde, Oscar, 14 

Work of applied art/industrial design distinction for useful articles, 45 

Works made for hire 

agency law, 73 

defined, 72 

duration of copyright, 66 

excluded from “works of visual art” definition of Visual Artists Rights Act of 

1990, 49 

ownership of copyright, 69, 72–75 

regular employee/independent contractor dichotomy, 73–74 

renewal copyright under 1909 Act, 59 

supervision, close, by commissioning party, not required, 73–74 

termination-of-transfer power not available for, 74, 81, 82 

Works of visual art 

defined under Visual Artists Rights Act of 1990, 48–49 

World Trade Organization, 4, 97, 160 

Writings, 1, 13, 18–19 
Blank pages inserted to preserve pagination when printing double-sided copies.
The Federal Judicial Center 

Board 

The Chief Justice of the United States, Chair

Judge Bernice B. Donald, U.S. District Court for the Western District of Tennessee 

Judge Terence T. Evans, U.S. Court of Appeals for the Seventh Circuit 

Magistrate Judge Karen Klein, U.S. District Court for the District of North Dakota 

Judge James A. Parker, U.S. District Court for the District of New Mexico 

Judge Stephen Raslavich, U.S. Bankruptcy Court for the Eastern District of Pennsylvania 

Judge Sarah S. Vance, U.S. District Court for the Eastern District of Louisiana 

Judge Karen J. Williams, U.S. Court of Appeals for the Fourth Circuit 

Leonidas Ralph Mecham, Director of the Administrative Office of the U.S. Courts 

Director

Judge Barbara J. Rothstein 

Deputy Director

John S. Cooke 

About the Federal Judicial Center 

The Federal Judicial Center is the research and education agency of the federal judicial 

system. It was established by Congress in 1967 (28 U.S.C. §§ 620–629), on the recommendation of the Judicial Conference of the United States. 

By statute, the Chief Justice of the United States chairs the Center’s Board, which also 

includes the director of the Administrative Office of the U.S. Courts and seven judges 

elected by the Judicial Conference. 

The organization of the Center reflects its primary statutory mandates. The Education Division plans and produces education and training programs for judges and court 

staff, including satellite broadcasts, video programs, publications, curriculum packages for 

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